The seven most important statutory considerations or requirements are as follows:
1. The subject matter isstatutory subject matter
2. The invention isuseful
3. The invention isnovel
4. The invention isnonobvious
5. The patent application meets thewritten descriptionrequirement
6. The patent application meets theenablementrequirement
7. The invention meets thebest-moderequirement
The first four requirements – statutory subject matter, utility, novelty and nonobviousness – can be checked before drafting the application. The next three requirements – written description, enablement and best-mode – can be checked after the application is drafted.
The utility requirement is set forth in 35 U.S.C. § 101. It is not a stringent requirement. It is usually an issue when an inventor tries to patent a perpetual-motion machine, a composition of matter that has no obvious useful purpose, a general “cure for cancer” or similar invention.
The Statutory Requirements: Part 1
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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