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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 its novelty, non-obviousness, and utility. You bet. Yeah, no, I’m 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 J.D. Houvener, managing partner and CEO here at Bold Patents 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 something that someone would pay you for? Is it 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 or ten minutes to listen to this, I’ve got some timestamps 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 onto our website, boldip.com, 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 than 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 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 utility, it’s technically going to be eligible, all right, eligibility for what’s patentable. Four main categories of what’s eligible: an apparatus, a device you can touch and feel, 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. And so understanding the minuscule 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 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 a service like legal services, you know, I’m kind of off the cuff a little bit here, you know, delivering, let’s say, an 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. And from there, we like to pursue, 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 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 because we’re asking questions in just the right way, we’re speaking and communicating with our clients on purpose. 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 because we’re going to be able to deliver our best work if we start from a great foundation. And I honestly believe it’s going to help the client 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, 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. 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, 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 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 going to 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 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 used heat treat by the coloration of the metallics or by the way the fastener head or the grip of the fastener thread is in contact with the specific types of mesh. 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 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 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 industry once you have the rights to that invention. 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, boldip.com, 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 financial gain even if you are correct, even if you are in the right that they’re truly infringing. I hope this has been helpful for you in 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 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 boldip.com/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 J.D. Houvener, USPTO patent attorney, and managing partner here at Bold Patents 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 https://boldip.com/contact/