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By J.D. Houvener
Patent Attorney and Founder

Did you know that before you go file your application for a patent, you should consider whether your invention is even eligible for protecting? Hi, I’m J.D. Houvener, owner and founder here at Bold Patents Law Firm and also a patent attorney at the USPTO. Today we’re going to dig in and talk about patent eligibility in the greater context of patentability for inventions filed at the USPTO, in the United States Patent and Trademark Office.

The first thing I’m going to talk about is your invention and when you know it’s not going to fit into the realm of what’s eligible. There are two major statutory bars, and they’re the major reasons why we have heartbreak when we speak with inventors that, after they’ve worked on their invention and they finally get to us and they want to file their patent, we have to break the news that they violated one or two of these statutory bars.

The first bar is called the on-sale bar. So the US patent law was put in place because we want to incentivize inventors to file, to share their invention with the world, and that way we all become smarter, right? In exchange, they get a 20-year monopoly of exclusivity, being the only one to make, use, or sell or import into that country where it’s been given rights. So when an inventor sells their invention or tries to make money before filing an application, the patent system wants to, in a way, penalize or restrict the rights for that inventor down to one year. So if you’ve been selling and even offering for sale your invention, even if you haven’t even sold it, if you’ve offered it for sale and it’s been more than a year, unfortunately, your invention is not going to be eligible for filing. So that is a really tough thing. Do not miss that. Right? If you’re within that year or really close to that one year, get a hold of us and we’ll get started on your application today.

The second statutory bar, another one-year rule, is as soon as your invention has become published or used in public to where someone in your field could find that information, whether it’s online, even in a written book or a newspaper periodical, that type of thing, that’s when it’s been published. And so if it’s been more than a year since that publication or public use, it’s ineligible as well. So I mean these are heartbreak stories, like I said. If you’ve taken your invention to a trade show, talked about it, shown it off, even if you didn’t sell it, if it’s been more than a year, unfortunately, your invention is not going to be eligible at the USPTO. All right, so those two statutory bars, don’t miss them, rewind it, make sure it’s clear. If you have any questions, click below, subscribe, and email me at jdb@boldpatents.com if you have any questions at all.

Okay, so we talked about eligibility in terms of the overall architecture of patentability. And it’s true, sections 101, 102, and 103 make up the patentability rules, the core. And this is under 35 USC sections 101, 102, and 103. Section 101 we just talked about in terms of the on-sale bar. So let’s delve further into section 101, which is subject matter eligibility.

So how do we get to this? Well, before we start jumping into the law, the statute, we need to understand what your invention is, for goodness sake. So usually before we give an opinion on whether your subject matter is eligible, we need to know what your subject matter is. Seems obvious, right? When we work with an inventor, maybe even yourself, you’ve got a concept, you have an idea, maybe even a bold idea, and want to know whether that invention is worthy or eligible to meet a patent criteria. So we need to pull that invention out of you. And yes, it’s important for you to speak it, but now it’s time to write it down, get it into detail so much so that you could actually explain it enough with words alone, maybe drawings, and it’s okay if they’re stick figures or hand-drawn and nasty looking, as long as they are able to articulate what your invention does, how it works in enough detail so that someone like you in your field could build it based on just what you wrote and drew. Okay, that’s the enablement, right? That’s what we would need to eventually file a patent application for. And that’s the information that we want as a patent attorney to know. Okay, here’s what your invention is. You’ve got it in a lot of detail. Is this under Section 101, the type of subject matter that is going to be eligible before we even start talking about, is it novel or non-obvious, which is Section 102 and 103?

So back on 101, once we get the invention disclosure, the full invention, like I just talked about with all the descriptions and drawings, that’s when we as attorneys can make up our minds as to whether it’s eligible. So there’s a lot that’s eligible. Let’s talk about what is not eligible. And we’re going to be looking at your invention to see if it might fit, unfortunately, into one of these five major buckets.

1. Mathematical Concepts: Mathematical Concepts, this is more like Theory, okay? Maybe even equations would fit into this. E=mc² is a math phenomenon, a math concept. It’s not eligible under USP rules because it’s really describing physics. It’s really describing a core natural, innate fact as opposed to a human ingenuity input from the human mind.

2. Organized Human Activity: Number two, organized human activity. If you’re patenting something that happens every day or could happen in the course of a daily interaction with the human body and nature or human to human, it’s, in general, not eligible. You’ve got to prove something beyond something that is added, some additional spice, some variety, some intellect into that activity. It can’t merely be organizing human activity.

3. Mental Processes: The third aspect, I should say, of what is not eligible is mental processes, mental processes alone. Things that happen in your mind only. If there’s no evidence, no way to point to a DOT or electron or a moving part, a system of organized where you can actually say, yes, this is what’s happening and verify that activity is moving, analysis is happening. That’s what we would need in order to get it to be patentable. But if it’s purely mental, it’s not going to be eligible.

4. Laws of Nature: Number four, laws of nature. This is kind of similar to the first bullet point under Mathematical Concepts. If it’s just a law of nature, gravity for goodness sakes, the way that things, how much the mass physically is, the state of compositions, DNA, right? Laws of nature, the way that they interact on a normal day in day out way. You may have discovered it and it’s fantastic, but that law, that nature, that fundamental aspect was not human created, was not part of an invention. It was just a discovery of law nature, not eligible under the patent rules.

5. Natural Phenomena: Bullet point number five is natural phenomena. Again, this is something that just happens as part of nature, as part of the creation of the earth, you know, you could call it God or a greater being. These are not something that humans own, and it’s not going to be something the USPTO will give rights to an individual on.

Alright, so if I didn’t list it in those five, your invention is eligible. Congratulations. So we’re going to want to talk about in later videos about Section 102, novelty, which is a fancy word for new. Your invention must be new in the whole world, all-time. No big deal, right? And then Section 103, even if it’s brand new, first of its kind, it must also be non-obvious. It can’t be an obvious iteration or change from a previously disclosed prior art or publication of its life.

Hope this was instructive with respect to patent eligibility. Make sure you go back if you missed it about the on-sale bar, the publication bar, and those five rules of what is not patent eligible under the USPTO. I’m J.D. Houvener here with Bold Patents Law Firm, and hey, if you’ve got a question or you want to move forward with your invention to see if what you’ve got is eligible, click the link below and schedule a free Discovery session today with one of my team members. We look forward to helping you, and have a great rest of your day. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/