Within the context of a national or multilateral body of law, an invention is patentable or, in other words, it satisfies the patentability requirements if it meets the legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Patent laws usually require that, in order for an invention to be patentable, it must

• be of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection,
• be novel,
• be non-obvious (in United States patent law) or involve an inventive step (in European patent law);
• be useful (in U.S. patent law) or be susceptible of industrial application (in European patent law).

Usually the term "patentability" only

Under United States patent law, inventorship is also regarded as a patentability criterion. It is a constitutional requirement. Congress' ability to grant patents is authorized only for the inventor. This was confirmed by case law: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent."

Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent or patent attorney regarding whether an invention satisfies the substantive conditions of patentability.

Judging patentability is one aspect of the official examination of a patent application performed by a patent examiner. However, if a patent is granted, it does not necessarily mean that the claimed

An invention may be patentable and also infringe the claims of one or more patents. Thus, patentability is not to be confused with infringement. This may for instance happen if the invention is itself an improvement of a still patented more general invention.

Quotes

is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts. It involves, or it should involve, as complete a reconstruction of the art that preceded it as is possible. The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination. Nothing is more illusory, as nothing is more common, than to assume that this can be measured objectively by the magnitude of the physical readjustments required. Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field. When all is said, we are called upon imaginatively to project this act of discovery against a hypostatized average practitioner, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it. (..)

- US Judge Learned Hand in Harries v. Air King Prod. Co., 183 F.2d 158, 162 (2d Cir. 1950).

See also

• Idea-expression divide
• Patent infringement
• Person having ordinary skill in the art

Footnotes

1.   Board of Education ex rel Board of Trustees of Florida State University v. American Bioscience Inc, 67 USPQ 2d 1252 (Fed Cir 2003)