Patentability & Freedom to Operate


Patentability refers to the ability of an invention to meet the requirements for obtaining a patent. For an invention to be patentable, it must consist of patentable subject matter, be novel or consist of a novel step or improvement, be non-obvious to those versed in the art, and be useful or have utility. Patentability research will identify relevant patent references in order to determine whether the proposed invention is novel and non-obvious and therefore patentable. The research may also be used to support claims of utility.

Freedom to Operate 

Freedom to operate (FTO) refers to a product, process or device’s capability to operate freely in the marketplace without infringing similar products, processes or devices which have been granted patent protection and are still in force. An FTO is a snapshot in time of the infringement risk associated with using a given product or service in a given market or geography. Freedom to operate is only a snapshot in time and cannot provide absolute freedom from risk of infringement. Freedom to operate reviews the patent landscape in the given technology area; a landscape that is every changing as old patents expire or are abandoned, and new patents are granted. An FTO analysis will also identify relevant patents that have expired providing an indication of whether the proposed product, process or device is now within the public domain. In this respect, an FTO may be used as a basis for a patentability study.

Patentability Under the America Invents Act (AIA) of 2011 (Amendments to 35 USC – Patent Reform).

Whosoever 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 therefor (35 USC § 101). As interpreted by the Federal courts, 35 U.S.C. 101 has three purposes.

First, 35 U.S.C. 101 limits an inventor to one patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.

Second, 35 U.S.C. 101 defines which categories of inventions are eligible for patent protection. An invention that is not a machine, an article of manufacture, a composition or a process cannot be patented.

Third, 35 U.S.C. 101 serves to ensure that patents are granted on only those inventions that are “useful.”

In general, for an innovation to be patentable it must;

A.  be of a patentable subject matter.

1. Utility Patents – New and useful machines, manufactures, compositions of matter or processes.

2. Design Patents – New, original and ornamental product designs.

3. Plant and Seed Patents – Distinct and new varieties of plants.

Subject matter exceptions to patentability include;

Naturally occurring phenomena or substances and products of nature, unless somehow fashioned by humans.

Laws of nature, natural forces, principles, fundamental truths and the mathematical manifestations of such.

Abstract ideas, mental steps.

Patents can only protect the application of an abstract idea or principle.

Patented Process:

A process is patentable provided it is not so broad as to encompass the basic idea of how to do something.

A process claim that does not involve a particular machine or device may be patentable provided there is a transformation and reduction of an article to a different state or thing.

The result of a patented process need not be a patentable innovation.

Computer Related Patents

The mere presence of a computer or algorithm in an otherwise patentable process does not necessarily render the invention un-patentable. A mathematical algorithm in the form of a computer program is patentable provided it is applied in a useful manner. In general, if the end result of an invention that incorporates a computer, program or algorithm is useful, concrete and tangible, the presence of such a computer, program or algorithm has no effect on the invention’s patentability. However, a computer, program or algorithm that is isolated from the process and not combined therein will likely be viewed as a mere method of calculation and therefore not patentable.

B.  be novel or consist of a novel step or improvement.

An invention shall be considered to be new if it does not form part of the state of the art. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application. Under the recent America Invents Act (AIA) of 2011, the United States is now a first-to-file patent system (formerly first-to-invent). The most important practical difference between ‘first to invent’ and ‘first to file’ is in the prior art that will be cited against a patent or application by the patent examiner or by a court in determining whether an invention is both novel and non-obvious. Prior art is now keyed to the effective filing date of the application.

Novelty and Prior Art

The AIA has introduced a number of important changes with respect to prior art documents and activities (collectively, “disclosures”). First, the availability of a U.S. patent document as prior art to a claimed invention is measured from the effective filing date of the claimed invention, which takes into account both foreign priority and domestic benefit dates. Second, the AIA adopts a global view of prior art disclosures and thus does not require that a public use or sale activity be “in this country” to be a prior art activity. Finally, a catch-all “otherwise available to the public” category of prior art is added.

Section 102 Defines Novelty and Prior Art Bars. The categories of prior art documents and activities are set forth in § 102 (a)(1)  and the categories of prior art patent documents are set forth in § 102 (a)(2). These documents and activities are used to determine whether a claimed invention is novel or nonobvious.

§ 102 (a) Anticipation: Events that occur at anytime prior to the effective application filing date which bars patentability for lack of novelty. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(1) may be based are;

i.    Prior patent of the invention by anyone.

ii.   Description of the invention in a printed publication.

iii.  Evidence the invention is in public use (publicly available, not an abandoned, suppressed or concealed invention by others).

iv.  Evidence that the invention is on sale or otherwise available to the public prior to the effective application filing date.

The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only where;

(2)  The claimed invention was described in an issued US patent, or in an application for a US patent published or deemed published, in which the patent or application names another inventor and was effectively filed before the effective filing date of the claimed invention.

Anticipation must be realized, i.e. it must be so intentional or noticed that it can be repeated. All events are limited by the principle of substantial identity. The prior use, patent, printed description or other event must be so substantially similar to the invention as to accomplish the disclosure purpose of the patent law. Enough of the invention must have been disclosed to enable one skilled in the applicable art to duplicate the product or process. However, the public use exception (prior use by others) bars patentability without full disclosure as long as the public use discloses the inventions benefits.

Anticipation must encompass the invention. It is not enough that an invention is suggested by the literature or that the literature made the invention inevitable.

§ 102 (b) Exceptions: The AIA includes a limited grace period for public disclosures by the inventor that will not bar patentability.

(1) Disclosures that occur within 12 months prior to the effective application filing date of the claimed invention shall not be deemed prior art to the claimed invention as anticipation under § 102 (a)(1) above provided;

a. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

b. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents: A disclosure shall not be deemed prior art to a claimed invention as anticipation under § 102 (a)(2) above provided;

a. the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

b. the subject matter disclosed had, before such subject matter was effectively filed under § 102 (a), had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

c. the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent as the earliest of:

(1) the actual filing date of the patent or the application for the patent containing the claimed invention; or

(2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date.

Hence, the one-year grace period is measured from the filing date of any U.S. or foreign patent application to which the patent or application is entitled to benefit or priority as to such invention.


A patent is barred for lack of novelty if there is enough information in the prior art to enable someone skilled in the art to perform the process or produce the product described in the patent application.

References to Prior Publications.

A reference that is held to be an “enabling disclosure” bars patentability. A reference is considered enabling if it discloses information that would allow one skilled in the art to duplicate the invention. The reference need not be independently enabling and may be combined with prior art to constitute an enabling disclosure. The reference may not raise merely a hypothetical possibility but must describe the invention.

C.  be non-obvious to those versed in the art.

An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. Section 103 provides that the claimed invention must not have been obvious to one with ordinary skill in the field of the invention at the time of invention and in light of the prior art. A patent for a claimed invention may not be obtained, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.

D. be useful or have utility

Patents protection is granted to the “useful arts” or “useful inventions”. The innovation must be a useful process,  machine, manufacture, or composition of matter, or any new and useful improvement thereof. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of real world value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research. Utility must be affirmatively demonstrated and claims must be limited to the demonstrated usefulness. The inventor must identify a specific utility.