You have this great idea! You think it can change the world in a small way.
Now before you get started. You need to know if your idea is patentable.
The last thing you want to do is spend thousands of hours of work to realize that you can’t patent your idea!
So the question becomes… is my idea patentable?
Well, this depends on several factors that I will do my best to discuss in this blog article!
Just so you have an idea of how the article is structured I have provided a simple outline below.
- Are ideas patentable
- What makes an idea patentable
- Types of innovations that can obtain a patent
- Not eligible vs. eligible patent comparison.
- Bonus: Patent claims and the tangibility of digital products.
Are Ideas Patentable?
For some reason, many attorneys LOVE to answer this question with a quick, “Absolutely not.” Now, technically, they’re right–but the spirit of this question really asks: “If I can explain my idea in sufficient detail so that someone like me could make it and use it, can I protect it?”
The answer to THAT question is a resounding “Yes!” Once the inventor is able to articulate with words and drawings in a sufficient amount of detail to enable someone with ordinary skill in the art (POSITA) to make and use the invention, they have just met the requirement for enablement.
Here’s an example:
Imagine a classroom full of students at any Technical School in the country. They are learning about a new tool for integrating the Bean programming language with HTML code. To accomplish this integration, they’re using the new TRANS tool.
Their professor presents a flow diagram that describes each step of this process. The students can see how to integrate Bean and HTML one function at a time.
After class, a young student named Smarty, who successfully integrated the two, exclaimed…
“I would have never understood that new tool without Professor Wise’s flow diagram.”
I chose this hypothetical specifically to refer to a recently published patent application for the TRANS tool. The applicant ONLY described functions; namely, the storage function, the retrieval function, and a conversion function, but also addresses other functions, including the HTML result function.
While the applicant did NOT include a flow diagram, it was all laid out in the descriptions of each function from which the Professor was able to create the diagram.
In fact, the patent didn’t have any detailed schematics or diagrams explaining what order the steps should go in, just the major functions.
On top of that, the patent didn’t have any code whatsoever. There was actually no Bean programming language in the written description.
Would a patent application similar to the example above still be considered enabling?
Surprisingly, I would say, yes, it definitely seems to be in that category.
Remember, you have to consider that the patent application’s audience is not a student, nor even a savvy businessman or woman.
Instead, it’s the…
POSITA, the person of ordinary skill in the art.
In this case, most likely a computer programmer who would already know that he/she could use many different coding languages to perform the functions.
Similarly, a programmer wouldn’t need to be instructed on the order of the steps, as they can get the function to work as long as they know how the pieces fit together and what the relationships are.
In general, no, ideas in and of themselves cannot be patented. One must bring it to life and enable it.
In other words, the patent application has to describe a concept in such detail that a POSITA would be able to read it, recognize what’s written there and know what the invented steps are in order to be able to innovate again.
What makes an idea patentable? Is My idea patentable?
According to the patent statute:
“Any person who 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.”
Well, that all sounds like a lot of legalese.
Let’s get right to the nuts and bolts of that answer’s meaning.
A complete, in-depth description of any actual machine, manufacture and composition of matter, or even “any useful improvement thereof,” goes beyond the scope of this article.
However, to give you an idea as to how each type is defined, we will discuss what the basic qualifications are for each different patent-eligible category listed in the statute.
As stated in the patent statute above:
“…useful process, machine, manufacture, or composition of matter…may obtain a patent”
Let’s better understand these patent law terms to determine if you idea is patentable or as us Patent Attorneys like to call it “Patent Eligible.”
Types of Innovations That Can Obtain a Patent:
1. Process Innovations Can Obtain a Patent
What is a process? When you think about it, many common milestones in life are a process: getting a high school diploma or buying a house, for example, are certainly processes.
Let’s break that down a little bit, though.
The examples above represent a “set or series of acts” in a certain order and sequence. That’s what really makes up a process—a starting point and an ending point.
Federal law puts it like this:
“a process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.”
2. Machine Innovations Can Obtain a Patent
We talked about the process. Now we will take a look at the patent qualifications for an actual machine.
The main difference between a qualifying machine and a qualifying process is that a machine is the sum of various physical parts that carry out a process.
If, as we said before, the process is the recipe, the machine is the oven.
It is a concrete, empirical object. It consists of parts of certain devices, and there’s a combination of devices. Each device, say, a blender, is made of sub-parts. A machine may be made of sub-parts, which need to be fully described. I think this category is probably the most straightforward of the four.
We’ve covered the process and machine, let’s go to the third type to see if your idea can be patented.
