Ch2. Patent Requirements — Novelty, Non-Obviousness & Utility

What Can Be Patented — Patentable Subject Matter

Statutory Subject Matter (35 USC § 101):
Any new and useful process, machine, manufacture, or composition of matter
Or any new and useful improvement thereof

Patentable Categories:
Product/Article of Manufacture: devices, chemicals, compositions
Method/Process: manufacturing methods, methods of use
Improvement: incremental enhancements to existing technology
New Use: a new application of a known compound or method

Patent-Ineligible Subject Matter (Alice/Mayo framework):
Laws of nature (E = mc²)
Natural phenomena
Abstract ideas (including basic math and mental steps)
Note: A practical application of an abstract idea may still be patentable
(Alice Corp. v. CLS Bank, 2014; Mayo Collaborative v. Prometheus, 2012)

Novelty (35 USC § 102)

Novelty Requirement:
The claimed invention must not have been anticipated by prior art

Prior Art Under AIA:
Any patent, published application, or other disclosure available to the public
anywhere in the world before the effective filing date of the claim

Common Novelty-Defeating Disclosures:
Prior patent publications
Academic articles and conference papers
Commercial sales and public use
Prior art in a co-pending application (after publication)

AIA Grace Period (§ 102(b)(1)):
An inventor's own disclosure within 12 months of the filing date
does NOT constitute prior art against the inventor's own application
Third-party disclosures AFTER the inventor's own disclosure are also excluded
NOTE: Must affirmatively claim the grace period — it is not automatic

Non-Obviousness (35 USC § 103)

Non-Obviousness Requirement:
The claimed invention must not have been obvious to a
Person Having Ordinary Skill In the Art (PHOSITA)
at the time the invention was made

PHOSITA Standard:
Possesses average knowledge and skill in the relevant technical field
Aware of all relevant prior art; no inventive ability assumed

Non-Obviousness Analysis (Graham v. John Deere, 1966):
(1) Scope and content of the prior art
(2) Differences between prior art and the claims
(3) Level of ordinary skill in the field
(4) Secondary considerations (commercial success, long-felt need, etc.)

Most Contested Requirement:
Non-obviousness is the most frequently litigated patentability issue
in USPTO examination, IPR proceedings, and federal court

Utility (35 USC § 101)

Utility Requirement:
The invention must have a specific, substantial, and credible utility

Utility Exceptions:
Purely theoretical discoveries with no known practical use
Unsafe or illegal methods (case-specific)

Methods of Medical Treatment:
Patentable in the US (contrast with some other countries)
Diagnostic methods may face § 101 challenges after Mayo

Broad Utility Standard:
Agriculture, mining, aquaculture included
A currently impractical technology may satisfy utility if future use is credible

Key Concept Cards

Patent Requires: Novel + Non-Obvious + Useful ★★★★★ : 35 USC §§ 101, 102, 103 — the three pillars. Memory hook: NNU (new · not obvious · useful)

AIA Grace Period = 12 Months + Must Claim ★★★★★ : Inventor’s own disclosure 12 months before filing is excluded from prior art — but must be affirmatively invoked. Memory hook: 12 months + claim it

Non-Obviousness = Most-Litigated Requirement ★★★★☆ : Most patent rejections and invalidity arguments center on § 103. Memory hook: § 103 = hardest hurdle

Practice Questions

Q. Why must both novelty AND non-obviousness be analyzed together?

Novelty (§ 102) asks: does a single prior art reference disclose every element of the claim? It is a binary, absolute test. Non-obviousness (§ 103) asks: even if no single reference anticipates the claim, would combining references have been obvious to a PHOSITA? If a claim lacks novelty, the obviousness analysis is moot (it fails the lower bar first). If novel, it must still survive the obviousness inquiry. An unexpected result or synergistic combination can support non-obviousness even when individual elements are known.

Q. Can a researcher file a patent after presenting at a conference?

Yes — but timing is critical. Under the AIA grace period (§ 102(b)(1)), the inventor’s own public disclosure within 12 months of filing does not constitute prior art against the inventor. However, the disclosure DOES constitute prior art against any OTHER inventor who independently made the same invention after the disclosure date. Best practice: file before presenting. If you’ve already presented: file within 12 months and be sure to invoke the grace period when responding to any § 102 rejection. Note: non-US jurisdictions often have stricter or no grace periods — confirm country-by-country rules before filing internationally.