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PBL Guide to Patenting

Patentable Inventions

There are certain basic qualifying criteria for a patentable invention. The invention must be:

i)    Novelty
ii)   Non-obvious (read inventive)
iii)  Have industrial applicability
iv)  Be an invention

i)    Novelty

Inventions must be new. A thing may lack novelty if it is disclosed or made available in any shape or form. Novelty may be lost if the thing is disclosed such that it is freely accessible by anyone, whether or not someone actually accesses it. The patent examination process will search public records pre-dating the filing date of the patent for ANY reference that may include a description even partially matching the contents of the patent.

Disclosures may be made in many different ways such as:

  • a published paper or written article
  • an abstract for a conference paper/poster sent to a conference organiser
  • a thesis on a shelf in a university library
  • the internet (eg web-site)
  • poster sessions at conferences
  • an oral presentation (including slides) at a conference/seminar
  • emails
  • informal conversation
  • providing a sample to someone
  • exhibiting material on eg a stand at a conference or trade show
  • providing a sample to a collaborator in circumstances where confidentiality arrangements do not operate explicitly or are not implied.

Some forms of communication may not be considered "disclosures", for example:

  • speaking on site with colleagues/employees of the same organisation as the inventor
  • meeting with others under circumstances of acknowledged confidentiality (preferably in writing)
  • theses held under moratorium
  • submitted papers for publication and grant applications provided that recipients and referees/reviewers are made aware of the need to observe confidentiality.

ii)   Non-obvious (read inventive)

Inventions must be inventive or "non-obvious". The patent must describe an invention that is not obvious to a person "skilled in the art" from the entire/collective body of publicly available knowledge ("prior art") existing at the date the patent application was filed. This is usually the most contentious issue in determining patentability.

iii)  Have Industrial Applicability

This must be discernible from the patent application as filed, ie there must be a clear utility for the invention, eg, to solve an existing problem, however simple. 'Discernible' means more than mere speculation or guessing and in certain jurisdictions, such as the USA, it is strongly advisable that an industrial utility allegation in the description is backed up by experimental work that points to that perceivable industrial utility.

iv)  Be an Invention

An idea, a discovery or an observation is NOT PATENTABLE by itself eg, an explanation of what is happening in a particular chemical pathway is not enough. Although an invention may be founded on a discovery, the discovery itself is not patentable. A discovery may lead to a patentable invention if the discovery is accompanied by a description of how the discovery is used to form an invention that has a perceivable industrial applicability. The employment of the discovery that forms the basis of the invention must be clearly described. This is usually done in the examples section of the patent application. Similar considerations apply to ideas for inventions in as much as the idea has to be supported in the patent application by work that shows that the idea has a technical rather than merely theoretical basis. Patent Offices exclude mere ideas, discoveries and various other items from patentability.

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