I frequently get asked questions like "How can I protect my new product – it’s just an improvement to something that has been around for a long time?"
There are a number of different factors which we take into account when working through the IP issues for a specific product or across a business. However, a good starting point is to understand what features are commercially important and will provide a competitive advantage in the market. Therefore, I often approach questions about the protectability of an invention by trying to understand the new product and why it was developed. What is driving the development; is it customer demand for certain features, problems with the existing product(s), or to position the product as an innovative industry leader?
Once we have this information then we can focus in on the features which are crucial to its competitive positioning. This is where the interesting part begins.
Many times, an invention is a combination of several previously known features. Provided that combining these features together is new, then the invention will clear the first hurdle for patent protection.
The bigger issue then is to determine whether the invention is inventive over what was already known. I approach this issue by asking why no one has combined the features together before. This helps us to identify technical barriers which the inventor has had to overcome to produce a working product. These help to flag areas where the invention will often lie. In addition, this discussion will help us to tell the story of why a particular product is inventive by focusing on the problems which the development team had to overcome to produce a working product.
Many inventors down play their contributions. This could be due to modesty and/or the benefit of hindsight. Therefore, a useful question is “if this was so straightforward, then why did it take so long to complete the research project?”. The answer is often one filled with technical issues that had to be overcome, or the need to investigate alternatives, better materials, alternate suppliers etc. This is all information which flags where an invention may lie.
In dealing with inventors and scientists I’ve found that the following comments can be useful to help guide their thinking about protectable features of an invention:
- Stop thinking everything relating to a specific project is known or obvious. It only is to you because you’re in the middle of the project, have already developed the solution, and are a world leader in this area of design.
- Start by looking at the areas you needed to focus on to make a product work in this application as opposed to the earlier variants.
- Consider why your partners/customers needed you. If a competitor could easily have developed the same solution then there’d be no need for you to develop this product.
- If you want to identify what is patentable, start by creating a list which combines different features to describe a product or process that is new. Your list should start with a functional definition of the known product/process, and then add in the new things you’ve added to the existing product (preferably ranked in order of importance).
We can then use the information/answers as the basis of a discussion on protectability. It will also help to guide a discussion on the issues such as technical problems which support that the invention is inventive.
When assessing protectability it is important that you do not jump a head of yourself and assume an invention is not patentable. Care should also be taken to ensure you d not fall into the trap of assessing protectability with the benefit of hindsight once the invention is sitting in front of you.
Approaching the protectability of an invention in this manner can also clarify the value of investing in protection. For instance setting out the new combination of features methodically will indicate what a patent claim will look like, which is important as that claim will define the scope of any patent protection. The scope of protection can then be easily compared to which feature(s) will provide an advantage in the market place.
Breaking down the issue of protecting an invention into its component parts will help simply the process of determining how it can be protected and whether to invest in that protection.