Inventors often ask me whether they can get a patent on their invention. After reading this article, you should be able to determine for yourself if your invention can be patented.
So, how do you know if you can get a patent on your invention? You can get a patent on your invention if it meets the four legal requirements, which are the:
- Utility requirement: The invention must be useful.
- Eligibility requirement: The invention must be eligible for a patent.
- Novelty requirement: The invention must be new.
- Nonobviousness requirement: The invention must not be obvious.
This article focuses on the legal requirements for utility patents. Design patents have a similar standard but are slightly different, as explained in the last section.
Let’s dive deeper into each of the four requirements.
1. Utility Requirement: Invention must be useful
35 USC 101 requires that an invention be useful to be patented. Today, most inventions meet this requirement. However, this was not always the case. For example, slot machines were not considered to be useful, but that has changed since then, and games of chance are considered useful and do meet this requirement. The bottom line is that this requirement typically does not stop inventors from getting a patent.
One type of invention that is not patentable is perpetual motion machines. Perpetual motion machines are machines which create more energy than it needs to run. Perpetual motion machines cannot get a patent because they don’t work. They are not useful. By definition, perpetual motion machines are impossible. As such, you cannot teach others to use the invention.
If your invention appears to be a perpetual motion machine that works, then you need to build a prototype to prove to the examiner that your device works. I don’t represent people who try to patent apparent perpetual motion machines unless they show me a working prototype.
2. Eligibility Requirement: Patent eligible categories
35 USC § 101 lists the four categories of inventions that are eligible for patent protection in the United States. The four categories of patentable subject matter are:
- Category #1: Process, which is a series of steps.
- Category #2: Machine, which is a combination of parts
- Category #3: Manufacture, which is a single part
- Category #4: Composition of matter, which is a chemical compound
The courts have construed these categories very broadly. Most inventions fit within one of the four different categories.
However, one major caveat is that some ideas are not eligible for patent protection if they are directed to a result only. Many prospective clients tell me that they have an idea and want to get a patent. For example, they say that they “want to build homes for the homeless and get a patent on that idea.” Unfortunately, you cannot patent this idea because the idea is a result or goal. These types of result or goal type of ideas cannot be patented. However, if the idea is a specific machine that helps build homes for the homeless (e.g., 3d printing machine), then the particular device can be patented.
Category #1: Process patents
A process is a series of steps, acts, or methods. In other words, a process patent is a patent on the method of doing something. Different method claims can protect different aspects of the invention. For example, if you invented a new machine, you could also get a patent on the method of assembling the machine. Another patent could be on the method of using the machine. Still, yet another patent could be on the method of making a part or component of the machine. It all depends on the strategy for protecting your invention.
Category #2: Machine patents
A machine is an apparatus or a group of assembled components that achieves a result. Examples of a machine would be a computer, a car, and a desk.
Category #3: Manufacture
A manufacture is a material that is milled, cut, treated into a new form, quality, or property. A manufacture is similar to a machine, and in some instances, the subject matters overlap. However, the distinction is that a manufacture is a single piece of material that is shaped, whereas a machine is assembled components. Examples of a manufacture are a crowbar, screwdriver tip, screw or nut.
Category #4: Composition of matter
A composition of matter is a composition of two or more substances. The substances chemically or mechanically joined to each other are a composition of matter. Gasses, fluids, powders, or solids are forms of a composition of matter. Examples include concrete, fiberglass, and ceramic.
These four categories are broadly defined. As such, most inventions qualify or are eligible for a patent.
Even though your invention might fit within one of the four categories, the patent office can still deny you the patent as being ineligible for patent protection. Three exceptions to the four categories exist. See below.
