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Should I File for a Patent?
May 22, 2020 Introduction to Patents

Should I File for a Patent?

Have you created the next great invention? If so, you probably thought to yourself “I need to protect this!” This line of thought leads most people to look into the patenting process. Earning a patent is a long and involved process. However, the benefits a patent provides make the process worthwhile to millions of applicants a year worldwide. Unfortunately, there is no way to guarantee that someone will be successful in obtaining a patent. New patent applications and granted patents are being published and filed on a nearly daily basis. Therefore, it is impossible for anyone to be 100% positive that their application will be able to earn a patent. Despite this uncertainty, the financial potential that a patent offers still makes it worth pursuing.

 

Patents are incredibly powerful because they offer their owner(s) the right to prevent anyone else from making, using, or selling the patented intellectual property. However, that does not mean that every invention is patent worthy. You should always take the time to determine how profitable or beneficial a patent would be for you before preparing and filing a patent application. To help determine if a patent would be beneficial for you, ask yourself these questions:

  • Is my invention/intellectual property worth creating a business around?
  • Is my invention/intellectual property valuable enough that someone would want to license it? 
  • Is my invention/intellectual property valuable enough that someone would want to buy my patent?
  • Would owning a patent provide me any advantages professionally?
  • Does my profession put a lot of weight into credibility and credentials?
  • Would owning a patent help me differentiate myself from competitors in my field?
  • Would any of my competitors be willing to steal my invention/intellectual property?
  • Would blocking competitors from entering my market be beneficial to my business? 

 

If you answered “Yes” to any of these questions then a patent could be beneficial to you or your business. This is great news because patents often offer their owners a massive earning potential! If you are not yet convinced that a patent is worth your while, then we encourage you to take some more time to think about the decision and become comfortable. It is a big decision after all. However, you cannot wait forever. Many inventors spend too much time “sitting on the fence” trying to decide if they should pursue a patent and they don’t realize that in that time new prior art is being published that can make it much harder for them to earn a patent. The best advice we can give you is to make an educated decision as efficiently as possible and never look back. Deciding to go all-in on pursuing a patent is the first step in turning your dreams into reality. Now, before you begin your quest for a patent you have to ask yourself one very important question…

 

 

Is Your Intellectual Property Patentable?

 

Whether you have decided to pursue a patent or you are still contemplating your decision, take some time to figure out if your intellectual property is patentable. You never know, maybe you will come across something that makes your decision a little easier. Unfortunately, not all intellectual property is patentable. However, the good news is, most things are. In the United States, intellectual property can only be deemed patentable when it satisfies the USPTO‘s four patentability requirements. To be eligible for a patent, intellectual property must be:

  • Statutory (of eligible subject matter)
  • Novel (“New”)
  • Useful
  • Non-obvious

 

To help you determine if your intellectual property is patentable we have created a simple flowchart displayed in Figure 1. If you end up on a white bubble your intellectual property is not patentable in its current form, and you will have to make modifications to it in order for it to become patentable. If your intellectual property satisfies all the requirements disclosed in the blue bubbles then it is patentable. For more information on all the concepts disclosed in this flowchart please see below.

Figure 1

Is it Statutory?

There are four statutory categories that define what is patentable. All intellectual property must be capable of being considered part of at least one statutory category to be patentable. The four statutory categories were intentionally developed as broadly as possible so that almost any man-made inventions can fall within at least one of the categories. The statutory classes are as follows:

  • Process (e.g. A method of baking a cake having specific steps)
  • Machine (e.g. An oven for baking the cake)
  • Article of manufacture (e.g. Cake pans used to bake the cake)
  • Composition of matter (e.g. The specific chemical ingredients used to bake the cake)

 

So, what does that mean for your intellectual property? Does your invention fit into one of these broad categories? Each of the four statutory categories provided above can be hovered over to reveal its complete definition. As long as your intellectual property can reasonably fit within at least one of these definitions, it should be considered statutory (eligible subject matter). 

Is it Novel?

In order for intellectual property to be considered novel or “new”, its inventive concepts must not have existed before a patent application was filed. So, what does that mean for your invention? To help you determine if your invention is novel you should ask yourself the following questions:

  • Was my invention known to the public before my application was filed?
  • Was my invention in use by the public before my application was filed?
  • Was my invention for sale to the public before my application was filed?
  • Was my invention described in any form of publication that was published before my application was filed?
  • Was my invention described in a patent document that was published before my application was filed?

 

If you had trouble answering any of these questions you should perform a prior art search to look for any intellectual property that is similar to yours. If you answer ‘YES’ to any of these questions, then your application may not be novel. When you find intellectual property that is similar to yours, you will need to enhance or modify your intellectual property to differentiate it from the others. You can accomplish this by adding new features that are not made, used, sold, or described in any other intellectual property. Once you have differentiated your intellectual property, you can focus your patent application on your novel features. This will help ensure your patent examiner recognizes how your intellectual property is different from others and provide you a higher likelihood of earning a patent.

Is it Useful?

In order for an invention to be considered patentable, it must be “useful”. This simply means that the invention must have any purpose that could be deemed useful. Essentially all inventions can be considered useful in one way or another. As long as your invention can do something or provide value it satisfies the “Usefulness” patentability requirement.

Is it Non-obvious?

