1st the invention must be NEW or NOVEL and 2nd Not Barred by the Law
The 1st requirement NEW or NOVEL requires that the invention was not known or used by others in this country, or patented or described in a printed publication in this or another country, prior to invention by the patent applicant, 35 U.S.C. § 102(a). To meet the novelty requirement, the invention must be new compared to the other products of like kind which are referred to as the prior art. The 2nd requirement is a statutory bar or prohibition which applies where the invention was in public use or on sale in this country, or patented or described in a printed publication in this or another country more than one year prior to the date of filing the application for a U.S. patent, 35 U.S.C. § 102(b).
In other words, the rights to a patent is lost if the inventor delays too long before seeking patent protection. The novelty requirement is inherent in the invention when compared to the prior art and an inventor’s own actions can not destroy its novelty, but an inventor’s own actions of delaying the filing of a patent application for more than one year or 12 months from the invention’s 1st use in public or being put on sale etc (35 U.S.C.§ 102 (b)) can destroy the novelty/validity of his or her own invention, and can create a statutory bar to patentability.
There are some legal exceptions such as experimental use in public, which might not start the 12 month period running even though the invention was physically used in public, but these are exceptions with very strict requirements set out by court cases, which really say the invention was not completed during its use for more than 12 months and that its 12 months use date runs from the date it was stopped being used experimentally.
1st the idea must be Patentable Subject Matter and 2nd it must have Utility
1st is the idea that patentable subject matter as defined under 35 U.S.C. § 101, into categories for patentable subject matter which are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof. Designs or Ornamental items are also patentable, as Design Patents, based on their design and looks, but not their function. The Supreme Court found in the case of Diamond v. Chakrabarty, 447 U.S. 303 (1980) that Congress intended patentable subject matter to "include anything under the sun that is made by man." However, the Court also stated that this broad definition has limits and does not embrace every discovery. According to the Court, the laws of nature, physical phenomena, and abstract ideas are not patentable. But the traditional rules that "printed matter" and "business methods" are unpatentable were called into question in 1998, by the State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998) Court holding that a system of conducting business can be patentable as a process even though it does not act on anything tangible, however limitations in a recent case In. re Bilski , which is case now before the Supreme Court, may limit that case’s holdings.
Utility is the 2nd requirement for patentability and that means the invention must be useful 35 U.S.C. § 101. The Patent and Trademark Office ( PTO ) requires that the utility asserted in a patent application be credible, specific, and substantial. Credible utility requires that logic and facts support the assertion of utility, or that a person of ordinary skill in the art would accept that the disclosed invention is currently capable of the claimed use. The utility must be specific to the subject matter claimed; not a general utility that could apply to a broad class of inventions. Substantial utility requires that the invention have a defined real world use. It can not be a claimed utility that requires or demands carrying out further research to identify or confirm its real use in the context of the real world.
The idea must be new and different, but also Non-obviousness to be different enough for a patent, and this requires a prior art search on the idea .
Non-obviousness was added by Congress as a requirement to the test for patentability with the enactment of the Patent Act of 1952. So even if an idea for a patent is new, it must be non-obvious because if it obvious the Patent and Trademark Office will reject the patent application which incorporates the idea. The test for non-obviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made, 35 U.S.C. § 103. If the answer to the test is obvious then no patent is allowed, but if the answer to the test is non-obviousness a patent would be allowed. The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966) held that non-obviousness could be determined through basic factual inquiries into the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of skill possessed by a person of ordinary skill in the relevant art. Non-obviousness was again addressed in 2007, by the Supreme Court in KSR International Co. v. Teleflex, Inc. by the Court rejecting a test for non-obviousness employed by the Court of Appeals for the Federal Circuit as being too rigid. The test for non-obviousness employed by the Court of Appeals was the "teaching, suggestion, or motivation test" so a patent claim was only deemed obvious if "some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of person having ordinary skill in the art." The KSR Court endorsed a more expansive and flexible approach under which "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
1st Establish Use of the Trademark in Commerce and 2nd it must have Distinctiveness
These two above basic requirements must be met for a mark to be eligible for trademark protection.
The first requirement, that a mark be used in commerce, arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce. The Lanham Act defines a trademark as a mark used in commerce, 15 U.S.C. § 1051 (a), or registered with a bona fide intent to use it in commerce 15 U.S.C. § 1051 (b). If a mark is not in use in commerce at the time the application for registration is filed, registration may still be permitted if the applicant establishes, in writing, a good faith intent to use the mark in commerce at a future date. Both at common law and under traditional Lanham Act registration procedures, exclusive rights to a trademark are awarded to the first to use it in commerce.
The second requirement, that a mark be distinctive, addresses a trademark's capacity for identifying and distinguishing particular goods as coming from one producer or source and not another. Trademarks are traditionally divided into four categories of distinctiveness: arbitrary/fanciful, suggestive, descriptive, and generic. If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public. Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source. A mark may be generic on it’s face and will be refused registration, or it may become generic over time through use which makes it generically descriptive of the good or services to which it is associated.
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