3. Manufacture Innovations Can Obtain a Patent
When I first started studying patent law, I found this category to be the most abstract of the four—mainly because it sounded (to me) like a work that wasn’t quite yet complete.
The “manufacture” patent designation refers to an article produced from raw or prepared materials by giving to these materials, whether by hand labor, or by machinery, new forms, qualities, properties, or combinations.
This designation is all about raw materials.
Think: wood, water, dirt, chemical compounds and basic, simple mixtures that can be made into more complicated things. This type of patent allows innovators to produce unique products from base ingredients. Much like the process, a patented or eligible manufacture must change the properties of the materials used in regards to their form: the way it actually looks and appears and the shape it holds—in essence, any physical properties.
Let’s say a researcher prepares elements for a study on producing new types of materials for retail packaging. As an initial experiment, he will mix a polymer and a silica with a dioxin, thus transforming plastic and quartz into a bouncy, putty-like consistency.
This is the definition of a change in property: when the R & D technician combined the two materials, they produced a third with unique physical properties. That result defines a manufacture.
Note: The WAY that the raw materials are combined is left open-ended, unless a separate process claim is written.
4. Composition of Matter Innovations Can Obtain a Patent
Let’s read the statute definition here:
All compositions of two or more substances and all composite articles, whether they be the results of chemical union or a mechanical mixture, or whether they be gases, fluids, powders, or solids, for example.
Though perhaps not obvious at first glance, there is a big difference between the composition of matter and a manufacture.
Manufacture is simply combining raw materials and giving them new qualities or properties. Composition of matter, instead, combines and mixes one or more substances such that they form a chemical union, binding their electrons and transforming at the atomic level.
Not Eligible Vs. Eligible Patent Comparison
Let’s begin our discussion of the “heart,” or the deciding factor (or factors) in determining the eligibility status of an application by talking about what’s NOT eligible—at least since the patent law and the patent clause were inserted into the US Constitution and then move into what is eligible!
You are now one step closer to understaning if your idea is patentable.
Not Eligible Patents:
Algorithms or pure physical phenomenon, say gravity, or E=MC2, are not protectable. This is mainly because they are laws of nature.
Yes, they’re complex, and sure, they take a lot of brain power to be understood or applied—but that’s not the point here.
Laws of nature CANNOT belong to an individual or organization, but to Mother Nature.
In other words, they are inherent to the existence of life itself.
Our lawmakers made sure to point out that it’s not in good faith to potentially allow for someone, an individual, to own something that has been defined by Mother Nature, as opposed to something that has been created by humans.
Now, of course, there are lots of arguments going back and forth on that matter, but that’s outside the scope of this article.
What’s important for our purposes is that the claims, or the subject matter regarded by the applicant as the invention eligible for rights of the patent application do, in fact, define the whole of what was invented.
To that end, the language defining the particular scope of exclusivity must be very specific in each application that gets reviewed. Typically, (if working with counsel that’s seeking to be an applicant’s best advocate) a lawyer will push for the most amount of rights (broadest) as he or she believes possible.
Such claims may start out being quite broad in nature, and as the examiner finds prior art—meaning patents or publications that are similar to the applicant’s work, or that may have previously disclosed subject matter to the public that the applicant is trying to claim—some of those broad claims will most likely be limited or amended by the patent office.
In all, if someone asks you what your patent is, it’s not really the drawings or the description; it is the claims.
Eligible Patents Need Utility, Novelty, and Non-Obviousness:
In reading any patent application, it needs to be apparent to the USPTO how the invention meets (at bare minimum) these three criteria before it will grant a patent. I mentioned these characteristics in earlier discussions on claims.
Let’s take them in order from easiest to most difficult.
Utility or “immediate usefulness”:
The eligible invention must have practical benefits in its field or area of technology. Truly, this is one of the lowest bars to be met. In my years of practice, I have not come across any invention that doesn’t have at least a shred of usefulness in technology.
I use this term a few times in this book, but it’s really just a fancy word for “new”. The invention must be new to be patentable; it must have at least one or more inventive steps beyond the current state of technology in the given field.
Whether the invention is or is not novel enough to be considered for patent rights is confirmed in one of the initial steps we discussed earlier: the patentability search. To be sure, the patentability search serves as the supporting evidence in the explanation as to how exactly this invention is part of, or uses technologies beyond the current state.
This last aspect is a little bit trickier to define. We’ll spend some time on it.
This requirement states that the innovation must be “nonobvious” for your idea to be patentable.
The purpose of which is to establish whether or not the invention is trivial. There are two (2) approaches to best determine the individuality of the device or process:
- Look for a motivation in the prior art.
