By Derek L. Prestin
April 27, 2022
An invention developed by a business or individual inventor may have great value to that business or individual, either through the commercialization of the invention or by licensing the invention to others in return for a license fee. That value is greater if the invention can be patented, which prevents competitors from manufacturing or selling a competitive product that incorporates your invention. But how do you know when your invention is patentable?
To be considered patentable subject matter, the invention must be a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” which means the general scope of a patentable invention is quite broad. However, under patent law, the invention must also be novel and non-obvious. In general terms, an invention is no longer considered “novel” if it was:
- described in a printed publication;
- in public use;
- on sale; or
- otherwise available to the public before the effective filing date of a patent application on the claimed invention.
Likewise, an invention is considered “obvious” if the differences between the invention and the prior art are such that the claimed invention is:
- obvious to a person having ordinary skill;
- in the art to which the invention pertains;
- before the effective filing date of a patent application on the claimed invention.
Therefore, in order to determine whether your invention is patentable, you must look at the prior art in the technological area the invention exists and compare it to your invention.
Determining whether your invention is novel or not is typically a fairly straightforward analysis. If you find even a single piece of prior art that discloses your invention as a whole, your invention is no longer “novel” and would not qualify for patent protection. For example, if your invention includes three elements – A, B, and C – and a single piece of prior art discloses A, B, and C, then your invention is not novel.
However, determining whether your invention is obvious or not is often a more difficult and complicated analysis. Again, the prior art must be considered, but this time you must consider whether multiple pieces of the prior art may be combined to end up with the elements of your invention. Then, you must consider whether that combination would have been “obvious” to a person having ordinary skill in the art within which the invention falls. If you can combine multiple pieces of prior art to end up with your invention and that combination would have been obvious to a person working within that general technological area, then your invention is no longer “non-obvious” and would not qualify for patent protection. For example, using the example above, if one piece of prior art discloses A and B, but not C, but another piece of prior art discloses C, and it would have been obvious to someone in the field of the invention to combine C with A and B, then your invention is considered obvious under patent law.
Since the basis for any determination of whether a particular invention is patentable or not is what is disclosed in the prior art, an understanding of the prior art is necessary. Assuming your invention is related to the industry your business currently operates in, this typically would start with your own knowledge of the market. You would look at the products available or the processes used in your industry and compare them to your invention, both from the perspective of the novelty of the invention as well as whether the invention is obvious given what has been available in the past.
The next level of review is to actively search out prior art that you may not otherwise be aware of in your industry. This involves looking for:
- new businesses or startups that may be built around new ideas that are not otherwise widely available or known in the industry;
- products or ideas that have been described in industry publications but may have not yet reached the commercial
stage of development;
- new products that may not be widely known in the market yet; or
- unique products that didn’t commercially succeed at the
time or which were sold by a failed business.
The final level of review is to have a patent search conducted on your invention. These would typically be completed or managed by a patent attorney or agent and conducted by a firm that specializes in patent searches. Patent searches are typically conducted using the classification numbers for inventions used by the Patent Office. Firms who focus on patent searches are more likely to find patents and patent applications in a particular technological area that may, for example, use different words to describe a particular invention or which are used in a different industry or in a different way and therefore may not otherwise be found. There are several levels of patent searches, with various types of prior art included in the searches, including:
- United States patents and published applications;
- Foreign patents and patent applications; and
- Non-patent literature, like scientific or technical articles, industry publications, and the like.
The more sources of prior art included, the more expensive and lengthy the patent search becomes.
When you are determining whether an invention is patentable, it is important to keep commercial considerations in mind. You will always need to balance the level of prior art that has been considered, and the odds that prior art may influence the novelty or obviousness of your invention, against the cost of the next step in expanding your knowledge of prior art existence.
©The Business Leader – April, 2022. Reprinted with permission.
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