An Overview of Patentability and Certain Barriers

Filing a patent application with the U.S. Patent and Trademark Office (USPTO) is the first step toward protecting your invention and securing your commercial interest in the invention. There are strict legal requirements for an invention to be considered patentable. Generally, there are five types of subject matter that are eligible for patent protection: 

  • A new process or method
  • A machine (with moving parts)
  • A manufactured article (that does not require many moving parts to function)
  • A new composition
  • A new variety of plant (must be asexually reproduced)
  • An ornamental design of a functional item

What Conditions Must Exist For Something to be Patentable?

For an applicable subject matter to be patentable with the USPTO, it must generally satisfy a three-pronged test:

    • The invention must be novel. That is, any conflict with existing or prior patents, publicly available information (including published patent applications), or items currently on the market (i.e., “prior art”) will render an invention ineligible for patent protection. 
    • The invention must have utility. Applications rarely fail on this part of the three-pronged test. If the invention has utility, that means it physically accomplishes something. Design patents are exempt from the utility requirement. 
    • The invention may not be obvious. For an invention to be non-obvious, it must go above and beyond prior art. To determine whether the invention clears this hurdle, authorities consider whether or not someone involved in the same industry or field would be likely to come up with the invention. In other words, it must be a unique or unconventional solution to a problem. 

What Can Derail a Patent Application?

Apart from being ruled ineligible for patent protection due to not satisfying the above conditions, there are many ways an application or invention itself can be sunk. For example, there are four notable items that are not eligible for patent protection: 

  • Mathematical equations
  • Laws of nature
  • Organic matter
  • Ideas


Van Court & Aldridge provides professional legal services to help an array of clients achieve their intellectual-property goals. We spend a great amount of time on each case and are proud of our personalized service. Call our firm at 347-470-6620 (East Coast) or 650-241-9175 (Silicon Valley) to discuss your options.

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Van Court & Aldridge LLP

Van Court & Aldridge LLP is a boutique patent law firm that provides a wide range of patent-related legal services.

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