Idea Patentable
Entrepreneurs often ask whether their idea can be covered by a patent?

The United States Patent and Trademark Office (USPTO) issues patents to U.S. inventors, granting them exclusive rights to make, use, sell, and manufacture their invention for a limited time in exchange for a public disclosure of their invention.  The U.S. patent system is not a registration system- rather, applicants must meet certain requirements in order to obtain a patent.  As a startup company, obtaining patent protection on your idea is valuable as you can prevent others from using your invention, and thereby diminish your competition.  So is your idea patentable? This post aims to help inventors preliminarily assess whether or not their idea is patentable.

What you can patent

The USPTO issues three types of patents: utility, design and plant patents.  Utility patents are available for new and useful machines, articles of manufacture, compositions of matter or any improvements thereof.  Utility patents are the most commonly issued type of patent and include patents covering software programs and business methods (at least for now).  Two popular examples of these types of utility patents include Amazon’s one-click purchase patent (US 5960411) and Google’s page rank process (US 6285999).

Design patents are available for the ornamental design of a functional product.  This type of patent is valuable if the design of your product gives you an advantage over corresponding items sold by competitors.  One design patent that has been in the news recently is the design patent for the iPhone, US D615083.

The third type of patent the USPTO issues is for newly invented strains of asexually reproducing plants.  While these types are patents are less common, they are still quite valuable to players in the agricultural business who often patent genetically engineered seeds.

What you can’t patent

Note what is missing from the categories listed above- things found in nature.  This is because only man-made inventions are patentable. The government is unwilling to grant exclusive rights over things found in nature to one person as these things  should be available to all.  But also note that physical phenomena, abstract ideas, and laws of nature are not patentable even though they are derived by man. For a recent example of the U.S. Supreme Court invalidating a patent for ineligible patent matter, see Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The Court held that patents directed toward a method of giving a drug to a patient, measuring metabolites of that drug, and deciding whether to increase or decrease the dosage of the drug, were not patent eligible subject matter.  Rather the court stated that these claims only described and applied a natural phenomena.

Patents are also not issued for obvious variations of old ideas.  Therefore if your new idea simply involves an obvious improvement of something found in the prior art the USPTO will not issue a patent.  The prior art can include any publication, event or general knowledge that demonstrates the idea is not new or is obvious.

In order to obtain a utility patent, certain requirements must be met.  First of all, you must have invented the matter for which you are seeking a patent.  A patent cannot issue in your name if you derived the idea from someone else.  Similarly, if your idea was known by the general public, or was disclosed in a patent or printed publication anywhere in the world prior to your filing a patent application, you may be barred from receiving a patent on the invention.  Another patentability bar is triggered if you offered to sell your invention more than one year before you filed an application.

Finally, you should be aware that in order to receive a patent on your invention, it must be reduced to practice.  That is to say that you have to be able to provide enough written support for your invention so someone equally skilled in the field of your invention would be able to make and use the invention.  This requirement comes from the fact that in order to receive an exclusive monopoly on the idea, in return you publically disclose enough detail about your invention so that once the monopoly expires (usually in 20 years) the public can practice the invention.  This requirement is how the USPTO prevents people from prospectively reserving rights to an invention that is not yet completed (e.g., patenting a time machine).

In some countries (including the U.S. as of March 16, 2013) patents are granted to the applicant who first files their application at the patent office. This means that if someone beats you to the patent office with an application for the same invention (that you each separately and individually invented around the same time), you will not be able to patent your invention.

While the requirements for patentability may seem stringent, don’t worry your business will fail just because you don’t have a patent.  Many businesses succeed in the marketplace without patents because they are able to offer a better or cheaper product.  Alternatively, some businesses succeed because they are able to protect their idea with other forms of intellectual property, such as trade secrets and copyright.   Trade secrets include processes, practices, formulas and other proprietary information not known to the general public that give their owners competitive advantage.  Trade secrets are legally protected under state law.  If your business involves original written works, music, or videos, copyright protection may be the way to go.  Copyright grants creators of original works exclusive rights to copy, perform, distribute, reproduce, or creative derivative works.  Note that copyright does not protect ideas, concepts, systems, or methods of doing something.

For more information on which type of intellectual property will best protect your business idea visit the USPTO’s website, or talk to a local patent agent or intellectual property attorney.