Is My Idea Patentable?

Under Article I § 8 of the United States Constitution, Congress was given the power to grant inventors exclusive intellectual property rights over their discoveries.  In 1952, Congress codified a law that allows “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” to obtain a patent.  35 U.S.C. § 101.  However, there are additional requirements that an invention must comply with in order to be patentable.  

What Makes an Idea Patentable? 

An invention must first contain patentable subject matter.  The Supreme Court of the United States held in Diamond v. Chakrabarty that inventions directed to a law of nature such as gravity, a natural phenomenon such as a naturally-occurring mineral, or an abstract idea such as a mathematical equation, do not contain patentable subject matter and thus cannot be patented.  Further, if your invention is a literary, dramatic, musical, or artistic work, it may not be patentable; however, it may be protectable through a copyright. 

According to patent law in the United States, there are a few additional requirements that an invention must comply with before it can be patented.  The invention must be new, useful, and non-obvious.  Further, a prior public disclosure may prevent your invention from being patented. 

Utility is one of several patent requirements, and it essentially requires that the invention be useful.  An invention is useful if it provides some identifiable benefit and is capable of use.  This is a relatively straightforward requirement to satisfy.  However, inventions that are merely hypothetical devices, such as perpetual motion machines or time machines, will likely fail to satisfy this requirement.  

Novelty is another patent requirement.  Novelty has a very specific legal meaning, but it essentially means that your invention must be new.  Under 35 U.S.C. § 102(a), a person is entitled to a patent unless the claimed invention was “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” before the person filed a patent application for the invention.  Novelty requires that you be the first person to conceptualize the invention and to file a patent application claiming it before it was otherwise available to the public.  However, your invention does not need to be entirely new.  It can be a combination of already existing elements, as long as it would not have been obvious to combine those elements. 

Non-obviousness is a further patent requirement.  Under 35 U.S.C. § 103, non-obviousness requires that a person of ordinary skill in the relevant field would not have been motivated to create the same invention considering the prior patents and publications available at the time the patent was filed.  Even if your invention is novel, a patent examiner may still determine that your invention is an obvious variation of something that has already been disclosed to the public.  The goal here is to convince the patent examiner that no person would have known or been motivated to combine elements that already existed in order to create your invention. 

Finally, it is important that the invention not be revealed to the public before filing the patent application.  In some countries, you may lose your rights to a patent at the moment that you disclose your invention to the public or offer it for sale.  Under 35 U.S.C. § 102(b), the law provides a grace period of 12 months for the filing of a patent in the United States after the invention has been disclosed to the public.  However, the United States follows a first-inventor-to-file system, which makes it dangerous to rely on the grace period.  Under this system, the first inventor to file a patent application may have rights to the invention over a subsequent filer.  So, if another inventor comes up with the same idea that you have, but she files her patent application first, then you may have lost the rights to your invention.  If you have further questions about any of these requirements, an experienced patent attorney in the field of your invention will be able to provide further guidance.  

Is Your Idea Patentable?

A patentability search can help you determine if your idea is patentable and whether or not moving forward with filing a patent application is a worthwhile investment.  A patentability search is essentially a search for any ideas or patents that have been disclosed by other inventors that would render your idea unpatentable.  You can save money and conduct your own patentability search by searching keywords related to your invention on Google Patents or the USPTO website.  You should also search through scientific journals to see if your invention has already been discovered within the academic sphere because that would also render your idea unpatentable.  You can search for scientific articles through Google Scholar and other academic databases.  If you find a scientific article or a patent that is similar to your invention, you may still have a patentable idea.  However, your idea is likely unpatentable if it contains all of the features that have already been disclosed in the references you found. 

Finding relevant references is beneficial in all respects because it can help you figure out if obtaining a patent on your invention is a worthwhile investment.  Furthermore, ensuring that a patent examiner has all of the relevant inventions and related materials at his disposal will ultimately make your patent stronger.  If you are unsure if your invention is too similar to another invention that you found and is thus unpatentable, a registered patent attorney at an experienced law firm can help.

Is a Patent Application Worth the Investment?

Time and money are both major considerations in determining whether a patent application is worth the investment.  If a patentability search indicates that your invention may be eligible for a patent, then filing a patent application is likely a good investment.  It can protect your claimed invention and prevent others from making, using, or selling it.  For many companies, a significant portion of their overall value is actually derived from the patents that they hold.  There are several types of patents that may be utilized to protect your invention, such as design patents, utility patents, and provisional patents

If you are unsure about whether or not you are ready to patent your invention, consider filing a provisional patent application as you continue to research your options.  A provisional application is an informal application that can preserve a filing date for an invention, which can preserve your rights to that invention as of that filing date.  A non-provisional patent application must follow within one year in order to maintain those rights.  It may be beneficial to file a provisional application if you are continuing to research, prototype, or make improvements to your invention.  It may also be useful to file a provisional patent application if you are unsure about whether or not you want to invest in a non-provisional patent, but want to preserve your rights in case you decide to do so.

The USPTO provides an overview of general information concerning patents for those who desire to learn more about the patentability of their inventions.  However, it is often difficult to discern if and when your idea is ready to be patented.  Experience and expertise are critical in making this determination.  For more information about patent research and whether or not your idea is patentable, get in contact with one of the IP experts at TraskBritt today.

Article written by Ashley Kennedy