Can Your Invention Be Patented?

So many inventors create new inventions without a thought as to whether the invention will be commercially viable. For an invention to be valuable, it must deliver a value proposition to a customer, client, or end-user. This part of the entrepreneurial equation is fairly easy. The more difficult aspect is that the invention must compete against competitor or substitute products already in the market.

One of the primary concerns is that competitors will simply copy the invention and employ it for their own commercial purposes. The only way to stop this is to either keep the invention secret, which will be impossible if you are going to sell it to the public, or to secure intellectual property rights.

What are the Available Types of Intellectual Property?

The type of intellectual property protection applicable to an invention is patent protection.There are two main types of patent applicable to inventions.

• Design Patent - A design patent protects the aesthetic or ornamental properties of the invention from copy. Basically, it is the look or shape of a product — rather than the function of the product itself. This type of patent does nothing to protect the function, mechanics, or composition of the invention.

• Utility Patent - The utility patent provides protection for a process, machine, article of manufacture, or composition of matter. A creation that falls into these categories are known as “patentable subject-matter”.

Things that fall outside of these categories of subject matter may be too abstract or theoretical to apply a patent.

Throughout this article, we will focus on the requirements of a Utility Patent.

Are You the Inventor?

After you determine whether your invention constitutes patentable subject matter, you will need to be able to file a patent application. To claim patent rights, you must be the inventor. You may also be the employer (principal) for whom an employee (agent) inventor is working for. Individuals working together can jointly file a patent application.

What are the Requirements for a Patent?

A patent application makes certain claims about the subject invention. The claims concern specific aspects of the invention that meet the requirements for patent protection. The requirements for a claimed element to be protectable by patent are:

• Novelty - To be capable of patent an invention must be new. This means that it cannot already exist in the market, and it must not have been previously disclosed to the public. This is perhaps the most difficult aspect to determine. There have been so many inventions in the history of mankind. Hundreds of millions (if not billions) of these inventions have been disclosed to the public in some form or another. As such, it is extremely difficult to come up with a truly novel invention. Disclosing something to the pubic includes:

⁃ Public Sale - The claimed item is already being sold or offered to the public for purposes other than testing or development. This includes private sales to individuals or open sale to the public at large.

⁃ Other Disclosure - The claimed item cannot have been the subject of extensive disclosure. This might include description in a trade publication or academic journal. Other disclosures may include posting design documents online.

⁃ Patent Application - The claimed item item cannot have been the subject of a patent filing in the United States or other country.

• Non-Obvious - The claimed item cannot be an obvious concept in the context of the invention. That is, it must not be already commonly understood by experts in the field. Experts in the field are known as Persons Having Ordinary Skill in the Arts (PHOSITAs). These individuals would be able to identify the elements of the invention as either unique or the subject of common knowledge among such experts.

• Useful - The claimed element must perform some identifiable function or purpose. Note, the function must have some effect or result. It does not matter the value of the function or result. A design patent does not require a showing of usefulness, as the design patent applies only to the ornamental or aesthetic qualities.

A utility patent application may make numerous claims about the invention that are subject to patent protection. A design patent only makes one claim about the aesthetic features of the invention. In a utility patent, there can be multiple stand-alone claims, or a claim can have numerous sub-claims (or dependent claims).

How to Determine if Your Invention Meets These Requirements

When making the determination of whether your invention is capable of patent, you will walk through the steps of determining whether it is patentable subject matter and whether it is novel, non-obvious and useful.

Most of these elements are fairly easy to identify. Patentable subject-matter requirement is fairly broad. The fact that the usefulness of the invention is not measured makes it an easy hurdle to overcome. Whether something is obvious to PHOSITAs is fairly easy to determine by simply speaking with such individuals. The last and most difficult determination is whether you invention is novel. In doing so, you are going to have to identify the individual, function elements that have never been previously disclosed.

To determine novelty, you are going to have to conduct a thorough search search of existing inventions. I recommend that you conduct the patent search before taking any further steps in the patent process. You would be surprised how likely it is that you invention has already been invented and is available to the public.

Here are some of the places to being searching for prior invention disclosures:

• E-Commerce Websites - The first step should be to actively search internet commerce sites. This is absolutely necessary if your invention is a product to be sold to the consumer public. Amazon, Ebay, and AliBaba are the most widely used product sales sites. When searching these sites you will undoubtedly identify somewhat similar inventions. You may also want to perform independent searches for similar inventions and their earlier models. You may also want to search catalogs from companies that may not provide a complete list of their product offerings on the internet (other than in downloadable PDF format anyway).

