Prior Art and Patentability Searches

A basic requirement to obtain a patent on an invention is that it is new and non-obvious. These requirements involve looking at the prior art. Prior art is broadly described as everything that exists and is publicly available as of the date the patent application is filed.

Prior art may consist of documents, such as published patents or applications, research papers, journal articles, or conference presentations. However, documentary prior art does not have to be formal. An Internet posing or YouTube video could constitute prior art. Prior art also captures products offered for sale to the public.

Understanding what the prior art is helps evaluate whether your invention is likely to receive patent protection. This review is accomplished through a prior art search. You can also contact a patent professional who can perform a detailed search of the prior art and give you an opinion on patentability prior to investing the time and effort into pursuing patent protection.

Patent Profitability

A key choice in your intellectual property strategy is how you will use your intellectual property to increase the value of your business. If you choose to pursue patent protection, there are several methods to drive value with your patent(s).

If you plan to make and sell the invention yourself, then your strategy will likely include enforcement. Patents provide an exclusive right (for a limited period of time) to make, use, import, and sell the patented invention.  This means that you can sue other businesses who put infringing products on the market. This method protects a value stream from sales but carries the costs of identifying infringers and the cost of lawsuits to enforce your rights.

You may also choose to pursue a licensing model, where you grant others the right to use your patent in exchange for a royalty. A strong set of licensing arrangements can lead to greater revenue streams, but licenses should be carefully crafted to protect your rights and ensure you obtain a fair deal.

In some cases, a patent can be used as leverage to drive investment or acquisition of your business. Investors are likely to see a patent as a valuable business asset and may be encouraged to invest additional capital, allowing you to scale. Larger companies may also find your patent valuable enough to buy your business to expand their own operations.

A strong intellectual property strategy will optimize multiple uses of your patent to build value for your business. You should not just consider whether you can patent your invention, but also what you will do with a patent once it issues, to ensure that the costs and drawbacks associated with seeking patent protection are justified by the potential economic upside.

Patent Novelty and Non-Obviousness

Patents can only be issued for new and non-obvious inventions. While these requirements seem similar, they are two distinct tests. Each requirement requires the examiner to compare the claims in the patent application to the prior art. Prior art consists of anything that is publicly available, such as patents, research papers, or products on sale.

Novelty requires that your exact invention not already exist. A claim will be rejected for lacking novelty if the examiner finds a single piece of prior art that demonstrates each and every element of a claim in the patent application. If you can show that your invention is even slightly different than the cited prior art, then you can typically overcome a novelty rejection.

Non-obviousness is the most difficult hurdle in obtaining a patent. A patent will not be issued if a person skilled in the field would look at all the prior art related to the invention (and all the other knowledge in the world) and come up with the invention as an obvious combination of things that already exist. While this sounds like a challenging test, there are many ways around an obviousness rejection, such as demonstrating that the invention has unexpected characteristics.

When looking at novelty and non-obviousness, the important thing is demonstrating how your invention is different than what is already out in the world. You should focus on identifying the differences in your invention from the prior art that will result in you obtaining a patent.

Patents v. Trade Secrets

A major decision in your intellectual property strategy is whether to protect an asset with a patent or as a trade secret. Both forms of protection come with their own advantages and disadvantages, and they are largely mutually exclusive.

A patent requires filing an application and approval of the application by the United States Patent Office before you obtain patent protection. You must disclose your entire invention to the public (because patents are public records accessible to anyone) to obtain a patent. A patent is valid for a period of twenty years from the date you filed the patent. You can assert a patent to stop someone from making, using, or selling your invention anywhere in the United States, even if they developed the invention without knowing about your patent. A patent cannot be lost without going through a formal process such as a lawsuit or certain Patent Office proceedings.

A trade secret, generally, is any information, invention, or process that provides independent economic value to your business from being kept secret by your business. Trade secret protection exists from the creation of the invention and continues as long as it remains subject to efforts to keep secret (for example, the Coca-Cola formula is a trade secret that has been kept secret for over a century). No formal application is necessary to create a trade secret, although there are certain steps a business can take to help solidify and ensure trade secret protection (from contract language, to data security mesaures, and more). However, a trade secret can be lost if it ceases to be a secret. This requires you to take steps to protect the secrecy, including proper employee training and the use of non-disclosure agreements. You also cannot successfully assert a trade secret against someone who came up with the same invention by reverse engineering yours, or if they came up with it independently.

You should consider whether your intellectual property strategy is better served by keeping a trade secret or applying for a patent. There are often ways that you can employ both, such as by patenting a product but retaining the process to manufacture it as a trade secret.

United States Patent Prosecution Basics

What is a Patent?

