II.  U.S. PATENT LAW

            The United States Constitution gives the congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.”[1]  Today the Patent Statute of 1952 governs most aspects of patent practice.  Broadly summarized, an invention will receive a patent if the invention meets the requirements for “utility”,[2] “novelty”,[3] and “non-obviousness”.[4]  Once a patent is granted, the patentee may “prevent others from making, using, importing, offering to sell, or selling physical embodiments of the invention” in the United States.[5]  A too often heard misnomer is that a patent grants positive rights; the right to make, use, import, sell, etc.  In actuality, a patent grants negative rights, namely the right to exclude others from making, using, importing, selling, etc.[6]  “When the patentee is in a position to manufacture and sell his own invention, the right of enforcement is of critical importance.  It enables the patentee to prevent others from competing with him in the manufacture, use or sale of the novel contribution that he provided society.”  In other words, a patent grants exclusionary rights that allow the patent holder to disable others from performing certain acts, which the patent holder alone can perform.

A.  Utility

            35 U.S.C. § 101 sets forth the statutory requirement for utility: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition or matter, or any new and useful improvement thereof, may obtain a patent thereof . . . .”

Put simply, and invention must have some beneficial use to the public in order to be patentable.  The utility requirement is probably the easiest hurdle to pass during the prosecution of patent, and courts have been willing to interpret the utility requirement broadly.[7]  In Brenner v. Manson[8] the United States Supreme Court explained;

The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility.  Unless and until a process is refined and developed to this point – where specific benefit exists in currently available form – there is insufficient justification for permitting and applicant to engross what may prove to be a broad field.[9]

In short there must be substantial utility in form of a specific benefit in currently available form before an invention is deemed useful and patentable.  It would not be enough that an invention has some probable or possible utility, to be patentable, the invention must be shown to have current beneficial use.[10]

B.                 Novelty

            35 U.S.C. § 102 govern the novelty requirement of a patentable invention.  In the United States and most other countries a patent is granted only to invention that are new as opposed to inventions that are already known and are in the public domain.[11]  The reason behind this requirement seems straightforward; “it makes no sense to grant someone a patent on an invention that already exists”.[12]  Interestingly, § 102 sets out the novelty requirement by mostly pointing out what would not be considered a novel invention.  For example certain events such as the existence of a printed publication for over a year prior to the date of application, public knowledge, public use, or sale of the invention would defeat the required novelty.[13]  Other events such as abandonment[14] of the invention, or a showing that the applicant is not the actual inventor[15] will also defeat novelty and make the invention unpatentable.

            In most instances where problems of novelty arise during the course of a patent prosecution, the problem is based on the examiner’s rejection under §102(b); where an already granted patent or a printed publication,[16] which describes[17] the claimed invention has been in existence for more than a year prior to the date of application for a patent.  In such a case it is said that the applicant’s invention is “anticipated” by the prior art[18] because the inventor did not contribute anything new to the art and hence the invention is not patentable for lack of novelty. 

C.                 Non-Obviousness

            35 U.S.C. § 103 requires that that the claimed invention in a patent application be non-obvious: “a patent may not be obtained . . . if the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art . . . .”[19]  In Graham v. John Deere, Co.,[20] the Supreme Court of the United Stated set forth, the now famous, “several factual inquiries” in determining non-obviousness:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.  Against this background, the obviousness of the subject matter is determined.  Such secondary considerations as commercial success, long felt but unresolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.[21]

Unlike § 102, where only a single prior art may be used to defeat novelty, under § 103 multiple prior arts may be combined to show the claimed invention was obvious at the time it was made.[22]  It should be remembered however, “Whatever the prior art may be, it must be viewed through the eyes of the person of ordinary skill in the art”.[23]  “Obviousness cannot be established by combining the teaching of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.”[24]  This means that the prior arts themselves – whether an already granted patent, printed publication, or whatever else – must suggest to do or make the same thing that is being claimed as a new invention. 

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