Is My Invention Patentable?

One of the most frequent questions I get asked as a patent attorney is Can I patent my invention? There are several types of patents. However, for this article I will focus on the utility patent, which protects the functionality of an invention.

Indeed whether you can patent an invention is different for each invention. However, the analysis used to determine whether you can patent an invention is the same for every invention. Under U.S. law, for an invention to be patentable it must be new, useful, patentable subject matter and non-obvious. These four requirements are what the examiners in the United States Patent and Trademark Office (USPTO) use to determine if an invention is patentable.

For an invention to be useful it must be usable and provide some sort of benefit. This is an extremely low hurdle. I personally never have seen an invention rejected because it was not useful. In fact, the shelves of the patent office are filled with strange and bizarre patents such as a Kissing Shield, a Banana Protection Device and the Comb Over Patent a.k.a. Method For Concealing Partial Baldness. In a nutshell, an invention will probably never get rejected based upon this requirement unless it is used for some criminal purpose.

Patentable subject matter is defined as any machine, manufacture, process, composition of matter or any useful combination thereof. It is sometimes easier to define patentable subject matter by what is not patentable subject matter. Laws of nature, physical phenomena, abstract ideas and logic are not patentable subject matter. For instance, gravity, a law of nature, cannot be patented. One of the types of inventions that USPTO examiners typically reject for not being patentable subject matter is software related inventions. That is not to say that software is never patentable. However, a software patent application must be crafted in such a way that it consists of patentable subject matter under the law. The law regarding patentable subject matter is constantly changing and you should seek the help of a registered patent attorney to assist in drafting an application to ensure that you have the greatest probability of overcoming any such rejection.

For an invention to be new it must not be known or used by others before the inventor claims to have invented it. When a USPTO examiner is determining if an invention is patentable, the examiner searches various databases to find publications, patent applications, patents and patent publications that disclose elements of the invention seeking to be patented. If the USPTO examiner is able to find a single disclosure that discloses all elements of the invention, then the USPTO examiner will issue a rejection, known as an office action, claiming the invention is not new or novel. It is a patent attorneys job to dispute the examiners rejection and point out the differences between the invention and the disclosures cited by the examiner.

The most common obstacle to the patentability of an invention is the non-obvious requirement. This means that the invention cannot be obvious to a person with average skill in the knowledge area of the invention. USPTO examiners can combine multiple disclosures to argue that the invention should not be patented. For example, lets say you were trying to patent a red toy car. Lets also say that the USPTO examiner did a prior art search and found a disclosure revealing a blue toy car and another disclosure revealing a red truck. The examiner could combine the blue toy car disclosure with the red truck disclosure and argue that it would have been obvious to invent a red toy car, and therefore the red toy car is not patentable. As mentioned above, it is the job of the patent attorney to dispute the examiners rejection and point out the differences between the invention and the disclosures cited by the examiner.

Many times I recommend to my clients that a prior art search be conducted before filing a patent application.

While not legally necessary, the purpose of a prior art search is to find existing patents, patent applications and other documents that could affect the patentability of an invention. These results can be used by a registered patent attorney to determine the probability that an invention will be granted a patent. The results of the search are also helpful in creating a strategy for protecting ideas and inventions. If you would like to discuss having a patent search or whether your invention is patentable, contact my office for a free consultation.