Ever since I was little, one of my favorite things to do has been asking “Why?” Some people say this makes me persnickety – I prefer inquisitive. Ultimately, it is my way of figuring out what to do in any given situation and to see if there are ways to improve how things have been done in the past. If you are an inventor, you’ve probably asked “Why?” yourself a number of times. Your innovations likely resulted from you identifying a problem and asking “Why are we still doing it this way?” or “Why doesn’t this exist yet?” and then figuring out the solution. And that’s great! So now the question is, what do you do from here?
When you create something new, one of the most important things to figure out is how to protect the idea and turn it into a real business venture. If you have created something new that functions in a different way, then your best option is likely to seek patent protection for your invention – specifically, seeking what is called utility patent protection.
However, not all new ideas are eligible for patent protection. 35 U.S.C. § 101, states that “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…”
What inventors sometimes miss is that you aren’t required to create something completely new in order to gain patent protection – if you have made a new and useful improvement, you may still be able to protect your idea with a patent. But if that’s the case, why isn’t every new idea patentable? The US Code sheds some light on this as well. 35 U.S.C. provides that “A patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” Basically, what this means is that the improvement that makes the new idea different from what’s been done before can’t be obvious. This is likely the most frequent obstacle faced by new inventors.
So once you’ve created your invention, how do you figure out if what you did was “obvious”? The best way to do this is to find out what’s been done before – in other words, doing a search for prior art. You may have done some preliminary searching already and didn’t find anything, but a professional prior art search may still be a good idea. This is because prior art can be almost anything, so long as it is accessible to the public.
Once you’ve identified the prior art, you then need to ask yourself if there is a single reference that is exactly identical to what you created. If so, then unfortunately, your invention is not “new” and therefore, you can’t get patent protection. But even if you don’t find a single piece of prior art that matches what you’ve created, don’t stop there. From here, you will need to ask yourself the more difficult question of whether there is some combination of the prior art that gets you to your invention, and if so, is it obvious to combine them in that way? In other words, did you make 1+1=2 or did you somehow find a way to make 1+1=3? This can be a very difficult assessment to make, so you may want to consider getting the opinion of an experienced patent attorney.
In some situations, you may not feel like your invention is obvious – however, the patent office may not agree. For example, very frequently, the patent examiner reviewing your application will break your invention down into individual elements and then see if they can piece together enough prior art references that show each piece of your invention. If so, they will likely decide that your invention is obvious. In other words, they almost always find that you made 1+1=2.
Does that mean that they’re right? Maybe, but maybe not. In many cases, a skilled patent attorney or patent agent can overcome that type of objection; however, knowing what to expect before preparing and submitting your application to the USPTO can help you to anticipate what to expect throughout the patent process, and decide whether the end result is actually going to help you achieve your business goals and be worth the expense of seeking patent protection for your new innovation.
LAURA FIGEL, is an Attorney in the Mountain View office of LegalForce RAPC. She specializes in intellectual property, including patents, copyrights, and trademarks, as well as corporate matters. Laura’s main focus is assisting clients in identifying how best to protect their ideas and grow their business. When she’s not doing that, you can probably find her strapped into a harness climbing some rocks, or in the shop turning a bowl
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