Patenting Strategies for Small Businesses and Individual Inventors—patentable subject matter

There are three types of patents under US patent law: utility patent, design patent, and plant patent.  In this blog, I will be mostly talking about utility patent.  Now, let’s look at the first question you need to answer before you invest more into your invention: is your invention a patentable subject matter?

To qualify for a patent, your invention must fall within one of the statutory patentable subject matters.  According to  35 USC 101, “whoever 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…”  In a nutshell and from a practical point of view, think of it this way:

-          “Process” covers both processes and methods including, for example, methods for making a machine or device, a method for bioengineering a bacteria, a method for treating a disease, a business method etc.;

-          “machine” covers gadgets, machines, devices and systems including, for example, a gun, a molding machine, a bottle, a light bulb, a chair, a hair clip etc.; 

-          “manufacture” usually covers things that can be made by human effort—a component, a chemical compound, a synthetic protein, etc.; and

-          “composition of matter” usually covers mixtures and formulations including for example, a cosmetic lotion, a pharmaceutical formulation etc.   

Under the U.S. patent law, these subject matters are not patentable: laws of nature, physical phenomena, abstract ideas, human, mental process, and inventions that are offensive to public morality.  In a nutshell:

-          “Laws of nature” cover the theorems, equations, and principles in your math, algebra, calculus, and physics books.  These are fundamental rules that the components in the nature follow while interacting with each other; and they are not patentable.

-           “Physical phenomena” cover things that you observe in nature such as a rainbow, a cloud, a lake, a tree in its natural state, electricity, sound, color etc.  For example, you can patent an application of electricity such as a light bulb, but you cannot patent electricity itself. 

-          “Abstract idea and mental process” are a bit tricky—the rule of the thumb is that, if your invention is something one cannot see or touch and you can accomplish your invention with just thinking about it or, at most, using a pen and a paper, it’s likely will fall within the “abstract idea” or “mental process” category. 

Non-patentable subject matter can be a tricky concept.  This is further complicated by the fact that a skilled patent drafter can often turn a seemingly non-patentable subject matter into a patentable one (remember electricity vs. light bulb?).  So, if you aren’t sure, please do check with a patent attorney before you kill you invention.

The above description of the patentable vs non-patentable categories has been super-simplified.  The fact is that companies and inventors are fighting out every imaginable permutation of each of the categories every day with the US patent office and with each other in courts.   The information is only intended to help you to do a ballpark check on your invention.  I cannot stress this enough—if your research indicates that your invention has commercial potential, always check with a patent attorney before you kill your invention for “self-guessed” patentability reasons.

Thanks for reading!

Connie
connie@patentonomy.com

www.patentonomy.com

Patenting Strategies for Small Businesses and Individual Inventors--patent right basics

In this post, I will discuss a few basic concepts in the US patent law.  The discussion in this post will be very minimal and skeletal.  If you want to learn more about US patent law, I recommend you to read a book on basic patent laws (there are a lot of books on the market).  Also, if you really want to know what’s going on, the Manual of Patent Examining Procedure (MPEP) is an excellent resource.  The manual is used by the US patent examiners and is probably sitting on the desk of every U patent attorney (well, I know that I have a hardcopy on my desk, an electronic copy in my computer, and another electronic copy in my iPad—before the burgalrs took it).  Here is a link for the MPEP http://www.uspto.gov/web/offices/pac/mpep/index.htm.  If you have an appetite for reading the black letter laws, there is a link to statutes of the US patent law (United States Code Title 35—Patents) http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf.

First, patent right is a right to exclude; it is not a right to practice the patented technology on the open market.  I notice that inventors tend to think that, if he obtains a patent, he can practice the patented technology freely.  Not so!  Think of it this way—patent right is basically a property right.  Think of “claims” in a patent as a “land deed”—the claims describe the boundary of your intellectual property similar to a land deed describing the boundary of your real property.  If you own a piece of land, you know that you cannot just go ahead and build a house or a shopping mall on the land.  You need to obtain building permits from whatever the government bodies that governs that land.  Well, same applies to your “intellectual property land,” i.e., your patent.  You need permit to “build” from your patent.  If you have a patent on a drug that can cure cancer, you need approval from FDA to sell that drug.  Your patent gives you the right to exclude others from selling the drug; but it is not a permit for you to sell the drug.

