United States[]
Under the Patent Act of 1952, inventors must prepare and submit applications to the U.S. Patent and Trademark Office ("USPTO") if they wish to obtain patent protection.[1] USPTO officials known as examiners then assess whether the application merits the award of a patent.[2]
Requirements for patentability[]
In deciding whether to approve a patent application, a USPTO examiner will consider whether the submitted application fully discloses and distinctly claims the invention.[3] In addition, the application must disclose the "best mode," or preferred way, that the applicant knows to practice the invention.[4] The examiner will also determine whether the invention itself fulfills certain substantive standards set by the patent statute. To be patentable, an invention must be useful, novel and nonobvious.[5]
The requirement of usefulness, or utility, is satisfied if the invention is operable and provides a tangible benefit." To be judged novel, the invention must not be fully anticipated by a prior patent, publication or other knowledge within the public domain.[6] A nonobvious invention must not have been readily within the ordinary skills of a competent artisan at the time the invention was made.[7]
Trade secrets[]
U.S. law provides that until the patent is issued, the information contained in the application for a patent remains secret, and therefore may be protected as a trade secret. Information beyond that required for inclusion in the patent to meet the enablement and best mode requirements can also be reserved for trade secret protection.