Preparing the Patent Application
periments that failed or experiments that did not work as well as the
invention. This information may be used to make a showing of the
best way to carry out the invention besides bringing out the nonobvi-
ous features of the invention.
A list of the possible uses for the invention shows
the practitioner in understanding the intended use for the invention.
Usually, the uses are readily apparent.
Lastly, having a laboratory notebook and any other records for
the invention available shows how the invention has been document-
ed. The practitioner may need to rely on these documents at some
point during the patent process.
After assembling this information, the inventor is ready to visit
a patent practitioner. The information supplied will be used to evalu-
ate the invention for patentability, prepare the patent application,
and prepare the accompanying formal papers. Appendix IV lists the
information the patent practitioner needs.
The Requirements for
Prior to preparing and filing a patent application, it is impor-
tant to determine whether the invention is patentable based on the
following three tests for patentability:
(1) utility 3
(2) novelty 4
(3) nonobviousness 5
To meet the utility requirement, the invention must be able to
accomplish three things:
The Requirements for Patentability
(1) It must be operable.
(2) It must solve the problem it was designed to solve.
(3) It must provide a minimum benefit to society.
Most inventions meet the utility requirement. Rarely is a de-
vice invented without having a particular use in mind. However, in-
ventions relating to new chemical compounds or genetic sequences
sometimes have difficulty meeting the utility requirement. This usu-
ally occurs when a scientist is exploring a general class of compounds
and a new compound is invented, but its use is not yet identified.
Similarly, inventions relating to chemical processes may not always
meet the utility requirement because it must be shown that the prod-
uct from the process is useful for some specific purpose other than
being an end product of the process. Sometimes, this cannot be
Some people make the mistake of thinking that an invention
must be commercially successful to be useful. This is not true. The
invention does not have to be commercially marketable or have out-
standing performance characteristics to meet the utility requirement.
However, the invention must benefit society in some way. If the in-
vention is considered harmful to the public, then the utility require-
ment is not met. An example of an invention deemed harmful to the
public in 1897 was a slot machine. 6 However, society's standards have
since changed. Today, this type of invention would be patentable be-
cause it provides amusement.
An invention is novel if every element of the invention is not:
9 found in a single prior art reference;
Preparing the Patent Application
9 previously known; or
9 part of a single prior art device or practice.
art is the body of technical information that was
available or accessible to the public at the time of or be-
fore the invention.
Usually prior to the preparation and filing of a patent applica-
tion, a search of the prior art is conducted. An invention is not novel
if there is an identity formed between a single prior
art reference and the invention. Therefore, if a
or describes every feature of the invention, the invention lacks novel-
ty and is not patentable. The following example reflects how the
analysis for anticipation or novelty is conducted. Note that the analy-
sis compares every element of the invention to the elements found in
a single patent.
Jacob Whitlock 7 invented a railroad grade crossing
cover laid over the railroad ties and between the rails.
An overlapping splicer piece connects segments of
the grade crossing cover to one another.
A patent, issued to Rennels, discloses a railroad
crossing cover laid over railroad ties and between the
rails. The crossing cover has a one-piece rubber center
section reinforced with a corrugated metal plate that
rests on top of the rubber laid between the tracks.
A comparison of the invention of Whitlock to the
Rennels patent shows that the Rennels patent does
not have each and every element of the Whitlock in-