So, you want to patent your idea? Pull up a chair and let's talk a bit.
First, I hate to break it to you, but you can't patent a mere idea. You'll need something more concrete for your idea to rise to the level of a patentable invention. To do that, you'll need to have developed or envisioned some specific embodiment of your idea as it would be used in practice. Bear in mind, however, that United States patent laws do not require you to have built a prototype before you apply for a patent. All that is required is that you be able to describe your invention in such a way that others can make it and use it.
Subject Matter Requirements
Of course, it's not as simple as that. The United States Patent and Trademark Office ("USPTO") has plenty of hoops for you to jump through on your way to obtaining a patent. First, your invention must fall under one of the categories of subject matter that are eligible for patent protection. These categories generally include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Traditionally, this requirement has been interpreted relatively broadly to include "anything under the sun that is made by man," with an emphasis on the "made by man" part. Not every idea is eligible for a patent, however, as the courts have consistently held that you cannot obtain a patent for:
- Laws of nature (e.g., Einstein's theory of relativity, E=mc2);
- Natural phenomena (e.g., the discovery of a new mineral or plant in nature or, as the United States Supreme Court recently ruled, isolated DNA); or,
- Abstract ideas (e.g., a mathematical formula).
"New and Useful," "Not Obvious," and Written Description Requirements
Assuming that your invention meets the subject matter requirement, it also must be "new and useful" and "non-obvious." These requirements often are referred to as the "utility" and "novelty" requirements.
The utility requirement is a relatively low hurdle that typically can be met unless the invention is simply incapable of achieving a useful result. So, generally speaking, anything that is useful at least in some way will satisfy this requirement. Not all inventions, however, will meet the utility requirement – the claimed utility must be credible. For example, inventions claiming a perpetual motion machine, or a cure for an incurable disease without any supporting evidence, will be met with some skepticism by the USPTO.
Novelty and "Prior Art"
Next, your invention must be novel. Under some recent changes to United States patent law which took effect on March 16, 2013, novelty means that your invention previously has not been:
- Described in a printed publication;
- In public use, on sale, or otherwise available to the public anywhere in the world before the effective filing date of your invention; or,
- Described in a patent or published patent application that was filed before the effective filing date of your invention and names another inventor.
These activities make up what is referred to as the "prior art" and can be an absolute bar to patentability.
A few exceptions apply to these bars on patentability, however. For example, a one-year grace period exists for disclosures (but not for "public uses"), sales, or offers for sale, made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Be aware, however, that if you are interested in foreign patent protection, most foreign countries require absolute novelty for patentability and do not afford grace periods, even by the inventor, for any kind of public disclosure of your invention.
In any event, to destroy the element of novelty, the prior disclosure has to be identical to your claimed invention. The USPTO is held to a relatively high standard in this regard and must find at least one prior art reference that discloses each and every element of your claimed invention. It cannot combine references to arrive at your invention to deny you a patent based on prior art.
Even if your invention passes the novelty test, however, you're not home free yet. Your invention also cannot be obvious. Said another way, you can't get a patent if the differences between your invention and what is already publically known are such that your invention as a whole would have been obvious to a so-called "person having ordinary skill in the field of your invention." The trick here is that the USPTO can combine more than one piece of prior art, sometimes from totally unrelated fields, to declare your invention obvious and, thus, deny you a patent.
Enablement, Best Mode, and Written Description Requirements
On top of the utility, novelty, and non-obvious requirements, you also must be able to describe your invention in such a way that others will be able to make, use, and understand your invention. You will hear these requirements referred to as the "enablement," "best mode" (which for the most part has been done away with), and "written description" requirements.
The Patent Filing Process
So, after all of that, do you still want to patent your idea? If you do, what should be your first step? My suggestion is that you first conduct a search to determine if there is anything out there similar to your invention. Such a search can range from a simple search on the Internet to a full blown patentability search by a patent professional, or something in between, including a search of issued patents and published patent applications on the USPTO website. The good news is that you can do a lot of this yourself on the cheap.
Utility or Design?
If, after doing at least some preliminary searches, you decide to go forward with filing a patent application, you also have some options. Note that most of what we've talked about so far relates to "utility" patent applications but, depending on the nature of your invention, you also could opt for a "design" patent which protects the ornamental design of an otherwise functional item, such as the shape of a soft drink bottle.
Provisional (Cheap) or Non-Provisional (Not So Much) Application?
For the sake of our discussion, let's assume that your invention is eligible for a utility patent application. One option is for you to file a United States provisional patent application. Although some inventors opt for a fully-drafted provisional patent application, a provisional patent application does not have to meet all of the formal requirements of a non-provisional patent application and is relatively inexpensive to prepare and file. A provisional patent application is not examined by the USPTO (in fact, it is held in confidence by the USPTO) and is essentially a placeholder application filed to obtain a priority date.
As of March 16, 2013, the United States converted to a "first inventor to file" patent system, so the sooner that you can get an application on file, the better. Under this new regime, a provisional patent application can be a good option. Further, once you file a provisional application, you can mark any products covered by the provisional patent application as "patent pending."
You also can use this opportunity to talk to potential investors, manufacturers, and distributors and make improvements to your invention which would be included in your non-provisional patent application which must be filed within one year after filing your provisional patent application. Thus, you can take this time to fully develop a business plan around your invention.
All good things must come to an end, however, and your provisional application will automatically expire one year after its filing date. Before that anniversary, you will need to decide if you want to abandon your provisional patent application, at which point you will no longer have any patent protection on the subject matter covered by the provisional patent application (and it will no longer be considered "patent pending"), or if you want to file a non-provisional patent application claiming priority to the date of filing of the provisional patent application before the latter expires.
National or International?
Here again, you will have some options. If you are interested in the United States market only, you might consider filing just a United States utility patent application. If you are interested in foreign markets, however, you might want to consider filing an international PCT patent application or, alternatively, filing directly in selected foreign countries.
An international PCT patent application is another type of placeholder application in that, although it is subjected to a search and a preliminary report on patentability and written opinion, it is not subjected to binding examination. After a year and a half from the earliest priority date (e.g., the filing date of your provisional patent application), you must decide if you want to enter into the so-called national phase of one or more foreign countries. Note that you also can delay filing a United States utility patent application by entering the United States from an international PCT patent application.
Of course, all of this takes time and money, often several years and potentially several thousand dollars, including the costs required to maintain your patent once it issues. Plus, you have to be prepared to defend your patent against potential infringers. Nevertheless, filing a patent application or, better yet, obtaining an issued patent, can help you attract investors and/or potential licensees (someone, for example, who will give you money up front, cover patent costs, and pay royalties in exchange for being allowed to use your invention). Anyone willing to give you money for your invention will surely want to do their due diligence. Thus, it is imperative that you consult with advisors, including a patent attorney, to ensure that you have a sound patent strategy from the onset.
© 2018 Ward and Smith, P.A.
This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.