Under U.S. patent law, patents may be used to protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (typically referred to as “inventions”). In other words, “anything made by a human.” A patent cannot be obtained for a mere suggestion or idea, anything that naturally occurs, the laws of nature or observations of a natural process. A patentable invention needs to meet three primary legal criteria:
To be “useful,” the invention must have a useful purpose and must exist and/or be operational (typically referred to a “reduced to practice”). For example, if a patent application covers a new chemical compound, the patent applicant must demonstrate that the chemical compound can be made in the described form. If it covers a process, the patent application must demonstrate that the process actually works as described. The invention cannot be purely theoretical and unproven. Research data is typically presented in the application to meet this requirement. If data is not available, it is much more difficult (and expensive) to convince a patent office that the invention is actually useful.
The invention cannot be previously described in any printed publication (by the inventor or anyone else), or have been in public use, on sale, or otherwise available to the public before the patent application is filed. Most countries require “absolute novelty”, meaning all patent rights are lost on the date of first publication, sale or public use. The United States, however, has a grace period of one year after the first public description, use or sale to file a patent application. For universities, printed publications most often consist of academic journal articles, but it is important to note that conference presentations/posters, YouTube videos, or even press releases are considered publications.
Not all publications automatically result in lost patent rights. Under U.S. patent law, a publication must be “enabling” to affect patent rights. In other words, the publication must expressly make obvious all of the elements of the invention, so a person with the requisite skills could replicate the invention based on the publication. For example, if an abstract of a potential conference presentation describes the impressive results obtained through a new process, but does not describe the process itself beyond a generic reference, the abstract is likely not enabling. Similarly, if a presentation slide describes the general properties or performance of a new material, but does not provide the specific chemical structure, it is likely not enabling.
An invention must also be “non-obvious”, meaning the subject matter of the invention must be sufficiently different from what has been previously used or described. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. In the simplest terms, there must have been an “aha!” or “eureka!” moment that led to an insight that resulted in the invention – an insight that a person with typical skills in the relevant field would not necessarily have had.