FLYNN THIEL  BLOG POST
  • Edu Enin-Okut

Do I need a patent?



To begin to answer this question, you should familiarize yourself with what a patent is, who can get one, and if you decide that you need a patent, how to get it.

A patent allows its owner to prevent others from using, making, and selling an invention protected by it, within the jurisdiction of the government who granted the patent, for a limited period of time. The patent contains a description of the invention and a set of claims that legally define the scope of protection the patent provides. The government granting patent protection to the invention does so as an exchange. The inventor provides a disclosure of the invention made available to the public to serve as a “springboard” for other innovation, and in exchange for disclosure, the governmental authority provides marketplace protection via the patent.

Here in the U.S., the United States Patent & Trademark Office (USPTO) reviews applications made for patents. Either the inventor, or the entity an inventor is employed by (e.g., a corporation), can apply for a patent. Timing of the filing of the application is simply, in a best-case scenario, as soon as the inventor fully understands the invention and how it is made and/or used.

Upon examination of the claims in an application, if the USPTO determines that the invention is patentable, the applicant will be granted a patent. How is this determination made? Patentability of an invention is determined via Title 35 of the U.S. Code (35 USC). In particular, the applicant must show that the invention is an eligible process, machine, manufacture, or composition of matter (35 U.S.C. 101); novel (35 U.S.C. § 102); and non-obvious (35 U.S.C. § 103).

To determine if the invention of a patent application is novel and non-obvious, a search is conducted to identify references that describe all, or parts, of the invention as it is claimed in the application. Generally speaking, if a reference both describes all of the elements described in the application’s claims and was available to the public before the filing date of the application, the invention is not patentable under 35 U.S.C. 102 because it lacks novelty. However, even if the invention is found to be novel, references can be combined to demonstrate that the claimed invention would have been obvious to the ordinary, skilled artisan. That is, if two or more references available to the public before the application’s filing date, by means of their combination, describe all of the elements described in the application’s claims, and can be combined as they are in the claims, then the invention may not be patentable under 35 U.S.C. 103 for being obvious.

The statutory requirements of these federal statutes can be likened to “hurdles” to be cleared by the invention described in the application. If the claims of the application clear all of the hurdles, the USPTO will grant a patent that can be used in a variety of beneficial ways for the patent owner.