Patentability is an opinion on whether a patent application, representing an invention,
shows the invention to be entitled by law to be protected by the issuance of a patent.
Different countries have different patent laws and patents are territorial, meaning
to achieve patent protection in a country, a patent must be issued in that country.
The opinions and skills of a hypothetical person, ‘a person of ordinary skill in
the art’ (POSITA), ‘one of ordinary skill in the art’, ‘anyone skilled in the art’
or ‘one skilled in the art’ is one of the benchmarks against which patentability
is measured in the U.S. and through the Patent Cooperation Treaty (PCT) .
This hypothetical person has been around for a long time, the original and first
revision of the USPTO Manual of Patent Examining Procedure (MPEP) speaks of a method
being obvious and unpatentable if “[A]nyone skilled in the art would at once be aware
be aware of a method of making it.” See Revision 1 MPEP (1949) 706.03(q) Obvious
Method. “Things believed to be known to those skilled in the art are often asserted
by the examiner to be “well known” or “matters of common knowledge.””See Revision
1 MPEP (1949) 706.02(a) Establishing “Well Known” Prior Art.
Current revisions of the MPEP (August 2012) refer to a “person of ordinary skill
in the art” (often referred to as a POSITA) at least 37 times. “One of ordinary skill
in the art” is referred to at least 58 times, and “one skilled in the art” at
least 50 times. One of the first references in the current MPEP is regarding the
requirement of an enabling disclosure of a provisional patent application “to permit
one of ordinary skill in the art to make and use the claimed invention in the later
filed nonprovisional application without undue experimentation.” MPEP 201.11.
The Patent Cooperation Treaty (PCT) uses a similar objective in Article 33: “[A]
claimed invention shall be considered to involve an inventive step if, having regard
to the prior art as defined in the Regulations, it is not, at the prescribed relevant
date, obvious to a person skilled in the art.”
Patentability & Strategy
Patentability is a complicated concept with a crucial time factor. The subject matter
is covered at length in the Manual of Patent Examining Procedure (MPEP) 2100. One
criteria of patentability, obviousness, is examined backwards in time to just before
an invention was conceived to determine whether the invention as a whole would have
been obvious to a person of ordinary skills in the art (POSITA) (MPEP 2142). The
earlier that an invention priority date is established by filing a patent application,
the earlier the date where patentability is measured giving an advantage for the
applicant against later prior art.
Because of the critical timing of patentability, provisional patent applications
can be part of a strategy to establish patentability as soon as possible and as inexpensively
as possible to achieve an earlier patentability priority date than a more expensive
and later filed nonprovisional patent application. The provisional patent application
filing date establishes a priority date ONLY if it supports and is followed by a
nonprovisional patent application but the clock does NOT start on the nonprovisional
patent term of 20 years until that patent is filed (must be filed within 12 months
of earliest provisional patent application to which it claims priority).
With a PCT filing, several provisional patent applications can be used to support
one invention under the unity of invention. WIPO (World Intellectual Property Organization)
Magazine reports “[I]t is a popular strategy to file a series of related provisional
patent applications after each significant technical or commercial milestone in product
development, and to file a formal patent application that incorporates them all,
within one year of filing the first provisional patent application.”
Many WIPO publications discuss worldwide patenting strategies including using U.S.
Provisional Patent Applications, other short-term petty patents, innovation patents
or utility models and their growing use. The index to the WIPO web site is at: http://www.wipo.int/portal/index.html.en.
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