Patentability

Requirements in USA

By
Dr. Kalyan C. Kankanala
Brain League IP Services

© Brain League IP Services,

2009. Non-commercial use is
permitted.
 Patent Law
USA

Article 1 Section 8 Clause 8

Title 35
Federal Circuit
MPEP
I © Brain League IP Services,
2009. Non-commercial use is
permitted.
Invention

Inventor report
Invention disclosure
Patent search
Patentablity Opinion
Patent application
Filing
Prosecution
Patent Grant

Patent
 Patentability
requirements

Patentable subject matter

Utility
Novelty
Nonobviousness
Specification
© Brain League IP Services,
2009. Non-commercial use is
permitted.
INVENTIONS Kalyan’s Patent
Filter Model
Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

© Brain League IP Services,

PATENTS
2009. Non-commercial use is
permitted.
 Patentable Subject
Matter
Section 101
Process, machine, manufacture,
composition of matter and
Improvements
Exclusions
Abstract Ideas, Physical Phenomena
and Products of Nature
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Biotechnology
Funk Bros. v. Kalo
Diamond v. Chakrabarty
Pioneer Hibebred v. J.E.M.
Oncomouse
Human-Animal Chimera

© Brain League IP Services,

2009. Non-commercial use is
permitted.
 Software

Diamond v. Diehr
State Street Bank v. Signature Fin.
Group
In re Bilski

© Brain League IP Services,

2009. Non-commercial use is
permitted.
 Utility
Specific
Substantial
Credible

Brenner v. Manson
In re Fischer
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Novelty
Known or used
Patented or published
Public use or On sale
Abandoned
Foreign priority
Patented in another country
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Novelty
Derived
Suppressed or Concealed
Diligence
Single prior art reference
Isolated or purified- activity

Hybritech v. Monoclonal
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Nonobviousness
Scope of prior art
Differences- invention and prior art
Level of ordinary skill
Secondary Indiicia

At the time of conception

Obvious to try© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Secondary Indicia
Commercial Success
Copying
Praise by expert
Unexpected results
Long felt need

© Brain League IP Services,

2009. Non-commercial use is
permitted.
 Cases
Hotchkiss v. Greenwood
Graham v. John Deere
Hybritech v. monoclonal
In re Deuel
KSR V. Teleflex
In re Kubin
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Specification
Written Description
Enablement
Best Mode
Claims

Object: Notice and Dissemination

© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Example
Invention - A machine and a process for
implanting stem cells in the retina for curing
blindness caused due to retinal degeneration.

Prior Art

Role of Stem cells

Microsurgical techniques
Articles on need for such implants
© Brain League IP Services,
2009. Non-commercial use is
permitted.
 Thank you

Have a good day

© Brain League IP Services,
2009. Non-commercial use is
permitted.