Three exceptions to the four categories (United States)
Even though the four statutory categories are very broad, three exceptions do exist. The courts created these exceptions to the four categories. In particular, the three exceptions are:
- Exception #1: abstract ideas cannot be patented
- Exception #2: laws of nature cannot be patented
- Exception #3: natural phenomenon cannot be patented
Exception #1: Abstract idea
One way to understand the abstract idea exception is that inventions directed to the result and not how to achieve the result are abstract ideas. For example, if I wanted to get a patent to travel to Mars, then the idea of traveling to Mars would be abstract. However, if I had built a space ship that could go to Mars, then the ship could be patented. It is not an abstract idea.
The abstract idea exception is very difficult to explain because the courts are still trying to figure out what it means. Back in 2014, when the courts decide Alice, the courts began invalidating, and the USPTO started to reject a large number of software inventions. Since then, other types of inventions have also been found to be not eligible for patent protection as being an abstract idea. For example, inventions related to mitigating monetary risks, medical diagnostic tests, among others, have also been found to be abstract ideas. To find out more information, read my article on abstract idea here.
Exception #2: Natural phenomenon
An example of a natural phenomenon is gravity or light. You cannot patent a natural phenomenon.
Exception #3: Law of nature
An example of a law of nature is E=mc2. You cannot patent a law of nature.
Eligible for patent protection in foreign countries
The U.S. standard for what is eligible for patent protection is broad. Foreign countries also have a broad definition of what is patentable, but there are nuanced differences.
For example, in software, the USPTO allows claims that are directed to a non-transitory storage medium, whereas some foreign countries do not. They prefer claims directed to a computer system. The U.S. allows claims for medical procedures on people. Other foreign countries do not. If you are interested in foreign patent protection, you need to let your patent attorney know. He or she should write the patent application with foreign patent laws in mind.
3. Novelty Requirement: Is the invention novel?
The invention must be novel to be patented. Novelty means that the invention is new. If your idea is old, then there is no reason for the government to grant a patent to you. The United States allows inventors to disclose their inventions before they apply for a patent. In this regard, the invention is not absolutely new when applying for the patent. Hence, the United States allows for relative novelty. The inventor can disclose the invention to others before filing the patent application. However, marketing the invention before submitting the patent application is not recommended.
Other foreign countries do not allow for any disclosure of the invention before filing of the patent application. Those countries are known as absolute novelty countries.
Do a patent search to determine novelty
If you want to find out if your invention is novel, then you can conduct a patent search. A patent search is a search of prior patents and pre-grant patent publications that might disclose the same invention as the one that you are seeking to protect. At a minimum, you should also conduct a simple google search as well. A patent search goes by many names such as novelty search, patentability search, or patent search. However, they all mean the same thing. You are trying to figure out if someone has already come up with the same invention. If so, the government will not grant you a patent on your invention because your invention would then be old, and not novel.
Any searching for prior art qualifies as a patent search. If you conducted a patent search, it does not mean that you can rely on the search to determine the likelihood of getting a patent in the future. If you had someone else conduct one for you, you don’t know the quality of the search. A quality patent search that you can rely on must at least be a class-subclass search.
You can have a patent search conducted by doing it yourself. I suggest searching the internet first. Google indexes everything. Next, the USPTO publishes a 7 step process for conducting your own patent search. To learn about the pros and cons and the benefits of a patent search, read Chapter 3 of my book: Conducting a Novelty Search.
Use the database at www.freepatentsonline.com, not the USPTO database if you do a patent search. The user interface at www.freepatentsonline.com is much more user-friendly than the USPTO. On Free Patents Online, you can search issued patents and pre-grant publications at the same time. At the USPTO database, you have to conduct two separate searches.
You can also have a patent attorney to search for you. Most likely, the patent attorney will be using a third-party service such as Clarivate or WashPat. The benefit of hiring a patent attorney is that he or she will define the invention for you. He or she will also search for the right aspects of your invention. In my experience, when inventors go directly to a third-party service, they sometimes search the wrong thing. If this were to happen, the search would be useless. Also, to get everything, they include so much that the point of novelty of the invention gets lost.