• Product review websites - It may be possible that a company or personal websites containing a similar invention does not rank in a popular search engine. The internet is fully of websites where individuals review products. Conducting thorough searches of these types of websites can produce all sorts of designs that may not be present in patent databases. The best practice is to search for products in a particular field or function.

• Crowd Funding Websites - Many products invented by individuals not affiliated with a company may be very difficult to find. Many of the most novel inventions never see the light of day because of lack of available funding to produce the item. Crowdfunding sites contain a directory of products that may have never made it to larger commercial website or store shelves.

• Manufacturer Websites - Searching through a manufacturer’s product line may reveal prior art that can conflict with patenting an invention. Companies will often prototype a product in various forms before finalizing an invention. Simply drafting design documents for a prototype and disclosing them publicly can have the effect of invalidating an application for protection of an invention.

Once your product passes the commercially available test, you can move on to the more daunting task of performing a patent search. A patent search means searching for prior patent applications or granted patents that may conflict with your current invention (and thus destroy patentability). To perform a patent search, I recommend the following process:

• Google It - Google Patents, available at Google.com/patents, is one of the most comprehensive free databases available to the public. The main draw, however, is that the Google database is very easy to search. There is a simple and advanced search function that allows for more targeted searchers.

• USPTO Database - The USPTO provides a very comprehensive database of full texts of patents filed after 1976 and PDF format for pre-1976 filings. The USPTO searches US patent grants and applications.

• Go International - There are two international, patent databases available for free to the public. Thesauri are PatentScope, managed by the World Intellectual Property Organization (WIPO). Patentscope contains patent applications from regional and national patent collections from all major patent-filing countries. It also includes International Patent Applications filed under the PCT (Patent Cooperation Treaty). Espace is managed by the European Patent Office. It may be the most effective and comprehensive patent tool for searching international patent applications. It will allow you to search patent publications, machine translate patent documents (Chinese, Japanese, and Korean to English), track emerging technologies, and identify what competitors are developing.

Related Topics

• Intellectual Property Law (Intro)
• What is Intellectual Property?
• What is the purpose in granting intellectual property rights?
• What is required to capture or secure intellectual property rights?
• California Labor Code 2870
• What are Trade Secrets?
• Non-Disclosure Agreement
• Patents or patent rights?
• Letters Patent
• Primary types of patents?
• What Can I Patent?
• Requirements for a valid patent?
• Can your Invention be Patented?
• What is a Patentability Search?
• When is a Patentability Search Necessary?
• Why is a Patent Search Important?
• Requirements for a design patent?
• How to Do a Design Patent Search
• Cost of a Design Patent
• Requirements for a utility patent?
• Why Do You Need a Utility Patent?
• Plant Patent?
• Process for securing patent rights?
• Patent Search
• Basics of Doing a Patent Search
• 5 Rules for Effective Patent Searches
• What are Patent Databases?
• Tools for Patent Searches
• DIY Patent Search
• Understanding Patent Keyword Searches
• Patent Searches for Software
• Doing a European Patent Search
• WIPO Patent Search
• Cost of Doing a Patent Search
• Patent Search vs Patent Analysis
• Structure of a Patent
• Patent Filing Date
• Patent Attorney
• Do You Need a Patent Lawyer?
• Applying for Design patent
• Provisional Patent?
• Applying for Provisional Patent
• Doing a Provisional Patent Search
• How to Draw Up a Provisional Patent
• Converting a Provisional Patent to a Non-Provisional Patent
• What Does Patent Pending Mean?
• Process for enforcing ones patent rights?
• Patent Infringement
• Patent Troll
• What is a Trademark?
• Types of trademark?
• Requirements to capture trademark rights?
• Distinctiveness requirement for a Trademark?
• Determining whether a trademark is sufficient distinctive?
• What is Federal Trademark Registration?
• Conducting Trademark Search
• Should I Conduct a Trademark Search?
• Trademark Application
• Drawing a Trademark
• Filing for federal trademark registration?
• Protections of trademark rights under state law?
• Primary reasons for rejecting a trademark application?
• Common trademark designations?
• Trademark infringement?
• Enforce trademark rights?
• Demonstrate infringement of a trademark?
• What is a copyright?
  
• Digital Millennium Copyright Act or DMCA Explained
• Basics of Copyright Law
• What are the rights of a holder of a copyright?
• What are the elements of a copyright?
• How long is the period of copyright protection?
• What is the process for registering a copyright?
• Who may claim and secure copyright protection?
• What are infringement and the process for enforcing a copyright?
• What are the defenses available against a claim of copyright infringement?
• Public Domain Works
• Licensing Agreement
• End User License Agreement
• What is Fair Use of copyright?
• What is the First Sale Doctrine?
• What international protections exist for intellectual property rights?
• Paris Convention