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"Patent Eligible" vs. "Patentable"

Posted Sunday, January 15, 2012 by Mike Gibbons

Patent attorneys and patent agents are often asked by an inventor who is interested in patenting an invention whether the invention is patentable.

Most often, the answer I give upon hearing more about an invention is that it is patent eligible, but that whether it is patentable is up to the patent office. The terms “patent eligible” and “patentable” sound similar, but have very different meanings, and it is important for an inventor to understand the distinction.

“Patent eligible” means that the invention falls within a category of inventions for which U.S. patent law provides that a patent may be sought. The U.S. patent laws are codified in Title 35 of the United States Code, and section 101 of the code reads “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Therefore, if an invention is a tangible object, for example, it’s a composition of matter and probably an article of manufacture, so it falls in one of the categories. A patent attorney or patent agent would say that the tangible object is “patent eligible” since it qualifies as something for which one could apply for a patent by law.

Whether one would actually get the patent for that tangible object is another question altogether. That is the question of whether the object is “patentable.” Patentability is largely determined by requirements in different sections of Title 35, namely 35 U.S.C. §§102, 103 and 112. Those three sections of the code require an invention to be novel, non-obvious and adequately described, respectively, for a patent to issue.

If the tangible object that is the patent eligible invention is also novel, non-obvious and adequately described in an application for the patent, then the invention would be said to be patentable. Patentability of an invention is initially determined solely by the U.S. Patent and Trademark Office, based upon the search and examination the office performs in response to an application for a patent. Prior to an application being filed, no patent attorney or patent agent can tell an inventor with authority that an invention is patentable, because that is up to the patent office. A patent practitioner can conduct an independent search and render an opinion on patentability, and for a variety of reasons it can be a good idea to pay a practitioner to do exactly that, but it is important to note that the result is still just an opinion (albeit a well-informed opinion) and not a guarantee.

In most cases, a patent practitioner will only be able to say with authority that an invention is patent eligible. To determine with certainty that something is patentable requires an application for a patent for the invention to be submitted and for the application to be examined by the patent office.

"Patent Eligible" vs. "Patentable" ›› Ruttler Mills PLLC