- Ask: Has the prior art stood up on its own? Or, could it have been easily combinable with another unit?
Think about obviousness from the perspective of the person of ordinary skill in the art (or post field). Let’s say the invention under review is an auto body hammer with a wider than standard head. It could be considered obvious to an auto mechanic, and therefore not eligible for patent rights, that to get more surface area on the hammer, one simply widens the head.
However, the applicant is attempting to claim that since he actually came up with the idea to bend out the rounded edge of the hammer for increased surface area, he should be granted a patent on the design. I think to say that that would have been trivial is an example of a good argument, but it is a case-by-case understanding. If the differences between the proposed invention and the prior art ARE trivial then the invention itself is trivial, and falls into the “too- obvious” category.
Likewise, aside from the small differences, if the entire subject matter of the invention can be shown to be trivial, based on the current knowledge in the industry, the entire subject may be obvious.
What does it mean for an entire subject to be thrown into the proverbial obvious box?
Well, for example, an invention regarding a tool for developing software code, would be obvious if some average software developer would have stumbled on it using the known industry knowledgebase.
The simple textbook explanation of this is known as: A plus B. In other words, if A is known in the prior art, and B is known in the prior art, assuming that the average software developer knows about A and B, and upon looking at A, and then looking at B, would a POSITA consider A and B together to already be known?
If the answer is yes, then A plus B is obvious. If the answer is no, A plus B is not obvious.
BONUS: Patent Claims and the Tangibility of Digital Products
I’ve developed a new software app. How does software fit into the world of patent eligibility? Is my software patentable?
This is a very good question, and something I get a lot lately. Software developers and, say, groups of engineers collaborate, and oftentimes co-create new software apps. New software apps are coming out thousands, if not tens, or hundreds of thousands at a time.
What type of protections should these innovators be seeking?
There are two. We’ll talk about them each in turn.
1. Patent Protection.
We should talk first about how the scope of patent eligibility for software has become the subject of numerous court decisions just as recently as over the past eighteen months.
2014’s Alice Corp vs CLS Bank decision by the Supreme Court has since spurred between 15 and 20 federal court decisions on the subject.
These decisions are all over the map, as far as how to try to interpret the Supreme Court’s holding, but there has been a basic line of reasoning that the courts have held.
The reason why software recently got this kind of airtime in the courts is because it is a little tricky when it comes to eligibility.
We’ve discussed the four different types of inventions that qualify for patent rights. The ones easier to define seem to be those things that one can touch and feel: the airplane fuselage that starts out as sheet metal, or as composite material, for example.
As it moves through the manufacturing line and goes through additional processes and starts to re-form; as each sheet gets riveted to one another and attached to the frames, soon what was simply a sheet of metal has now become a well-formed position fuselage.
It’s not that simple with software, and as one might imagine, there’s no big, honking metal parts to see. But if those digital processes have some tangible result and function, they may very well be qualified for exclusivity rights.
As of this writing, it stands in the courts that as long as the claims tie the process steps to a specific machine, the claims could be considered by the USTPO.
However, if the “process” is simply a recitation of steps; if an applicant’s claim states that “if one were to perform steps A, B, C, and D, using software on a computer and that these steps should be considered patentable functions performed on the personal computer,” there process is too generic.
Unfortunately, that was the case for CLS Bank, as the Supreme Court ultimately said that their financial software application is not patent eligible.
However, this does not mean that there isn’t software that IS eligible for protection. As long as the patent claim:
- cites specific problems that the software attempts to solve, and the
- functions can be proven and shown through novel hardware, specific user interface, or specific electrons moving, traveling along a physical line, cable or air-wave, and
- are received by another signal.
THEN you’re talking about something that is certainly patent protectable.
Something else to think about in regards to software that many people might not understand is that software is simply a process. The coding belongs more in the domain of copyright.
2. Copyright Protection
This protection is for the code that developers and/or engineers have produced. Registration for a copyright can be granted through the Library of Congress.
Although I would highly recommend registering software code for a copyright, it is a process that is separate from the patent law, and the USPTO.
Here is a video series that can further help you understand if your software is patentable.
Is My Idea Patentable Conclusion:
In conclusion, before you get started with your invention you need to make sure your idea is patentable.
First understand, what makes an idea patentable then make sure your patent has utility, is novel, or non-obvious.
If you are trying to patent a digital product you also need to take into consideration copyright protection in addition to patent protection.
What do you think? Any other resources I can include to make this easier?
Please let me know in the comments below!