Note, the information provided here are the basic concepts, however we would have look at the details of your case to provide you a patentability legal opinion. In generic terms: in determining the patentably of your your invention, the Patent Office must consider utility, novelty, obviousness, and so called "secondary considerations." Generally, if your product or process does something useful that a "close" one does not, then your product would logically be novel.

In general, to be patentable, an invention must fulfill three criteria: novelty, inventive step (or non-obviousness) and industrial applicability. This means that the invention must be new compared to the state of the art on the filing date of the application, that it should not be obvious to a person skilled in the art, in other words, it must represent a sufficient advance in relation to the sate of art, and that it should be applicable in the context of some commercial production.

The novelty (newness) requirement means that the invention must be judged by the U.S. Patent Office to have never been made public through publication, display, or other description; never sold or offered for sale; and never used commercially. In addition, it cannot have been the subject of a patent issued elsewhere more than one year before the filing of a U.S. patent application. For researchers, the novelty requirement raises two practical issues.

Novelty: It is new and wasn't known, sold or used by others or printed in a publication more than one year prior to the filing, however, this one year grace period does not exist internationally. Non-obviousness: The invention cannot be obvious to a person of "ordinary skill" in the art. Non-obviousness is usually demonstrated by showing that practicing the invention yields surprising and unexpected results.

Second, the invention must be new or "novel". An invention is novel as long as there is no prior patent, publication or existing product that contains all the elements of your invention, or which, if combined, as suggested by the prior art itself, make the invention obvious. Lastly, the invention must not be "obvious".

All inventions that have commercial application can be covered by Patent - “invention means a new product or process involving an inventive step and capable of industrial application” (Section 2(1) (j).

In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," subject to the conditions and requirements of the law (35 U.S.C. Sec. 101). A researcher who wonders whether an invention is patentable should treat the invention as potentially patentable and contact CCFI for advice.

Under the Patent Code there are several events that can prevent an inventor from receiving a patent on his invention. They are generally based on the principles that there can be only one true inventor and that the United States has a one year grace period from the day that the public learns of the invention. It should be noted that a patent issued anywhere to anyone, even the inventor applying in the U.S., is a printed publication which begins the clock running.

Inventions include new processes, products, apparatus, compositions of matter, living organisms, or improvements to existing technology in those categories. A process is a method of producing a useful result. A process can be an improvement on an existing systems, a combination of old systems in a novel manner, or a new use of a known process. A machine is an apparatus that performs a functions and produces a definite result or effect.

Patentable inventions are defined by United States Code Title 35. To be patentable, an invention must be useful, novel, and non-obvious. A useful invention has a recognizable purpose to a person having ordinary skill in the art. A novel invention was previously unknown. A non-obvious invention is unexpected or surprising to a person having ordinary skill in the art at the time the invention was made.

Software may be patentable when it is part of a functional system. In addition, software is covered by the Copyright Act of 1976 under which computer software (as well as all other copyrightable work) is protected by Federal Statute from the moment it is "fixed" in a tangible form.

We hope this page will help you answer commonly asked questions as you go throught the proposal and grants management process at the University of Delaware. Choose a topic heading at right to view questions that are commonly asked about them and then click on a question to expand its answer. If you have additional questions that are not covered here you can contact RGS or find your representative in our staff directory.