U.S. Patent Application Requirements:

Bill NaifehPatents

The foundation of United States patent law is based on a quid pro quo between the applicant and the government.  The government grants a monopoly for the invention in exchange for a technology disclosure which should increase the public’s collective knowledge.  Once the patent expires, anyone is then free to practice the invention.  Furthermore, because the patent is “laid open” to the public, anyone is free to use the information contained in the patent to invent other inventions which further increases the collective knowledge.

In the U.S., there are several requirements designed to ensure a fair “bargained for exchange” (i.e., a monopoly for an increase in the collective knowledge).  Some requirements focus on the invention.  Other requirements focus on the application itself.  All requirements must be met or the patent is likely to be invalidated in court at a later date.  This post will discuss some of the basic requirements for a U.S. patent.

Invention Requirements:

The Invention Must be New – In other words, the invention cannot have been invented, patented, or practiced before by others or previously disclosed to anyone in a non-confidential manner.  Obviously, if the invention has been disclosed previously, there is no increase in the public collective knowledge, and thus no basis for the quid pro quo discussed above.  The definition, details, and exceptions to this requirement are governed by the United States Statute 35 U.S.C. 102.  When a patent office examiner believes that the claimed invention is not new or has been disclosed before, he will issue a “102 rejection” which means that he is rejecting the application under 35 U.S.C. 102.  In the U.S., this is an objective standard.

The Invention Must be Non-Obvious – If the invention is simply a combination of known elements put together in an obvious manner, there is no real increase in the collective knowledge.  Thus, there is no basis for the quid pro quo.  The Europeans call this requirement “inventive step.” In other words, the invention must have enough “inventiveness” to increase the collective knowledge even if the invention is entirely new.  In the U.S., this is actually more of a subjective standard.

The definition, details, and exceptions to this requirement are governed by the United States Statute 35 U.S.C. 103.  When a patent office examiner believes that the claimed invention is just a combination of old elements put together in an obvious manner, he will issue a “103 rejection” (which means that he is rejecting the application under 35 U.S.C. 103).

Application Requirements:

Enablement Requirement – The patent application must disclose enough details about the invention to “enable” others to make and use the invention without undue experimentation.  In chemical and pharmaceutical areas, this requirement results in applications which often contain detailed proportions and test data for the formulation of the invention.  In mechanical areas, often only dimensionless drawings are required because someone skilled in the art can look at the drawings and understand how to make and use the invention.  In reality, this requirement is determined by U.S. case law and varies widely between technological fields.  Because it is determined by U.S. case law, the requirement may change over time.  For instance, it appears that the enablement requirements for software patents are changing.

Written Description Requirement – Many cases hold that there is a written description requirement in addition to the enablement requirement.  Currently, however, the judges of Federal Circuit (which is the patent appeals courts for the United States) are split as to whether there is a separate “written description” requirement or whether this is part of the enablement requirement.  If there is a separate written description requirement, it means that the application must contain enough written details describing the invention to show that the inventor had actual “possession” of the invention at the time the application was filed.

Best Mode Requirement – The application must set forth the “best mode” contemplated by the inventor for carrying out the invention at the time of filing.  The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute.  The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.  However, this provision was gutted by the the Leahy-Smith Patent Reform Act signed into law on September 16, 2011.  Under the law, the USPTO is supposed to evaluate whether the patent application meets the Best Mode requirement.  However, failure to meet the best mode requirement cannot invalidate a patent.

In reality, the USPTO is not capable of determining whether an application meets the the Best Mode Requirement,  therefore it appears that this requirement has been gutted and is no longer a “real” requirement.   It will be interesting to see how the amended statute is interpreted by the courts.

Under the previous law, the following applied:

In practical terms, the best mode requirement may mean that more detail should be disclosed when the application is filed later in the product development process.  Early in a product development cycle there is usually less known about the product or the preferred embodiments.  For instance, early in the product cycle, there may only be requirements documents.  Assuming these requirement documents are enabling, the detail in these requirement documents may be all that is necessary for the patent application.  However, if the patent application is filed later in the product development cycle, there will be more detail developed and arguably the additional detailed may have to be included in the application to meet the “best mode” requirements.

As an example, if an application is filed early covering a software product, the early application is likely to just contain flow charts and the primary databases structures and relationships discussed in requirement documents.  However, if the application is filed later, the application may have to include any developed detail, such as screenshots or other features which may or may not be germane to the invention.  Failure to include such detail may provide a future infringer with a chance to argue that the best mode requirements were not met.  Thus, to meet the best mode requirement, it is important to make sure the application fully describes the product as of the date of filing.

I am not sure what standard really applies now.  However, I doubt if we have to worry as much about the best mode requirement.

Duty of Candor – Currently, there is no duty to perform a patent search before you file a patent application.  However, if you do perform a patent search and find relevant information, you must disclose the relevant information to the patent office.  Additionally, from the time of filing to the time of granting, anyone connected with the application must disclose to the patent office any relevant information they find, locate or are made aware of.  This duty has been interpreted and expanded by judges who often have an unrealistic view of the realities of running a business or maintaining a patent portfolio.  It is currently an onerous and constantly changing requirement.

The above descriptions are relatively superficial and are not meant to be a detailed discussion of all U.S. patent requirements.  Furthermore, it is important to understand that this post is focused on U.S. requirements.  Other countries have similar, but often different requirements.  If you are concerned about other countries, you should consult a patent attorney who has a good working knowledge of the laws of other countries.