Meet Legal Requirements, Consider Returns When Considering A Patent

But when can you file for a patent? And what’s more, when should you? With a basic understanding of patent issues, you will be better situated to make the right decision for your business.

Five legal requirements to obtain a patent

In return for public disclosure of an innovation, the government will grant patent holders exclusive rights of control, including the ability to stop others from making, selling, distributing or using the invention without permission.

There are several types of patents, but those that apply to a product or process are the most relevant for most types of businesses. For a product or process to be patentable, it generally must meet five criteria. The first is that the subject matter is patentable. It is not a difficult hurdle to clear: almost anything manmade is considered patentable subject matter.

The second requirement is utility. The invention must serve some purpose; it must be useful. An assertion of utility will be presumed correct unless the Patent and Trademark Office shows that someone of ordinary skill in the applicable art would reasonably doubt the utility of the invention.

The requirements of novelty and nonobviousness are somewhat related, and may be more challenging to meet. In all fields, but especially in the tech industry, new innovations are built on the shoulders of previous inventors. Therefore, few patented inventions are completely original under the ordinary meaning of that term. Even so, an invention meets the novelty requirement if it is “new” in the patent context: it is not be identical to a prior art. Another way to think of novelty is this: if a product or process would infringe on a prior inventor’s patent, it is clearly not novel.

Nonobviousness is another question of previous inventions. If a person with some knowledge about the subject matter were to look at the invention and consider it to be something already known, producible by consulting several sources, it is obvious. The primary difference between novelty and nonobviousness is that if someone skilled in the art could look at one reference and reach the invention, it is not novel, but if it took several references, it is obvious.

The final requirement is adequate description. To meet this requirement, the applicant must describe the invention in sufficient detail in the patent application such that someone skilled in the art could use, make and understand it.

Is a patent worth the investment?

After you have determined whether an invention can be patented, you should next ask yourself whether it should be patented. Patents can be extremely lucrative, but they can also be very expensive to procure. Is the type of invention you are considering patenting something that could be easily monetized? Does it have the potential for a large return on your investment? Is it an innovation someone else may reach soon, “beating you to the patent” if you do not move forward? If you do obtain a patent, do you have the resources to subdue infringers in court with an action for intellectual property enforcement?

If you have determined your innovation is patentable, and represents a good investment, you should ensure the strength of the patent with the help of an experienced intellectual property attorney. The right attorney can ensure you meet the legal requirements of patentability, and structure the patent in a way that maximizes your competitive advantage in the marketplace.