Second, keep this in mind—as an inventor, you are entitled to a patent as long as your invention is useful, novel, not obvious, and fits under one of these categories: process (method), machine, article of manufacture, composition, or new and useful improvement of one of the first four.  Article I, Section 8 of the Constitution gives the Congress the power to promote the progress of science by securing for limited times to inventors the exclusive right to their discoveries.  From there, the Congress promulgated the patent law (35 USC).  35 U.S.C. Section 102 states that “a person shall be entitled to a patent unless…”   So, look at it this way—it is your constitutional right to have a patent if you invented something new, not obvious and useful.  Ok, this is an over implication of patent law.  Each of these words in the previous sentence after the “constitutional right” is loaded.  Billions of dollars have been spent and are being spent in courts to fight out what each word mean and billions more will be spent.  My point is that, if you are an inventor, the default by law is that you deserve a patent.  So, get one if you can.

Third, among all the components in a patent, claims define the scope of your patent right.  This statement is theoretically correct but practically incorrect.  Claims are consisted of words.  Therefore, the claim scope depends on the interpretation of the words.  This is where it gets tricky—huge bodies of case laws and various rules and regulations collective try to guide the “interpretation.”  Because the meaning of the words can be vague, the boundary of the intellectual property can be murky too.  This is like drawing a circle with a broad-tip pen.  Where exactly is the boundary of the circle?  Companies often spend millions of dollars in litigation to find that out.

Fourth, the written description in a patent is important.  My second point by no means diminishes the equal importance of the written description in a patent.  It is well-established in patent law that a patentee or applicant is free to be his or her own lexicographer. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999); Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990).  (I promise that I will try to cite as few cases as possible.)  Therefore, the way certain words are defined in the description will affect the interpretation of the claim scope. 

Hope this gives you a basic impression about the US patent law.  I will continue in my next post.

Thanks for reading.

Connie
connie@patentonomy.com

www.patentonomy.com

Patenting Strategies for Small Businesses and Individual Inventors--patentability search

So, you are an inventor.  You have a great idea.  What’s next? Two things you need to research into before you spend more money on your idea are: market research and patentability search.

Do you market research first.  I am assuming that your idea is a solution to a real world problem.  If that is the case, there could be market potential for the idea.  I am no market person. However, if it were my idea, the first place that I would look is internet.  Internet is a rich place for market research.  All these chat rooms, blogs, tweeters, and posts—people talk about everything in their life and every thought in their mind.  If there is a problem, you bet that someone is going to chat about it.  You might be able to find if the problem your idea solves is a common problem, what kind of solution people are hoping for, what are the existing solutions to the problem, and what the shortcomings of the existing solutions.  From there, research into each existing solution to figure out: what are the market size, how much the product is selling for, and what are the improvements/advantages your solution offers.  If you are satisfied that your idea has good market potential, you should then move into patentability search.

Patentability search helps you to decide if your idea is new (using patent term: novel) and not obvious (using patent term: nonobvious) over the existing solutions.  Usually, for the inventors, I suggest that you only make the novelty determination.  Obviousness determination is a tricky patent law concept.  If you think that your idea is novel, you might want to consult with a patent attorney before you kill your idea because you think “it’s obvious” over existing references.

The following are suggested steps in doing patentability search using free databases.  You don’t have to follow the steps or step sequences.  And, remember that you can always hire a patent attorney to provide a patentability search and/or patentability opinion for you.  Attorneys usually use paid databases—so, theoretically, the search results are more comprehensive than the ones you obtain from the free databases.  The end point is that you need to find out as much information relating to your idea as possible so you can decide if the idea is new or not.

First, do a general internet search.  I like to use google (www.google.com) and google scholar (http://scholar.google.com).  Bing (www.bing.com) gives very limited results—the search engine is better for regular internet surfing than for patentability search.  Try different combinations of the keywords for the search.  Try multiple searches.  Patent attorneys all know that keywords selection makes a huge difference in search quality.  Try to think like an attorney--if you were to describe your idea in a patent, how you would describe it and what words and/or word combinations you would use.  If there is a link that looks especially promising, follow through the links—usually the link with lead you to the most related reference.  During the search, you will notice that related search results will coalesce into the references by a few authors or a few manufacturers (if your idea is a specific product). 

Next, search authors’ names or manufactures’ names using common search engines and in the USPTO database.  The search will lead you to more information.  When search USPTO database (http://patft.uspto.gov/), search in both patent application and patent database.  To search an author name, set the “inventor” as the author name and try different combination of the name.  To search a manufacturer name, set the “assignee” as the manufacturer name.  Again, try different combinations of the name.  The search will provide you the patents and patent applications that the author or the manufacturer has filed before 18-months of your search date.  Those patents and patent applications are rich sources of information—you can find out the details of the product designs allowing compare the product designs with your idea.

