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By J.D. Houvener
Patent Attorney and Founder

Yeah no absolutely mr inventor i understand well the key to patentability as i said is it’s novelty non-obviousness and utility you bet yeah no i i’m happy to happy to share yeah that’s the law yes yes sir 35 usc section 101 okay talk to you later goodbye

legal service right is that patentable any service what about how you’re delivering your product the way you work with customers is that patentable let’s talk about that today

i’m jd hoovener managing partner and ceo here at bold patten’s law firm and i’m going to talk with you today about can you actually patent a service is that out there can you do that well let’s talk about that today so today we’re going to talk about can you patent a service and i’ve broken this out into three major areas today the first one is is it patentable right does your service really is it really the first of its kind is there anything else out there like it and does it have a real benefit to anyone out there in the community the second piece we’re going to talk about is is it detectable even if you were able to get a patent on it is it detectable whether someone else is infringing that or not hmm and then lastly is it monetizable that’s a long word right is that even a real word can you make money with it is it something that you could actually license and give to a third party and reap a royalty from is it someone that someone would pay you for is it a valuable enough to keep within your own company and exclude others in the marketplace we’ll talk about each of those three in turn and as all the videos we do you know they’re kind of long form and so if you don’t have a full nine ten minutes to listen to this i’ve got some time stamps below and we’ll break out each of those three you can fast forward to the subject that you want to and i do want to remind you that we do have blog articles written for almost every piece of video that we do so if you don’t like the video and the sort of information flow you can always hop on to our website and have a look at the blog article that i wrote myself in typically three to four thousand words in great work a lot more detail that i’m getting into here today all right let’s jump into this first piece of a service okay and we’ll come up with some sort of example about a service and i i mentioned legal services right kind of in a joking way but let’s take legal services let’s see how that goes okay so if i have a way of delivering my legal services and it’s a way that i think is unique non-obvious and has a utility it’s technically going to be eligible all right eligibility for what’s patentable four main categories of what’s what’s eligible an apparatus a device you can touch and feel um a a composition of matter okay which is like at the atomic level you know think pharmaceuticals or think an amalgam of mixtures of metals okay the third type is an assembly where you’re taking things that already exist but putting them together in a unique way and last but not least is methods and processes and this is typically where you know software patents or computer implemented inventions will fall under and you guessed it services as well services are when you break it down are nothing more than just a series of steps right it’s a way that you have conducted business so whether you’re delivering your work product to a customer that is it right and so understanding the my new steps of what you’re doing and how you’re doing it and if that series of steps has never been done before which means that it’s novel and if those steps have been put in a way that no one else has talked about there’s been no other publication of those steps being in that order and lastly there’s a true benefit right and there’s that’s benefiting either the customer or me or there’s some betterment of doing those steps there’s a reason why those steps are in of those ways you’ll be able to get through this patentability hurdle and confirm that yes it’s going to be eligible for filing and likely to be able to get a patent on it so exploring you know service like legal services um you know i’m kind of uh off the cuff a little bit here you know delivering let’s say a opinion requires that we do an intake right we speak with a client understand what the invention is they’ve come up with not only just their version but we think about how else could it look what other applications might this have in other industries and we take about two weeks to do that within that time period we’re going back and forth with the inventor via email with phone calls and we do have a specific way that we like to do our emails and messaging um and from there we like to pursue uh you know an actual concrete invention disclosure document and so within that document we have specific questions that we ask inventors to help poke and prod and to get that invention out of them because believe it or not that does take some time to get to so maybe maybe we could just kind of zoom in on that process the invention disclosure process that is potentially patentable and as we’ll talk about later you may not want to perceive that because as we’ll talk about next is even if it’s patentable even if after doing some research that our own firm’s way of doing an invention disclosure process we think it’s one of a kind and i actually do think it is and um because we’re asking questions in just the right way we’re speaking and communicating with our clients you know on purpose right we have canned messages and templates and information and links just set up so that we think inventors will have the maximal amount of ability to deliver their invention to us that’s the whole point of this invention disclosure process is getting as much as we can about the invention down so we can do our best work of doing the research and delivering an opinion so in this process of pulling information gathering data researching about what this invention is about that has been a benefit of course our firm right because we’re going to be able to do deliver our best work if we start from a great foundation and we i honestly believe it’s going to help the client yeah get a better opinion and better basically