I’ve never seen one of these before

When inventors are asked if their idea is something new, a frequent response is that they have never seen anything like it before. To have a patentable invention, the subject matter, in addition to being a subject that is eligible for patenting (i.e., a useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, 35 USC §101), must be novel (35 USC §102) and not obvious (35 USC §103). It is these latter two requirements that usually determine if the inventor can obtain a patent.

Inventors have a wide variety of skill sets. They may be individuals working at home, PhD engineers working for large corporations, or anything in between. Their ideas, in their minds, are something new and unique. When presented to a patent attorney, this is the starting point from which to evaluate the invention. On occasion, inventors conduct an online search, such as a Google® search, and in some instances visit the Patent Office site at www.uspto.gov to search for something with similar characteristics to their idea. A first step in assisting inventors is to review what they have learned from such efforts, as well as inquire as to how they conceived their invention. If the idea for their invention was learned from a conversation with an acquaintance, they are not an inventor under U.S. patent laws. In this case, they must politely be educated as to the necessity of being the actual inventor in order to obtain a patent. Unless the information obtained from the inventor’s searching efforts (if any) clearly indicates that the idea is not novel (i.e. identically disclosed in a single document), a patentability search is usually warranted. Although there are additional types of patent searches, such as a freedom-to-operate search and an invalidity search of an existing patent, this article addresses a search that determines the patentability of an invention.

Even though inventors have never seen anything like their idea in the marketplace or in their own search results, a professional search service may discover patent documents or other published prior art that would prevent them from obtaining a patent. A search, once authorized by the inventor, typically takes 4-6 weeks to complete, including the efforts by a search service and the subsequent review and evaluation by a patent attorney. The attorney will then provide a written opinion discussing the prior art that was discovered and opine as to whether or not the invention may be patentable.

Although a patentability search and opinion typically costs at least $1500, or significantly more on a complex invention, and therefore somewhat costly, if the results indicate that the idea is not patentable, the much higher cost of filing an application for a patent that is doomed from the beginning is avoided. Further, the inventor is provided information that may be used to decide whether additional and much higher expenses, such as having a prototype made or even manufacturing and marketing the invention, is justified. Thus, even a search that has results that may be disappointing to the inventor, is useful.

If, on the other hand, the idea is patentable but the prior art discovered is somewhat close, the inventor will have an idea as to how broad and, thus, valuable a potential patent may be in providing a right to exclude competition with the invention. Also, such prior art information is invaluable to the patent attorney, facilitating drafting of patent claims to the invention which are of appropriate scope. The attorney also is enabled to describe the invention (in the specification) in a manner to assure the best possible presentation of the invention before the Patent and Trademark Office.

In the best possible case, where the inventor’s instinct is proven to be correct and there “is nothing out there like it”, a patent application can be drafted with claims that broadly cover the invention. This will provide the inventor with a strong and enforceable patent. An opinion that the invention is patentable may give the inventor a valuable advantage in raising capital for the manufacturing and marketing of the invention. It also raises the possibility of licensing the invention to third parties. When a patent is issued, it will provide the owner the right to exclude others from competing with the patented subject matter in the marketplace.

In all cases, any prior art discovered by the inventors search efforts, otherwise known to the inventor or discovered as a result of a patent search, must be disclosed to the U.S. Patent and Trademark Office for consideration by the Patent Examiner.

Although a search report indicating a patentable invention exists is a very positive sign that a patent will be granted, the application of patentability standards by an Examiner is not an exact science and reasonable persons may disagree. As a result, even though your attorney is of the opinion a patent should be granted, you might encounter a lengthy prosecution effort and the attorney cannot guarantee that a patent will be granted. In most cases where the attorney is of the opinion that the invention is patentable, we have been successful in obtaining patent protection for our clients.

By Hal Reick, © 2011 Price Heneveld LLP. All Rights Reserved.