There a lot of free patent database you can try out.  Some websites have collected free patent databases sites.  Here are a few you can explore:

-          http://www.patentcomplete.com/search.html

-          http://www.library.gatech.edu/search_locate/techres/patentsweb.htm#free

-          http://free.patentfetcher.com/

-          http://www.patentlens.net/patentlens/quick.html

-          http://www.patentlawlinks.com/patsearc.htm

-          http://www.freepatentsonline.com/search.html

-          http://patentscope.wipo.int/search/en/search.jsf

After a few days of exhaustive search, you are satisfied that your idea is new and there is a good market potential for your idea.  This is a good time to talk to a patent attorney.  If you want go a little further before spending the money hiring an attorney, or if you want to do this yourself,  then you need to have a basic grasp on patent law—which I will discuss in my next post.

Thanks for reading!

Connie
connie@patentonomy.com

www.patentonomy.com

Yes, you too are an inventor!

The title of “inventor” often carries with it a hallo of unreachability by common folks.  When we think of an inventor, we often think of Thomas Edison, Alexander Graham Bell, Samuel Morse, or Henry Ford.  We don’t usually think of the modern researchers in the labs, the professors in the universities, and the internet entrepreneurs.  We certainly don’t think about ourselves.

Several years ago, we had a house renovation project.  The workers put up wood window frames all over the house.  The dust generated by the sawing and drilling flew all over the house.  One night, my then 10-year old asked me “why can’t they have an electric drill with a built in vacuum tube?”  He even drew a drill with a built-in vacuum tube extending through the main body of the drill with an opening just under the drilling bit.  That was a great idea!  I told him that I would do a search for him.  If the idea was not patented, I would write and file a patent application for him.  I did a search in the patent database.  It turned out that a patent application covering almost exactly the same idea was filed just over a year earlier and the filing company is Boeing.  So close for a 10-year old inventor!

Yes, I call him an inventor—he saw a problem and came up with a solution to solve the problem—that is the very definition of an inventor.   What about you?  Have you encounter a problem and come up with a solution to solve that problem?  A few years ago, a client of mine became frustrated with her bra strap keeping slipping off.  She came up with a simple decorative clip to keep bra strap in place.  We filed a patent application for her and she started her own company. 

I am a big fan of “Sharp Tank” show.   A recent episode featured a woman who enjoyed a manicure party every Friday with her four daughters.  Tired of assembling bottles of nail polishes, colors, polish removals, and cotton pads, the woman came up with a convenient nail color kit.  The kit has a nail color bottle on top of a screwed-on bottom container; and the bottom container houses cotton pads presoaked with nail polish--a simple and elegant solution for the problem.  The sharks loved it!  So, did I.

In another “Sharp Tank” episode, a mom noticed that her baby daughter became frustrated with the traditional Sippy cup, which usually has a straight and rigid straw and cannot reach the liquid at the bottom of the bottle.   This is a problem that has probably frustrated every parent I knew.  This mom set out to solve the problem: she came up with a Sippy cup having a weighted straw.  The straw will bend and reach the liquid when the baby tilts the bottle.  What an elegant solution!  Unfortunately, there is only a design patent covering the product.  The mom probably should have tried to obtain a utility patent covering a Sippy cup having a weighted straw.  In my next few posts, I will talk about patenting strategies if you have a great idea like this.

These inventors are just a few examples of inventors who are common folks like you and me.  I bet, if you think back about the stuffs that you’ve done, you might realize that you too have a few of these great ideas floating somewhere or prototypes lying around in your garage.  Physically speaking, human species is weak—however, we thrived and dominate all other species on the planet earth.  Why? because we invent to make up for our weakness.  We cannot out ran a tiger—fine, we invent cars; we cannot fly like bird—fine, we invent airplanes; and we don’t have sharp claws and teeth—no problem, we invent weapons that would defeat the sharpest claws in the animal kingdom.  By giving us this incredible creativity, God created us to invent.  We as a species are destined to have researchers who will come up with solutions to awful diseases, the professors who will come up with new energy harvesters, and the internet entrepreneurs who have changed and will continue to change the way we live our daily life. 

We are all destined to invent.  So, yes, you too are an inventor!

Thanks for reading!
Connie
connie@patentonomy.com
www.patentonomy.com