data to make a decision about whether to move forward with their invention or not so that process like i said uh it’s it’s if even if it is novel we haven’t done that i haven’t done that research to see whether it’s not but that process of how we work with them what questions we ask in what order that kind of whole system let’s say that it’s novel that no one else is doing that let’s say that it is not obvious i mean there’s been no other publications no other patent attorneys or firms have talked about their invention disclosure process and it doesn’t sound like ours right there’s nothing out there similar to what we’ve put together and there is a benefit so it meets all three criteria to be patentable do i actually want to pursue a patent on my invention disclosure process so let’s move on to the second phase of is it detectable because that is what is the heart of buy i usually say for services we got to make sure we meet all these hurdles before we move forward with seeking a patent on it so we’ve gone through the first hurdle of is it patentable okay the second one is is it detectable because the problem with most you know services and you know behind the scenes operations type inventions is that they may be novel unique and have utility but how on earth are you going to find if someone else is infringing your patent claims even if you get to the end of the the road and get your patent granted how are you going to find infringers right from that end patent that we deliver or maybe a competitor of mine right let’s say that okay one of my competitor patent attorney firms they do great work they get a patent granted for their client from that end patent am i gonna be able to see or know that they used my patented invention disclosure process likely not very difficult right there’s probably a way to think about it and you’ve got to think about your own service and whether you’re going to try to protect it with a patent the question of course is would you be able to tell that a competitor used or is using your patented method to deliver their product and in some cases maybe you are i’ve thought about some different processes as i worked in the aerospace field and so there are some processes for example about material manufacturing about how you heat treat and maneuver materials and combine and compress and fasten to form a unique assembly well those methods are probably not patented because boeing likely thinks that they’re kept as a trade secret and there’s really very low detectability if if their competitor were to try to steal that and rip off their invention they probably couldn’t tell that they used their method that final assembly maybe you could actually cut it apart and see that they use heat treat by the by the coloration of the of the metallics or by the way the fastener head or the grip of the of the fastener thread is in contact with the specific types of mesh right it would be pretty extensive to try to do reverse engineering on it just to prove that they used your patented method or process or service so um i would just urge you to think about that for your potential service that you’re delivering if you think it’s got you know based on this the whole you know concept we talked about in stage one which is is it truly patentable is something you would be able to find out and detect in the in industry once you have the rights to that invention um circling back really quickly you know once you have a granted patent you have the rights to exclude right no one else has the ability to make use or sell your invention and so that is what you’re looking for is there anyone else you’d be able to see and how easy would it be or how difficult would it likely be for you to find out whether someone else is infringing all right so step three is how monetizable how much money could you really make with a patent that is kind of difficult to see and detect and the truth is that it would be more difficult more challenging to monetize in terms of licensing and selling and also in terms of keeping it within your own company and that’s likely why many companies opt instead to keep services processes and methods as a trade secret and i’ve got a great blog article and video on the difference between patents and trade secrets and the interplay they have i urge you to visit our website and go to a blog session about trade secrets and learn all about that it’s an excellent piece i wrote that myself so again on services and processing methods this is one area that i do urge many inventors to think hard about whether they want to truly pursue a patent on it because it’s very difficult to monetize the traditional ways to monetize patents are through keeping it within your own company and enforcing patent rights meaning threatening or actually suing infringers the only way you can actually do that of course if you can create a substantive case that they’re infringing and so it goes back to step two is how do you prove how do you detect infringement and get far enough into discovery to actually get to that point where you’re inside their building now and convincing a judge that you would be warranted to do that there’s a lot that has to happen on the litigation side to be able to get that far along and by then you’ve spent what could be hundreds of thousands of dollars in legal fees so be quite a barrier to get to that you know financial gain even if you are correct even if you are in in the right that they’re truly infringing so i hope this has been helpful for you and understanding whether your service is patentable there’s a lot to understand about unpack about patentability detectability and monetization each of those categories has got a lot to more to explore and so as you probably know all my videos i love to sort of back them up with blog articles and so please visit our website at forward slash blog and check out this article on how to dig deep on whether a patent whether a service can be patented and you’ll be able to know a lot more than i just discussed today i’m jd governor uspto patent attorney and managing partner here at bold patton’s law firm it’s my pleasure talking with you here today have a great day everybody 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