3 Types of Patents
Unsurprisingly, to obtain a utility patent one must establish that one’s innovation is capable of some beneficial use to society. An improved surfboard is useful even if its sole purpose is to provide amusement. A more potent chemical defoliant is useful even if its application could have horrific consequences, as long as it is also capable of some beneficial use.
Whether a claimed innovation is useful is determined only after the invention has been “reduced to practice”. If, for instance, a pharmaceutical company applies to register a patent for its purported improved drug therapy for Parkinson’s symptoms, it will not obtain a patent when the compound has been formulated and manufactured, but only when the efficacy of the new compound has been established through testing on Parkinson’s patients. If the compound does nothing for Parkinson’s symptoms, but unexpectedly appears to alleviate hypertension, it likely has met the utility standard for a patent for a hypertension, not a Parkinson’s therapeutic.
Patent’s novelty requirement is akin to Copyright’s prerequisite of originality. Both forms of IP require that the protected information originated in the mind of the inventor or author. “Novel” patentable inventions, however, have not only originated in the mind of the inventor, but have also been made known to the public for the first time.
If, in 2020, I compose a haiku identical to one written in the 17th Century, I can obtain copyright protection for my original haiku as long as I had no knowledge of the identical poem written 400 years earlier. On the other hand, if I (re)invent a wind turbine that pumps water, and a diagram for the same wind turbine is found in the 400-year-old notebook of a Florentine engineer, my invention is not novel, if my wind turbine could be built from the centuries old diagram, which is said to anticipate my (re)invention.
Anticipation, therefore, defeats novelty, and many unsuccessful patent applications have foundered on the shoals of anticipation. Patent lawyers use of the aphorism “library before laboratory” underscores the risk of anticipation. Before investing effort and resources in the exciting development of a new compound, device, etc., one should invest in more tedious efforts to establish that the compound, device, etc. is, in fact, novel. If you do not, rest assured, those reviewing your application (U.S. patent examiners) will do so. If they identify any single prior disclosure (e.g., an article in a print publication, a previously granted patent) of information that reveals all the elements of your invention, they will reject your application.
In the late 19th Century the U.S. awarded a patent to the inventor of a pencil which, for the first time, had an eraser attached to one end. The Supreme Court invalidated the patent determining that while the physical joining of a pencil and the eraser may result in a good that is more convenient to users, this joining implicated nothing new about the independent functioning of these two articles, and involved “mechanical skill” and not some degree of “inventive genius” that patents require.
In other words, the idea of a pencil with an attached eraser was obvious to those with “ordinary skill in the art” — presumably designers and manufacturers of writing implements. Accordingly, even if an invention is novel (i.e. made known for the first time) and useful, it cannot be patented if it is deemed obvious.
Supposed I devise a cervical spine stretcher for children simply by reducing the dimensions of the existing technology for adults. It is unlikely I could obtain a patent for this product even if it is novel, because it is obvious to anyone working in the field of physical therapy. On the other hand, if my cervical spine stretcher incorporated technology different from that used in the adult product thereby making the stretcher more effective for children, it is less likely my invention would be considered obvious.
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