Defining invention’s point of novelty to get the most out of a search
To conduct a patent search properly, you need to define the point of novelty of the invention. The point of novelty is a specific method step, the relationship between parts or configuration that does not exist. For example, a new machine that has a lot of known features is not necessarily new because all of those features were previously known.
An easy way to figure out the point of novelty is to work backward from the benefit of the invention. For example, imagine you traveled back in time before airplanes. If you had invented the airplane, then you would identify the benefit. The benefit would be flight or travel without touching the ground. Now, what is it about airplanes that enables one to achieve flight. That would be the wings and airfoil which provides the vertical lift to the airplane. Ah-ha! The point of novelty would be the wings and airfoil. A proper patent search would search for wings, airfoils, and the like. If not, the entire search for a basic concept of flight would be fruitless. Well maybe not fruitless but it would be less useful.
Likewise, as you view your invention, think about whether it is achieving something new. Does it make something faster, cheaper, easier to manufacture, etc.? If so, then you have a new invention.
Identify the benefit of the invention. How does the invention make something faster, cheaper, easier? Is it a new method of assembly, a new tool, a new structure, etc. What are the design constraints of the device or method that enables the unique benefit? Search for these things.
4. Nonobviousness requirement: Is the invention non-obvious?
The invention must be nonobvious to get a patent. Nonobviousness is where the action occurs when you are trying to get a patent on your invention. Your invention would most likely be eligible for a patent. Also, your invention might be new. However, if it is an obvious variant of the prior art, then the government will not grant you a patent on your invention.
Here is the reason the Patent Office only grants patents on nonobvious inventions.
The patent system is meant to encourage inventors to tell others about their inventions and to teach them how to make and use it. The reasoning is that otherwise, inventors would try to hide their inventions and not teach others how to make and use their inventions. Hence, if your invention is obvious in light of the prior art, then your obvious invention would have been easily deduced from the prior art. The government has no reason to encourage you to tell others about your invention because they could have come to it by themselves.
Now, what is nonobvious? The problem with trying to decide what is obvious or nonobvious is that everyone will have a different standard. Have you ever come up with an idea and shared it with someone only to hear “that was obvious”? For that person, your solution might have been obvious. However, the test is not whether your friend thinks that it is obvious. The standard is whether the invention is obvious to a person of ordinary skill in the art (PHOSITA). The court set up this fictitious person (PHOSITA) to determine whether the invention is obvious.
The use of a fictitious person is not uncommon in law. For example, the criminal legal system sets up a fictitious person too. They call him the reasonable person. The difficulty is that everyone thinks that they are reasonable when they might not be reasonable. Likewise, all examiners probably believe that they are of ordinary skill. Hence, when an invention comes by their desk that appears to be too simple, they may reject it because the invention is obvious to them.
To mitigate against personal bias, the courts have set up elaborate rules to determine whether the invention is obvious to a person of ordinary skill in the art. For example, if a combination of old things requires a significant redesign, the combination is not obvious. Moreover, if one of the references taught away from the combination of two references, then it is nonobvious.
Proof of concept, market demand, and market size
Even if your invention meets all four requirements and can be patented, you need to do more work before retaining a patent attorney. Otherwise, you might end up wasting a lot of time and money. For example, you should establish proof of concept, proof of market demand, and the size of the market for the invention. Otherwise, even if you could get a patent on the invention, the patent wouldn’t be worth much. You won’t make any money on it. Without proof of concept, you don’t know if it functions. Without a large market size and evidence of market demand, you don’t know if you will make enough money.
Can I patent my design?
A design patent protects the looks, aka ornamentation of a product. Design patents do not protect the way that a product functions. If you want to protect the looks of a product, then you should get a design patent.
The requirements for getting a design patent is identical to utility patents except that the ornamental requirement replaces the utility requirement.
If you need help determining whether your invention can be patented, please contact me for an initial consultation.