AN INTRODUCTION TO THE PATENTING PROCESS: INITIAL CONSIDERATIONS
Clients frequently ask us if they will be able to obtain a patent on a new invention, and if so, whether obtaining a patent is in their best interests. In general, inventors should weigh the following initial considerations before seeking a patent.
I. Patentability Requirements: "Could we patent the invention?"
The Basic Rule
According to Federal law; "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore[.]" This means that, absent any statutory bars to patentability, a new and useful invention or an improvement to an existing invention may be eligible for patent protection. However, certain conditions apply to this rule that could prevent the issuance of a patent.
The Novelty Requirement
Has the invention been made available publicly for more than one year? If so, this constitutes a statutory bar to patentability. An invention has been made available publicly if it has been offered for sale, described in a printed publication, or used to produce a product.
Other statutory bars to patentability can be triggered if an invention was abandoned by an inventor who later returns to pursue a patent, or by an applicant who did not invent the subject matter sought to be patented.
The Non-obviousness Requirement
In order to obtain a patent on an invention, it must be "non-obvious," or not anticipated by the prior art. If the differences between an invention and the prior art are such that the invention would have been obvious at the time it was made to a person having ordinary skill in the art to which the invention pertains, it may not be patented.
Prior art consists of U.S. and foreign patents, known pre-existing products, publications that disclose inventions, information obtained from industry trade shows and from third parties. If there is little or no difference between a new invention and the prior art, then an application will be considered obvious since there is no subject matter on which to obtain a patent.
II. Other Considerations: "Should we patent the invention?"
If there are no statutory bars to patentability, it may be possible or even likely for an inventor to obtain a patent on an invention. Before proceeding however, other factors should be taken into consideration:
Patent owners may assign or license their rights in an invention. If this is a possibility, it may be preferable for an inventor to file an application, since patented inventions are typically more valuable than unpatented technologies.
In order to obtain an issued patent, an inventor must fully disclose the best mode of carrying out an invention. That is, an inventor must be able to explain to the patent office how an invention works, what components comprise the invention, and any other information required to teach someone similarly skilled in the art of the invention how to make and use it. If fulfilling this requirement will necessarily involve the disclosure of confidential business information, such as trade secrets, an inventor should weigh the benefits of obtaining patent protection against the possibility of losing those trade secrets.
Depending on their input, joint contributors to an invention might all be regarded as inventors. Furthermore, each inventor shares an undivided interest in any patent issued on the invention unless their interest is assigned. Therefore, it is important to make sure that all inventors agree to assign their rights in the invention, since even one inventor can authorize other parties to practice the invention.
Enforcing Patent Rights:
Inventors should consider whether a patent can be enforced. If it will be impossible to catch infringers, or difficult to know if someone is infringing the patent, it may be impossible to enforce an inventor's patent rights.
In order to be economically viable, an invention should make technological improvements for which there is a demand. With regard to these considerations: Does the invention make improvements that yield a competitive advantage in the market? If the invention leads to functional improvements, decreased costs or greater efficiency in the art, it yields a competitive advantage.
Finally, an inventor should consider the size of the market for an invention and how long it will last. How likely is it that there will be competitors in the market? If there are contractual mechanisms that can prevent others from making or purchasing the invention, these may be preferable to obtaining a patent.
These issues are by no means an exhaustive checklist for patentability, but rather represent the types of issues an inventor should consider before attempting to obtain a patent. For a more detailed analysis of patentability, or to discuss a particular invention, inventors should speak directly with a patent attorney.