Inventors are key players in the patent prosecution process. Understanding the importance of disclosing certain types of information in a patent application might increase your chances of obtaining that patent, as missing crucial information can drastically decrease your chances.
Thus, if you are an inventor interested in protecting your invention in the U.S., then you should familiarize yourself with the following basic concepts related to patent law:
1. Prior Art Search
In order for an invention to be patentable, the invention must be new or novel. A way to determine if your invention is new is by conducting a prior art search. Prior art refers to any reference, public knowledge or event (e.g. patent, printed patent application, magazine article, presentation, consumer product, etc.) that shows the invention is not new. If extremely similar prior art is found, then filing a patent application might not be the best or most practical option. If somewhat similar prior art is found, then said prior art should be considered when drafting the patent application. A prior art search provides you with an idea of what is out there and allows you to make an informed decision.
2. Patentability Requirements
The subject matter of your claimed invention must meet the following requirements to be subject to patent protection:
Patentable subject matter The invention may be a machine, process, article of manufacture, or a composition of matter. However, laws of nature, natural phenomena, or abstract ideas are not patentable.
Usefulness An invention is "useful" if it provides some identifiable benefit and is capable of use.
Novelty The invention must be new; therefore, the public must not know about said invention before the filing date of the patent application, or before its priority date if the applicant claims priority of an earlier patent application. An invention that is not new or novel is an invention for which a single item of prior art discloses all features of said invention. If the invention is not new, then it is considered to be “anticipated” by the single prior art.
Non-obviousness The invention must be non-obvious in view of the prior art. In other words, the invention must not be taught or suggested by the prior art. The non-obvious requirement is the most crucial element of patentability. Even if a single item of prior art does not explicitly disclose all the elements of the invention, a patent may be denied if a combination of prior art references produces the claimed invention.
Adequate description The invention must be described in such terms that one skilled in the art can make and use the claimed invention. The patent application must also include the best mode contemplated by the inventor of carrying out the invention and at least one claim.
3. Types of Patent Applications
There are three types of patent applications: provisional application, non-provisional application and design application. However, only non-provisional application and design application may mature into a patent. A provisional application provides the means to establish an early effective filing date for a non-provisional patent application to be filed later. A non-provisional application may mature into a utility patent and a design application may mature into a design patent. A utility patent protects the way an article is used and works, while a design patent protects the way an article looks. The type of patent application filed will depend on multiple factors, such as type of invention, timing of filing, information available, etc.
Under the “First-to-File” doctrine, priority is given to the first applicant who files for a patent application to protect the invention, and not to the first person to invent said invention. This means that the first person to file a patent application has the right to the grant of a patent whether or not he or she invented first. Therefore, there is a risk in waiting too long to file for a patent application.
5. Trade Secret vs. Patents
Patents and trade secrets present two very opposite alternatives to protect an invention. Patents can only be protected through public disclosure. In contrast, trade secrets are legally protected based on their inherently secret nature. As such, many factors should be considered when determining which one would be the best option, including if the invention can be reverse engineered, if the invention will be useful in 20 years, and if the invention meets the patentability requirements.
We’ll be discussing each of the above-mentioned concepts individually in upcoming posts.