What do Utility Patents protect?

The range of patentable subject matter is very wide.  For United States utility patents, patentable subject matter can include nearly anything that involves or results from a human-caused transformation and that is within any of these 4 broad classes:

  • "Process"
    • that is, a novel method of transforming nearly anything
    • the method can involve manufacturing, engineering, chemistry, biology, business, information, or software
    • e.g., an innovative method for transforming iron into steel, or a new method of transforming accounting data into a tax return.
  • "Article of Manufacture"
    • that is, a new good resulting from a transformation,
    • e.g., a device, such as an innovative light bulb, mouse trap, or modem
  • "Composition of matter"
    • that is, a new material resulting from a transformation,
    • e.g., a new chemical compound, drug, or gene sequence
  • "Machine"
    • that is, a novel system for causing a transformation,
    • e.g., an innovative machine for making a new or old device

Within these 4 classes, the U.S. Patent and Trademark Office is required to grant Utility Patents that claim useful, novel, non-obvious subject matter ("concepts") that have been adequately described.

A concept is not considered sufficiently useful if it is merely a law of nature, a physical phenomenon, or too abstract (has no described implementations).  Also, the patent application must identify a beneficial use for the concept (other than acting as, e.g., a boat anchor, paperweight, or research curiosity).

A given patent application's concept is not novel (new) if it was:

  • known or used by others in the U.S., or patented or described in a printed publication anywhere in the world, before its conception date by the inventors named in the patent application;
  • patented or described in a printed publication anywhere in the world, or in public use or on sale in the U.S., more than one year before the filing date of the given patent application;
  • abandoned; or
  • invented by someone other than the named inventors.

Generally, the novelty of a concept is determined based on a comparison to what is "taught" by the prior art, which is basically everything that was known (e.g., everything published) before the origination of the concept.

A concept is obvious if, at the time it was conceived, a person having ordinary skill in the art would have known of art-recognized reasons to modify or combine prior art references, considered as a whole, to arrive at the concept.  Thus, although an invention might seem "obvious" from a layperson or engineer's standpoint, US patent law can be rather strict about what must be proven before an invention can be deemed "obvious" from a patent law perspective.

A Patentability Search often can help reveal whether a concept is novel (and sometimes non-obvious)

A patent application's description of a given concept is considered adequate if it empowers a person having ordinary skill in the art to successfully (even if non-optimally) implement that concept, in the best manner known to the inventors on the application's effective filing date, and demonstrates that the inventors actually had the concept in mind.

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