Originally Posted 3/29/07
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Question: Can I get a patent on my idea or invention?
We have observed over the years that many people think that in order to receive a patent a person must invent something earthshaking or of great significance. The truth is that merit, potential and/or groundbreaking significance have nothing to do with obtaining a patent for an invention. The United States Patent Office makes no judgments as to the merit or potential value of your invention. Rather, they look to see that an invention satisfies three basic requirements: (1) utility; (2) novelty; and (3) nonobviousness.
Utility is by far the simplest requirement to satisfy requiring only that the invention serve a utilitarian purpose. In other words, the invention must be useful. Most inventions easily satisfy the utility requirement. Some types of creations excluded from patentability for lacking utility include: creative works, such as music, literature and sculpture; scientific or mathematical algorithms, which are considered to be discovered rather than invented; and purely mental processes, which can be performed solely in one’s mind.
Novelty merely requires that someone else did not invent your invention and disclose it to the public before you. In general, a patent search combined with a patentability opinion is very effective in determining whether an invention is novel. If your attorney believes that your invention isn’t novel, he/she will usually recommend that you do not file a patent application.
Nonobviousness simply requires that the invention not be obvious in light of prior art to someone of ordinary skill in the art in which the invention is to be practiced. Obviousness or the lack thereof is very difficult to objectively judge. Not surprisingly, nonobviousness is the most common hindrance to having the claims in a patent application allowed. Further, it represents the greatest source of disagreement between patent attorneys and the patent examiners in the patent office. An examiner will contend that a claim is obvious, the attorney will respond with a legal argument why it is not, and this may go on and on until one side gives up. Mind you, arguing with the examiner costs money in terms of (i) having your attorney draft office action responses and (ii) continuing the prosecution of the invention. Many attorneys will try to reach an accord with an examiner in a telephone interview after the second and typically final office action has been presented. We will, however, almost always recommend a telephone interview being conducted after the first office action
An obviousness rejection by a patent examiner usually takes the form of two or more prior art references (typically issued patents) that when combined teach all of the elements in one or more of the patent application’s claims. Often, however, the attorney can successfully argue that the combination of the references is not proper even if the two references contain all the elements of the claim. In order to combine references, the examiner must demonstrate that the two references pertain to the same field of art as the subject invention and that there is a motivation to combine the references. Interpreting these legal standards and applying them to the facts of a particular patent application and rejection are not easy and are best left up to a qualified patent attorney. Suffice it to say, just because you think an invention may be obvious does not mean that the invention is obvious in terms of the requirements for patentability. Obviousness as viewed by you is probably based on your common sense and life experiences while obviousness relating to patentability is based on statute and case law. In our experience, the legal standard of obviousness is much narrower than one would imagine and accordingly, can often be argued around to obtain a patent.
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