Congress has adopted various statutory provisions governing the issuance of patents since the granting of it's power in 1787. The present scheme or operating structure for today's practice is contained in Title 35 of the United States Code which was enacted as the Patent Act of July 19, 1952. There have been numerous subsequent amendments or revisions to various sections but the "meat" of Title 35 has remained essentially the same.

It is important to know that obtaining a patent from the U.S. Patent & Trademark Office is an adversarial process. In other words, a substantial burden is placed on the inventor (or his attorney) to prove that the invention is "worthy" of a patent. There are three main sections of the Statute are Sections 101, 102 and 103 which delineate the basic hurdles which must be overcome in order to be granted a patent certificate for an invention. More particularly, Section 101 states the following:

"Whoever 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, subject to the conditions and requirements of this title."

The term "process" generally refers to an operation performed by rule or a certain order to produce a specific result. It includes putting a force of nature into a certain specified condition and using the force in that condition for a practical purpose. The telephone is an example of this combination of elements subject to a specific mode of treatment. The invention involved the application of an existing force in nature (the undulatory theory of sound) and putting it to practice in a telephone to produce a useful result. The force of nature left to itself would not produce such a result.

The term "machine" refers to an apparatus with interrelated parts having separate functions, used in the performance of work. It is comprised of various mechanisms, mechanical elements and various combinations of the same. The instrument should utilize one or more of the mechanical powers known to modern physics and be capable of producing a predetermined physical effect. Thus, even a hand tool may be patentable as a machine, for it harnesses the simple biological power of man and uses it in a new and useful manner. Machine patents are generally classified under four headings, 1) the entire machine; 2) one or more elements of the machine; 3) new elements and new combinations of elements; 4) new combination of old elements producing a new and useful result or and old result but in a new and better way. "Better" means that is the new combination significantly produces more efficient result, the new combination will be patentable subject matter. It is not enough to simply describe the function of the machine for a patent to be granted. The novel structure of the machine must also be disclosed.

The term "Manufacture" means a product of physical labor or machinery which possesses a new distinctive form, quality or property. There must be a transformation which makes the new product fit for a new purpose. For instance, the application of labor to an article which already existed in nature, such as a sea shell, will not necessarily result in a manufacture even of the result is a commercial success. The best route to go in a situation like this is by claiming the "process" which created the commercial success in "treating" the sea shells.

The phrase "Composition of Matter" covers chemical compounds, mechanical or physical mixtures, alloys and other "substance" product aggregations which are combined to form one composite whole. There must be definite properties of elements disclosed which when combined, would lose their individual properties and merge into a "compound" with new properties.

The phrase "New and Useful Improvements" connotes the development of a new principle in the art beyond mere form or proportion in the four categories above. An improvement is representative of an addition, simplification, variance or if a process, modification in the "certain order". If the improvement falls into the reach of ordinary mechanical skill and the operating principle of the main patent retained, there is no patentable invention. This hurdle can be possibly overcome by the substantially greater efficiency of the improvement if it can be documented. Questions of improvements are generally examined in light of Code Section 103 described in the next segment of this chapter.

Even if your invention seems to be appropriate subject matter for a patent, there are three main obstacles still ahead. An invention must be novel, have utility and be unobvious to one trained in the field of the invention. These requirements are set forth in Sections 102 and 103, as follows:

Section 102. Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless:

( a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the Untied States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more that twelve months before the filing of the application in the United States, or

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented; or

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Section 103. Conditions for patentability; non-obvious subject matter.

A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 if this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It is important to note that the above Sections 102(a) and 102(b) refer to diligence in the filing of a patent application. Generally, the inventor has up to one year after first public disclosure to file the appropriate patent application. First public disclosure includes the offering for sale of your invention to a manufacturer of you make full disclosure of all your claims. Public use is not simply determined by exposure, but is only one member of the public uses your invention and you have allowed that use without restrictions and it is used publicly, you could be barred from receiving a patent if your application is not filed within twelve months of giving that one person your invention. The best way to avoid the public use bar is not to commercially exploit your invention. If you must disclose your model for use, indicate to all parties that the item is experimental and keep "test" reports. If you sell one for "testing", periodically inspect the invention. Additionally, have people sign a Confidential Disclosure Agreement (see Patent Menu Item 7 and Appendix).

Section 102(c) explains that failure to file a patent application within a reasonable period after completing your invention will result in your abandonment of the invention regardless of your intent. Abandonment also arises when an inventor fails to claim all he is entitled to in a patent application.

Section 102(d) denotes the condition where there is a foreign application and issuance, you must file a United States application within one year of filing abroad.

Section 102(e) refers to a situation where another inventor has described, if not necessarily claimed, your invention in a prior application and there is an interference declared by the Patent Office. Section 102(f) states very simply, only the inventor may file an application. This bars people who might misappropriate an idea from filing, because they would have to swear on oath that they were the inventor.

Section 102(g) relates to the problem of inventorship and whether or not one inventor concealed or suppressed his/her invention. As an example, the maintenance of trade secrecy over a long period of time can equal suppression. This section also highlights the importance of record keeping and experimental use.

The most difficult, and subsequently the most contested issue in determining patentability is the questions of "obviousness" under Section 103. The Examiner must determine if your invention is beyond the ordinary skill of someone trained in the field of the invention with respect to the pertinent art existing at the time of the invention. Would any "mechanical" skilled in the art of your invention have done the same thing, thus making it an "obvious" invention or improvement to an invention? The Patent Office uses several factors to make their determination. There is a primary group consisting of 1) the scope and content of the prior art; 2) the difference between the prior art and the claims at issue; 3) the level of ordinary skill in the pertinent art. If a determination cannot be made using those three, then they look to 1) the commercial success of your invention, if any; 2) the long felt but unsolved needs which you addressed; 3) the failure of others in solving the needs. The first factor in the secondary considerations demonstrates the inadvisability of waiting until a patent issue before marketing your product. In summary, obtaining a patent for an invention is a very complex and difficult process. In most instance, obtaining experience legal assistance is strongly recommended.