A patent can be obtained on an invention, which can be either a functional thing or a process of doing something. Before you consider getting a patent, it is important to understand what a patent is and is not.

A patent is not a right to make, use, or sell the invention. You don’t need a patent to build your invention or launch your product to consumers. However, if you release your invention to the world, you risk letting others copy it and undercut your business.

A patent is a right granted by the government to prevent anyone else in the United States from making, selling, or using the invention. You can also use a patent to prevent someone from importing products covered by the patent into the country. A patent is a right to exclude others from profiting from the invention without your permission and protects against competitors copying your invention. 

Is a Patent Right for Me?

So you’ve invented something, and now you’re wondering if you should get a patent for it. Having a patent can be a valuable way to protect your invention (and your business), but you should decide whether a patent is the best choice for you before you start down the road to obtaining one.

First, you must consider whether a patent is the right type of intellectual property for you. A patent can generally be obtained for any “process, machine, manufacture, or composition of matter.” More plainly, a patent protects functional things and methods. If what you have come up with is more like a brand name or identity, then you likely want to explore trademark protection. If what you have come up with is a creative or artistic work, or computer code, then you likely want to explore copyright protection (thought design patents can be obtained for certain non-functional features). 

Then, you should consider the likelihood of getting a patent. To obtain a patent, your invention must be useful, new, and non-obvious. You should consult with a patent professional to evaluate the likelihood of success for your particular invention.

Patent Process Overview

The patent process has several distinct steps. First, you’ll typically work with your patent professional to draft the application. A good application should be highly detailed and cover everything that you are seeking to protect.

Once your application is submitted to the US Patent Office, it will be assigned to an examiner skilled in the field of your invention. However, there are far more applications than examiners, and it will likely be almost a year before you get your first office action (unless you take action to expedite). 

An office action is the examiner’s response to your application. Most likely, your application will be rejected the first time. This is normal. Once you receive your first office action, you will work to respond to the examiner’s arguments and overcome the rejection.

For many applicants, their application is approved after this response. However, it may require several rounds of office actions and responses before your application is allowed, if it is eventually allowed at all.

It is important to keep in mind that the examination of a patent can often take years, and you should consider this timeline in building your IP and business strategy.

Priority and Provisional Patents

In patents, as with much of life, timing is everything. The United States operates on a first-to-file system, where the first person to file a patent application on an invention gets the patent. This means that even if you invent something first and keep it hidden in your garage for years, someone else can patent your invention if they file first.

Another important timing consideration is that the patent office evaluates whether your invention is new and non-obvious based on everything that exists as of your filing date (the “prior art”). This means that by filing earlier, you can reduce the pool of material that can be used to reject your patent.

One of the best tools for protecting your rights is the provisional patent application. A provisional application effectively holds your place in line by fixing a filing date for all the content in your provisional application on the date you file it. However, you must file your full utility patent application within one year of filing your provisional to claim the benefit of the earlier filing date. Only the content that was filed in the provisional application gets the benefit of the early filing date, so your provisional should be as complete as possible. As an extra benefit, you can mark your products “Patent Pending” once you have a provisional application on file.  

Provisional vs. Utility Patent Applications

To optimize your patent strategy, you must consider the different options available to you. The most common type of patent is the utility patent, which covers almost all types of inventions. There are also design patents for ornamental features and plant patents for plant varieties, but these do not feature heavily in most people’s patent strategy.

A utility patent application must contain a complete description of the invention that would allow someone to make or use it by reading the patent. Part of this description should be drawings or descriptive figures of the invention. The utility patent application must conclude with claims, which are the formal description of your invention and define your scope of protection. The utility patent application is what will be examined and ultimately issue as a patent.

A provisional patent application has fewer requirements and several strategic advantages. A provisional application should contain as much description as possible and may include drawings. However, it is not required to contain claims. A provisional application is never examined or published and will not result in an issued patent. Nevertheless, it can be a powerful tool to obtain an earlier filing date and give you an additional year to refine your invention before filing a utility patent application.

What Are Patent “Claims”?

While a patent may be dozens of pages, the most important section is the few sentences at the end known as claims. Claims are formalistic descriptions of the patented invention and must include all the components of the invention and how they relate to each other.

The claims define the scope of protection granted by the patent. To win an infringement case, you must show that the allegedly infringing product embodies each and every element of a claim in your patent. If there is an element missing, then the other product does not infringe your patent. Because of this, a strong patent will have multiple claims that expand the scope of coverage to the maximum extent possible.

Because well-drafted claims make the difference between a powerful patent and a useless one, the initial claim drafting is a critical step in the patent process.