ABSTRACT
The goal in conducting a patentability search is to ensure that the invention falls into one of five statutory classes if applying for a utility patent:
1. Process: Includes conventional processes (e.g., the method for making plastics) and software processes
2. Machines: Includes conventional machines, those with moving parts (e.g., a telephone) and software machines
3. Manufactured products: Inventions with nonmoving parts (e.g., books) 4. Compositions of matter: Examples include chemicals, alloys, and phar-
maceuticals 5. New uses of any of the above
Other goals of a patentability search are to determine if the invention
• Is useful, even if that use is only for amusement purposes • Satisfies also the novelty requirement; in other words, it must be original
or something that has never been seen before • Meets the nonobviousness requirement, meaning it would have been unob-
vious to the people skilled in the area of the invention
Although “anything under the sun” can be patented, there are inventions that are not patentable:
1. Superior material for inferior 2. Change in size, form, or shape
3. Mere adjustability 4. Diminution of parts 5. Omission of parts 6. Use of old art for another purpose 7. Mere aggregation 8. Laws of nature 9. Physical phenomena
10. Abstract ideas 11. Literary, dramatic, musical, and artistic works (these should be copyright
protected, not patented) 12. Inventions that are against the laws of nature (e.g., perpetual motion
machines) 13. Inventions whose only use is for illegal purposes (e.g., torture devices,
terrorist tools, forgeries, etc.)
In determining the patentability of an invention, it is not just the claims made in other patents that are important to consider, but the body of issued patent as well. For example, it is possible that your invention may not be reading on claims of other patents but other disclosures in the patent may provide suggestions for your invention. The following brief description is important to understanding the various parts of a patent or a published application (see Figure 3.1):
(10) Patent No.: The number assigned to the issued patent is the best place to branch out your search, particularly the patent numbers quoted in the front page of the patent that served as a related reference.
