A lot of people have cool ideas. But many “inventors” stumble on the process too long until, eventually, somebody hears them say, “I thought of that idea years ago.”
“Why didn’t you do anything about it?”
There are a lot of reasons people get caught up in the process, but the first step should not be an obstacle.
After reviewing these steps, you’ll be able to determine for yourself whether your “great idea” is a potential patent.
Determining whether an invention is patentable follows a series of standard questions. If you’re asking the right questions and know how to answer them, you should be able to make a good assessment whether or not an idea for an invention can be patented.
In general, the questions you need to ask are:
- Is the invention is considered patent eligible subject matter?
- Does the invention provide utility?
- Is the invention novel?
- Is the invention non-obvious?
- Has the invention been reduced to practice?
- Is the invention described in a patent submission that meets all the formal requirements?
Let's walk through each of these questions in more detail.
The requirement for patent eligible subject matter is defined by statute.
There are different types of categories of subject matter which are by statute, or law, considered to be “patentable subject matter” or “patent-eligible subject matter.”
These include processes, manufactured devices, and systems, and compositions of matter.
These aren't the exact words that the laws use. But that's a simple way to think about them.
Processes refer to methods which are a sequence of steps that you go through to perform some technical function.
For processes, the first step is to determine whether or not your process or method includes some type of abstract idea, or law of nature.
Laws of nature are things like the law of gravity or other laws of physics. Abstract ideas are simply ideas that somebody has, like an idea for a new business, or an idea for solving a problem without actually providing the implementation to solve that problem.
Some people tell me about the ideas they have—they've realized a problem. And then they say, I think we should invent something to solve that problem.
Well, that's an idea to solve a problem. That's not the actual solution to solve the problem.
So abstract ideas and laws of nature by themselves, are not patentable.
However, pretty much every invention relies on some type of abstract idea in the beginning, or some type of law of nature at some point. Even though abstract ideas are not patentable by themselves, the courts have come up with a test that says, if the process or method is based on abstract ideas and laws of nature AND includes “significantly more” then the process is eligible for a patent.
In practice, this means you need to have something that's tied into technology—often tied into physical hardware—or some transformational event where you transform a physical thing or data into a different type of thing or data.
Manufactured devices and systems are things—physical hardware or physical things that are produced or manufactured or exist in the world.
Manufactured devices and systems typically aren’t controversial from a patentable subject matter standpoint.
If you're making a thing—a piece of hardware, a piece of clothing, something that has a physical substance to it—then it most likely will pass the patent eligible subject matter criteria without much trouble.
Compositions of matter include different types of chemical combinations, or materials, that are put together to form a particular substance, or composition.
These often rely on natural phenomena, naturally occurring things if something occurs naturally in nature by itself, it is not patentable.
However, since most compositions are built on natural phenomena or natural occurring processes natural occurring chemicals, once those chemicals are modified in some fashion, even synthesized by synthetic means that modification or synthesis can become patent eligible subject matter.
The second criteria shown in the middle here is utility. Utility refers to whether or not an idea is useful.
This is also governed by statutes.
Ideas are, by default, considered useful, unless they fall into limited category of things that are, presumed to not be useful.
Ideas that defy the laws of physics are the classic example of unpatentable inventions, because they don’t work and, therefore, aren’t useful. Specific examples include things that rely on time travel or perpetual motion. These ideas cannot be proven by known physics—they actually defy the known laws of physics. Consequently, these ideas are, by definition, considered to not be useful, because they're not actually possible.
Everything else in the world is considered to have some form of utility, some form of useful function for humanity, and will pass the utility test without much problem.
The next requirement is novelty.
This is also a statutory requirement governed by what's called “section 102.”
Novelty refers to whether or not an idea is exactly the same as a prior known idea—something that's already known to the public, something that's being sold, something that's been published, something that has been described in another area.
If your idea is already known to the public in some form, or fashion, in exactly the same way, your idea will not be considered novel. So it will be kicked out and will not meet this criteria and will not be patentable.
In addition to things that have been disclosed by other people, some of the forms of prior publications or prior knowledge can come from the inventors themselves. It can be made public by you.
I was talking with an inventor recently who has a formulation for a device. The inventor has already been making other versions of that formulation for a long time. Any of the formulations that they've been making and selling for the last several years, with the exception of the new one, will not be considered novel, because they themselves have put it out there on the market and made it publicly known what they're making.
This brings up an exception—if you made it public, but it's been less than a year in the United States, then you can still meet the criteria for novelty.
And to make things a little bit more complicated, there's an exception for the exception. If you made it public, and it's been more than a year, but that public use was considered “experimental,” then you can come back into the process and be considered patentable.
In order to determine whether or not something is experimental use, there's a set of criteria that can be reviewed.
In practice, the experimental use criteria really determine whether or not the way that you used your invention publicly was as a means to actually implement and perfect your invention, rather than to test the marketability of your invention.
The next step in the process is to determine whether or not your idea is non-obvious. I know this sounds backwards, but it's the way that we look at it from a legal perspective.
An idea that is obvious is something that would not be patentable.
So in order to be patentable, your idea needs to be non-obvious.
This is where a lot of inventors might ask themselves, “How different does an invention have to be in order to be patentable? What's the percentage difference that I need to have between my invention and other ideas that are already out there in the public?” However, it doesn’t work that way. There's not such a criteria for a percentage difference.
Rather, there's a set of criteria that the patent office uses to roughly estimate whether or not something is obvious.
This is where the examination process with the patent office can be very sticky, because you have some patent examiners who take liberties in determining what is non-obvious and what is obvious.
Patent attorneys then communicate back and forth trying to convince an examiner that an invention is not obvious.
Often, the best way to convince an examiner that something is non-obvious and, therefore, patentable, is to show that there is an unforeseen combination of component parts, some combination of parts and pieces that nobody else has put together.
Often that will be the first argument made in the examination process to show that your invention is non-obvious.
However, patent examiners might come back and say that even though nothing described your component parts together in the same combination, those parts and pieces can be found in other disclosures, other references, and “obviously” could be combined together for the same result.
In response to this stage of the process, the next best way to show that your combination is new might be to also explain to the patent examiner that your combination has some unforeseen benefits or advantages.
Putting parts and pieces together might be expected to end up in a particular result. But if you can show additional advantages to that combination, you'll have a better time showing that your idea is non-obvious over prior art.
The fifth criterion to show that your idea is patentable is to “reduce to practice” your invention. You can do this in one of two different ways.
You don't actually have to make your invention, but if you do make a version of it and you have an actual working embodiment, that's called actual reduction to practice. And that satisfies this criteria.
Alternatively, if you haven't actually made a working prototype, or a working embodiment of your invention, you can constructively reduce your invention to practice by describing it and filing it in a patent application. That filing is considered to be constructive reduction to practice.
So by the time you file your patent application, you will have, at a minimum, constructively reduced your invention practice and satisfied this criteria.
The last criterion for patentability is that you need to meet the formal requirements for your patent application.
These formal requirements differ depending on whether you're filing a provisional utility patent application, a non-provisional utility patent application, or a design patent application.
In any case, there's a set of formal requirements established by the patent office that you need to meet. These requirements include things like payment of filing fees, submitting everything by specified timelines and, in some cases, including all of the necessary content in the application itself.
There you have it. If you meet all of these six criteria—including patent eligibility, utility, novelty, non-obviousness, reduction to practice, and the formal requirements—then you'll have an invention that’s patentable.
Now, the next time you think to yourself, “Wouldn’t it be cool if somebody made a…?” you should be able to evaluate for yourself whether your innovations meet the six criteria for patentability.
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