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Within the context of a national or multilateral body of law, an invention is
patentable if it meets the relevant legal conditions to be granted a patent. By
extension, patentability also refers to the substantive conditions that must be
met for a patent to be held valid.
Requirements
The patent laws usually require that, for an invention to be patentable, it must
be:
Patentable subject matter, i.e., a kind of subject-matter eligible for patent
protection
Novel (i.e. at least some aspect of it must be new)
Non-obvious (in United States patent law) or involve an inventive step (in
European patent law)
Useful (in U.S. patent law) or be susceptible of industrial application (in
European patent law )
Usually the term "patentability" only refers to "substantive" conditions, and
does not refer to formal conditions such as the "sufficiency of disclosure", the
"unity of invention" or the "best mode requirement".
Judging patentability is one aspect of the official examination of a patent
application performed by a patent examiner and may be tested in post-grant
patent litigation.
Prior to filing a patent application, inventors sometimes obtain a patentability
opinion from a patent agent or patent attorney regarding whether an invention
satisfies the substantive conditions of patentability.
Opposition and reexamination
Many national and regional patent offices provide procedures for reconsidering
whether or not a given patent is valid after grant. Under the European Patent
Convention, any person can file an opposition provided they act promptly after
grant of the patent. In the United States, members of the public can initiate
reexamination proceedings. Japan provides similar options as well.
Members of the public can also initiate lawsuits in the courts of various
nations to have patents declared invalid.
United Kingdom patents can be reviewed by way of a non-binding opinion issued by
the Patent Office, or by formal applications for revocation before the Patent
Office or the Court. If the patent survives a revocation action, this is noted
for future reference by way of a Certificate of contested validity.
Infringement
The fact that an invention is patentable or even patented does not necessarily
mean that use of the invention would not also infringe another patent. The first
patent in a given area might include a broad claim covering a general inventive
concept if there is at that point no relevant prior art. Later, a specific
implementation of that concept might be patentable if it is not disclosed in the
earlier patent (or any intervening prior art), but nevertheless still falls
within the scope of the earlier claim (covering the general concept). The later
inventor must, therefore, obtain a license from the earlier inventor to be able
to exploit their invention. At the same time, the earlier inventor might want to
obtain a license from the later inventor, particularly if the later invention
represents a significant improvement in the implementation of the original broad
concept. In this case, the two enter into a cross license.
Thomas Edison's thin carbon filament light bulb was a patentable improvement
over the earlier patented Woodward and Evans thick carbon filament light bulb.
Thomas Edison bought the Woodward patent for $US 5,000 before he began his
development work so that Woodward would not be able to sue him for patent
infringement after Edison became commercially successful.
Legislations
United States
Under United States patent law, inventorship is also regarded as a patentability
criterion. It is a constitutional requirement. Congress's ability to grant
patents is authorized only for the inventor. This was confirmed by case law: "Inventorship
is indeed relevant to patentability under 35 U.S.C. ยง 102(f), and patents have
in the past been held unenforceable for failure to correctly name inventors in
cases where the named inventors acted in bad faith or with deceptive intent."
Details on patentability in the U.S. can be found in the Manual of Patent
Examining Procedure or MPEP. This is published by the United States Patent and
Trademark Office (USPTO) and is the reference manual used by both patent
examiners and patent agents/attorneys. Chapter 2100, in particular, gives a
comprehensive overview of the standards for patentability, a discussion of the
related case law, and guidance on how to overcome an examiner's rejection of a
given set of claims.
In the United States, the patent grant is presumptive, e.g. a patent shall issue
unless the patent statutes preclude the grant. In other words, the burden is on
the Patent Office to prove why a patent should not be granted. Once a patent
issues, however, it is presumed valid and a court may declare it invalid only on
the basis of clear and convincing evidence.
Quotes
[The question whether there is a patentable invention] is as fugitive,
impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of
legal concepts. It involves, or it should involve, as complete a reconstruction
of the art that preceded it as is possible. The test of invention is the
originality of the discovery, and discovery depends upon the mental act of
conceiving the new combination, for substantially every invention is only a
combination. Nothing is more illusory, as nothing is more common, than to assume
that this can be measured objectively by the magnitude of the physical
readjustments required. Courts never tire, or at least in earlier times they
never did, of expatiating upon the freshness of insight which observes a little,
but fruitful, change which had theretofore escaped detection by those engaged in
the field. When all is said, we are called upon imaginatively to project this
act of discovery against a hypostatized average practitioner, acquainted with
all that has been published and all that has been publicly sold. If there be an
issue more troublesome, or more apt for litigation than this, we are not aware
of it. (...)