30 Mar 2015

Can I Patent This?

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You invented something the world’s never seen before—and it’s going to be huge. Shark Tank huge. All your friends and family are saying, “You should patent that!” But what does having a patent really mean? In simple terms, a patent is a limited government granted monopoly that prohibits others “from making, using, offering for sale, or selling” an invention throughout the United States.

To the inventor, a patent is both a sword and a shield. It’s a sword because by filing for a patent you’re able to enjoy the fruits of your great invention. If you receive a patent, you are granted the exclusive right to the use, manufacture, and sale of your invention. It’s also a shield because no one else can file for the same patent and try to stop you from using your idea.

In the past, the United States granted patents according to “the first to invent” a new invention. That is no longer true; recent patent law changes now grant a patent to “the first to file” for the patent. In other words, if you fail to patent your invention and someone else files for a patent first for the same idea, the first to file wins! We call this racing to the patent office.

But how do you know if your idea is eligible for a patent? More importantly, how do you know if your idea is worth the expense of patenting? If you answer “yes” to these 7 questions, filing for a patent may be the right step for you.

1. Is it worth the cost?

Filing for a full non-provisional patent is a time-consuming and costly process that involves paying government filing fees and retaining the services of a patent attorney. If you can’t make more money from your invention than it costs to patent, you probably shouldn’t do it.

Many inventors choose to file a provisional patent application initially. After the provisional application, the inventor has one year to file the full non-provisional application. Non-provisional applications are more complex, and will need a patent attorney’s help to prepare and file. A benefit of doing the provisional application first is that it gives the inventor more time to get the full non-provisional application ready to go, or to do further market-testing and other research to make sure it’s worth the time and investment to get the official patent.

2. Did you invent it?

You can only apply for a patent in the name of the actual inventor or co-inventor of the invention. Simply making a financial contribution to a product does not make you an inventor. This applies even if the inventor was employed by another person or company to create the invention. Although an employer will often own the resulting patent, the patent will be issued in the name of the actual inventor.

3. Do you own the invention?

As I mentioned above, just because you invented the underlying invention, doesn’t necessarily mean you own it. If you have an employment contract with a pre-assignment clause or if the patent was invented as part of your job the patent will be issued in your name, but the employer may have contractual rights to the invention. In fact, if you attempt to sell, license, or use the invention without the employer’s consent, the employer would probably be able to sue you.

4. Is your idea useful?

Unlike a trademark or copyright, an invention must be “useful” to be eligible for protection. An invention meets this requirement under U.S. law if it provides some benefit and is capable of use. Although most inventions will be able to meet this requirement, devices such as a perpetual motion machine have been considered non-useful and not eligible for patent protection.

5. Is it in a category of patentable ideas?

Not every invention is eligible for a patent. In fact, some things are specifically excluded from patent law. The United States does not permit patents for laws of nature, physical phenomena, abstract ideas, and non-useful objects. However, you can patent processes, machines, articles of manufacture, and improvements to any of those as long as they meet all other qualifications.

6. Is your idea new?

An idea must be “novel” in order to be eligible for a patent. The subject matter of the patent must not have been publicly disclosed prior to the date of the filing. This is a strict requirement. Inventors have been denied patents because the invention was previously disclosed to the public, the invention was made available for use to the public, or the invention was disclosed in a prior patent application.

7. Is your idea non-obvious?

An invention must be “non-obvious” in order to be eligible for a patent. Ask yourself if your invention would seem easily knowable to a “person having ordinary skill in the art” in which the patent is intended. It can’t be something that people already know about, in that field.

If your new idea meets each of these requirements, then it may be time to speak with me about filing for a patent to protect your invention!