Tuesday, July 6, 2010

Is My New Invention Idea Patentable? How to Find Out!

Is my invention idea patentable? That’s a question I am sure a lot of people ask themselves, but how the heck can you know for sure?

The good news is that the patent office follows specific criteria which you too can utilize to determine the patentability of your new idea. The bad news is that the patent examiners are humans and it is often difficult to determine ahead of time what any particular human is going to do.

There isn’t anything we can do about the patent examiner until you have applied for a patent and begin interacting with the examiner. For now let’s trace the steps and requirements for obtaining a patent. I’m going to restrict my article to utility patents and not get into plant patents or design patents at this time.

As an inventor you should be aware of the one year rule. Once you go public with your invention you must file for a patent within one year. Failure to do so will lose you your patent rights. Going public would be things like publishing it in a magazine, or offering it for sale, or even putting it up on a website.

So to begin with, to be patentable your idea must not have been made public more than one year before the patent application filing date.

The PTO is required to examine all utility patents to be sure they pass the following four tests:

Statutory Class: Is the invention in one of the five statutory classes established by Congress; Process (method), Machine, Article of Manufacture, composition, or new use of any of the preceding? An invention must fall under one of the categories to be considered for a utility patent.

This requirement is usually not a problem.

Utility: Does the invention perform some useful function?

The invention must perform some useful function or serve some specific purpose to be considered for a utility patent. If your invention does not serve any useful function or purpose then why are you trying to patent it? Any usefulness will do.

Novelty: Will the patent examiner consider the invention to be novel, in other words, is there anything about it that is different from all the previous related inventions?

This means any invention or device etc. anywhere in world at any time prior to you conceiving the idea. This is another easy test to pass. Your invention just has to have some physical feature that no other inventions anywhere in the world have. Something new and different than the prior art discloses.

Unobviousness: Will the examiner think the invention is unobvious for someone who has ordinary skill in the field of the invention? In other words, will it produce new and unexpected results?

The first three tests are pretty easy, but the “unobvious” step is where half of all patents get rejected. The five statutory classes are very broad and they overlap a bit. If you can’t get your idea to fit into one of the categories you are out of luck for a utility patent.

Examples of some things that do not fall into any of the classes are: things that you do with your only your mind like speed reading and meditating, things that occur in nature like a crab or a tree, some computer programs if they do not produce a useful result, and thoughts alone that don’t produce a tangible result or a concrete useful product.

The fifth category, “New Uses”, is a new and unobvious way of using an existing invention. Like if you discovered your can opener was great at removing weld splatter.

The patent office will not issue patents for things considered useful only for illegal purposes such as methods of counterfeiting, safecracking, and defrauding the public in any way. Also no nuclear weapons are patentable because of a special statute.

Your invention must also work. The invention must be operable. If the patent examiner feels that it isn’t operable, the burden of proof will be on you. That is where a prototype can come in handy. Realistically this is rarely a problem as most inventions rely on known principles and would work as described in the application. No perpetual motion machines please.

If your new invention idea meets all of the above criteria then there is a good possibility of you being successful at obtaining a utility patent. Naturally I have only skimmed over the surface and if you are serious about your invention I would suggest you purchase a book or two about patenting you own invention.

Even if you use a patent attorney to prosecute your patent application you will be much more effective in communication with your attorney and thus you will be able to provide the necessary assistance that he may need to convince the patent examiner to grant that patent.