Basic Requirements and Patent Glossary

The following requirements must be met for a patent to issue:

Inventorship: To obtain a patent, you must be the sole or a joint inventor. Deliberately excluding an inventor or including an extra inventor can make a patent invalid. OTD refers any questions about proper recognition of inventorship to the patent attorney handling the case.

Patentable Subject Matter: For a utility patent, an invention must be either a machine, composition of matter, process or article of manufacture (i.e., an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology.

Utility: The invention must be useful, or good for some applied purpose.

Novelty: The invention must be new; the exact same thing must not have existed or been done before.

Non-Obviousness: The invention must be different enough from past technology that the “average worker” in the field would not have come up with the new invention based upon was already known.

Prior Art: In assessing a patent application, the Patent Office considers the prior art, or the knowledge of prior artisans or people skilled in the relevant fields. Anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.

Barring Events: In the U.S., the publication, public use, offer for sale or sale of an invention anywhere in the world is known as a barring event. If a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention.

It is very easy to do something that constitutes publication or public use without realizing it. While the patent statute refers to "printed publication" as the barring event, this term can include any printed, photocopied, typed, microfilmed or otherwise fixed communication. In addition to conventional academic publications, such things as abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc.

It is vital to tell the attorney drafting your application about any possibly barring event or prior art for two reasons: 1) Only if fully informed can the attorney make the best possible case for your patent; and 2) good patent claims can sometimes still be made even though the disclosed material is prior art.

Bar Date: This is the date by which one or more barring events prevent a patent application from being filed or further prosecuted.