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By J.D. Houvener
Patent Attorney and Founder

Here’s a quick question for you: have you ever seen one of those coffee mugs people carry around, something like this, you know, a Contigo or a different brand? There’s a little simple button on the back. Is this patented, do you think?

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Welcome to the show of “Is Your Idea Patentable?” This is certainly patented, and many products on the market today are. So, I encourage you in your everyday, maybe even today, right? Take a look around at some of the products, maybe even in your own house, that you might not have thought had patents on them. One great way to tell is to look at the bottom. Okay, take a look. This thing says, of course, “Dishwasher safe” and “Do not microwave,” right there at the bottom. It says “patents see ignitepatents.com.” Let’s see if I can zoom in and get a shot of that.

So, on that website, of course, articulates not just one but over 20 patents that are involved in that mug. I’m J.D. Houvener, I’m a registered USPTO patent attorney, and I’m a managing partner and CEO here at Bold Patents Law Firm. I’m here to talk with you about that simple and yet complex question of, “Is my idea patentable?” What I’ve done in this video is provide for you some timestamps along the way so you can fast forward and find the spot, the issue that you might specifically have along the way.

So, the first order of business is to look into ideas, okay? Ideas, you ask, “Is my idea patentable?” and I talk about this in other videos too, and I won’t go on forever, but ideas are done, but doesn’t I hear them all the time, okay? The question is, do you have an invention? An invention is you being able to articulate, even if it’s verbally, about what your invention is and how you can make it, how you can bring it into reality. And again, you don’t have to have a prototype, don’t get me wrong. You don’t have to build something, especially if it’s going to be very onerous and require a lot of equipment financial injection. Being able to describe it, describe how your invention could be built. It can’t just be this fanciful, “Oh, I wish it was this way, but I don’t know how to make it.” Well, you’ve got a great idea. You don’t yet have an invention. So, I’d like to restructure the title to be, “Is my invention patentable?” Okay.

So, to get a patent here, you have to prove three things: novelty, non-obviousness, and utility. Novelty means you’ve got to be the first of its kind in the world. So, you work with us to put ourselves in the shoes of a patent examiner to see whether there’s any prior art, anything ever published, anything ever patented that covers the same subject matter that you’ve invented. We’ve got to make sure not only is it new, but what you’ve got is not an obvious variant of something else already done. Utility, they want to provide and make sure that what you’ve actually done here achieves something, has some benefit. And this is a fairly low bar, but you’ve got to make sure that it’s achievable in today’s world. So, we’re going to talk about some fun examples there.

One quick note as we’re talking about all the requirements and what it means to, “Is your idea patentable?” One thing to think about too is that even if it is novel, non-obvious, and has utility, you may not want to file the patent. This is in the case that it may fall into trade secret protection, and the essential question, okay, don’t miss out on this, is when you sell your product, right? When it gets in the consumer’s hands, is it reverse engineerable, right? Can they take it apart and figure out how you made it, or is it something that they really couldn’t figure out, no matter how hard they try? There’s no way they could do it, and you’re certain of that. If it’s the latter, you may not need to seek patent protection, okay? But if it is reverse engineerable, it’s easily picked up, something quite simple, you’ve got to lock it down with patent protection. We’re gonna have a separate video All About Trade Secrets, but I want to make sure to flag that issue for you before we move on.

What the examiners are going to look at is making sure that your invention is sort of above and beyond, right? Incrementally different and improving over and above what’s called prior art. Prior art is sort of a term that’s used to define anything that’s ever been published, anything that’s available to a person of ordinary skill in the art. So, someone like you, an inventor just like you, in a different part of the country or the world for that matter. What information do they have, right? What do they use, what magazines do they read, what books do they read, what information online do they have at their fingertips? That’s the information that the patent examiner is going to be able to take a look at when they make their assessment on whether your invention is different enough, right? Is not just described in those writings, okay? So, let’s take another look at this.

Utility means that it must demonstrate or demonstrating some utility, showing that you’re able to apply some benefit. So, a very kind of a fun story for you. It’s not actually one of my clients, but it’s a great story from the patent literature and the patent war stories. One issue that came up in the past 10 years, 15 years is a chemical device that was used to spray on a bald head to show hair regrowth, okay? And so, for many years, applications for hair growth formulas were rejected because they made the claim that they could regrow hair on a bald head, right? And so, the examiners would say, “No, based on your description and based on this, there’s no evidence you can do this.” So, in rare cases, examiners will make you prove it, and so that’s what happened. Eventually, enough scientific evidence was gathered, they would attach it as an affidavit to the patent application to get around and over the objection from the examiner.

One more example here is Pharmaceuticals, and this is a huge one. Many of our clients that we work with are developing new drugs, having new medical treatments and therapeutic diagnostics. They make pretty sweeping claims. As an example, “Able to lower the cholesterol of a particular patient with certain demographics and enzymes and proteins.” This is difficult, right? To be able to just say flat out, based on this chemical structure, if this is ingested, it will lower cholesterol, and certainly, LDL and HDL, won’t get into those specifics. But in order to make that claim, the examiner will almost always make you provide an affidavit with detailed experimentation results, you know, showing a certified test was performed and those results were achieved before you’re allowed to get a claim.

Last but not least, we’ve only gotten a couple of these, but we work with clients that make really broad claims about perpetual motion machines, being able to generate electricity at no end, right? And it’s one of those jokes in the patent community about perpetual motion machines, but it is one area that is yet to be, of course, overcome because it defies physics as we know it. So, we’ve certainly had our share of inventors that just prompts, and they want honest to put perpetual motion or generates electricity at zero at 100% efficiency. And so, examiners are going to reject it based on lack of utility, so we need to help examiners come up with some evidence and specimen and provided. But when it comes down to it, it’s never possible to generate it because it’s not physically possible to do that. So, that’s an area that has classically been rejected under the utility doctrine, that third requirement of novelty, non-obviousness, has to have utility, be able to demonstrate it in most cases.

I’m happy to be able to provide this information for you, listeners. One thing I need to make sure I do is invite you to please share this with someone that you might know, right? Inventor, someone who’s just a tinker, right? A garage person. You think you may not necessarily know what they’re working on. Do you suspect they’ve got an invention up their sleeve? Send this video to them, forward it, whether it be social media, email the link, like the video, comment below, so let them know, right? Pay it forward and share this video so we can help other inventors out there looking for information just like you.

I’m happy to be able to present this information. What I need you to do is follow up. If you’re ready to make a decision, if you’ve watched this whole video, I know you’re ready. You’ve got more than an idea. I’m betting you’ve got an invention, and it’s a matter of just willing yourself to just take that risk, take that bold step and talk with a professional about moving forward to making the next step. The next step for you is going to be to go to our website boldip.com. I’ve laid out a lot of free resources for you to use if you need that extra support, the extra guidance and information. Pick up your free copy of “Bold Ideas: The Adventurer’s Guide to Patents.” But once you’re ready, book a free consultation with one of our advisors and get started today. Again, I’m J.D. Houvener, managing partner and owner here at Bold Patents Law Firm. It’s my pleasure to talk with you. I’m so glad you made the decision to go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/