In order for an invention to be considered “non-obvious”, it must make a legitimate improvement over, or be different than, all existing inventions and technology (i.e. the “prior art”). So how do you know if your invention is non-obvious? Well, in patents, the conventional measuring stick is whether or not an inventive concept would have been obvious to someone of “ordinary skill in the art”. Simply put, is the difference between your invention and the next closest invention something that would have been obvious to someone else in the field of your invention? If the answer to this question is “yes” then your intellectual property does not meet the “non-obvious” patentability requirement.

 

For example, simply adding a flashlight to a bicycle is not an inventive step. This type of modification is too obvious to ever earn a patent, even if no such product currently exists. When modifications are so simple and obvious that anyone could think of them, they cannot be considered patentable. In order to pass the “non-obvious” patentability requirement, your intellectual property has to introduce an inventive concept that provides a legitimate advantage and differentiates it from all other intellectual property. 

 

 

What Cannot Be Patented?

 

The USPTO intentionally drafted the patentability requirements so that almost anything man-made can be patented. However, there are some specific exceptions to these rules and they are important to understand to avoid filing a patent application that could never earn a patent. The concepts that the USPTO has decided should not be patentable are considered to be “non-statutory”. The following concepts are oftentimes considered to be “non-statutory”, and are therefore not patentable:

  • Scientific principles
  • Naturally occurring phenomena
  • Mental processes
  • Mathematical algorithms
  • Paradigms
  • Transitory propagating signals
  • Signals (that are not tied to a specific process or function)
  • Computer-readable media (that is not tied to a process, machine, or manufacturing, and not defined in the specification)
  • Stand-alone software or data structures (that are not tied to a process, machine, or manufacturing)
  • Compilations or arrangements of data (that are not tied to a process, machine, or manufacturing)
  • Music
  • Literary works
  • Electromagnetic waves or signals
  • Human organisms

 

Some inventions will inevitably include subject matter that is borderline non-statutory. These types of inventions will always have their statutory status called into question. Inventions pertaining to laws of nature, natural phenomenon, and abstract ideas typically fall into this category. Therefore, if any of the concepts mentioned above are expressed in the claims of your patent application, you run the risk of having your patentability called into question. 

 

For the benefit of all applicants, patent examiners are trained to review patents using the broadest reasonable interpretation of the claimed invention. This method is intended to make sure that examiners are considering your invention as a whole and thereby fairly determining its patentability. While this method is designed to benefit the applicant, claims that focus on both statutory (eligible) and non-statutory (non-eligible) subject matter will usually be rejected. This is because the broadest reasonable interpretation of your invention must ONLY include statutory concepts.

 

 

Walking the Line Between Statutory and Non-Statutory

 

Courts have ruled to determine that the statutory categories have some limitations. Laws of nature, natural phenomena, and abstract ideas cannot be patented, and are thereby excluded from the statutory categories. These exclusions should be interpreted to include basic tools of scientific and technological work, such as scientific principles, naturally occurring phenomena, processes that can be performed mentally, and/or mathematical algorithms. Other exceptions include any inventions that claim human organisms and any inventions that don’t have industrial applicability, meaning it cannot feasibly perform or exist as the patent claims are stating it can.  

 

Typically, as long as you are making a legitimate inventive advancement to a concept a patent may be warranted. Even some of the concepts that are typically considered “non-statutory” can be worked into a patent application in some circumstances. In essence, as long as the “non-statutory” inventive concepts are just a small part of a larger process or device, they may be patentable. However, when a “non-statutory” inventive concept is a focal point of the patent application it will always be deemed unpatentable. 

 

The most debatable interpretations of non-statutory categories occur most often in computer science and mathematical processes. For example, any basic computer program that requires a computer for its intended purpose cannot be patented on its own. However, if computer programs, processors, controllers, etc. are being used as part of a process or device, the computing equipment or program can be included in the patent. Similarly, mathematical algorithms that simply perform common calculations cannot be patented. However, if a mathematical algorithm can be shown to function as part of a process and contains novel calculations it can and will be considered during patenting.

 

 

Avoid Making Public Disclosures of Your Invention

 

While you are deciding whether or not to file a patent application, there is one thing to always keep in mind. DO NOT MAKE ANY PUBLIC DISCLOSURES OF YOUR INVENTION! Unfortunately, even your own disclosures of your invention can be used against your patent application when determining patentability. This can include but is not limited to:

  • Blog posts
  • Public speeches 
  • Academic publications or presentations
  • Website listings
  • Podcast or radio interviews
  • YouTube videos
  • Crowdfunding programs

 

In the US, there is a one year grace period for public disclosures of intellectual property. This grace period begins after the first public disclosure or offer of sale of the intellectual property. During this one year grace period, an inventor is permitted to file a patent application associated with the publicly disclosed intellectual property without penalty. However, if the inventor fails to file their patent application within one year of their first public disclosure or offer for sale, the public disclosure(s) can be used to prevent the inventor from earning a patent for the intellectual property. 

 

For this reason, once an inventor has conceived their intellectual property, it is always best practice not to tell others about the idea until after a patent application has been filed. In some scenarios, this may seem excessive. However, it can never be overstated that a patentable concept has immense value, and therefore, it is worth overprotecting. Any commercialization, publication, or disclosure of your intellectual property made public before your filing date can and will be used against your patent application when permitted. This can really put your chances of earning a patent in jeopardy. Therefore, it is always best for business to keep anything relating to your intellectual property in-house until after filing.

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