Your invention may just have patent potential. But how can you know?
Remember the last time you solved a problem? Of course you do. The solution was clever, wasn’t it? But was it clever enough to be patented? Let us see what is needed.
Tech-savvy individuals such as engineers, researchers, and scientists, referred to here as “inventors”, routinely produce valuable intellectual property (IP). This is a natural by-product of their work. Managing and safeguarding this IP is crucial, for example to prevent copying by third parties.
Many inventors and companies recognise the patent system as a means to protect IP that takes the form of an invention. This prompts the fundamental questions: what is an invention, and when is one patentable?
Experience reveals that sharp-minded inventors often grapple with these questions, underestimating their idea’s cleverness and overestimating the inventiveness threshold for potential patentability.
Let’s explore together how inventors can think about their ideas through the lens of the patent system. By cultivating the right mindset, inventors can enhance their ability to spot potentially patentable inventions in their work, empowering themselves and / or their employers to leverage IP rights, such as patents, for strategic commercial advantage.
How inventions can be narrow and still patentable
Inventors often have the perception that an idea must be ground-breaking to be considered an invention, perhaps disrupting an industry or opening an entirely new technical field. This is not the case.
Optimisations, refinements, and improvements of a previously disclosed broader concept can be inventions, even if they are rather specific.
It can be helpful to think of inventions as technical solutions to technical problems. In most industries, the journey from an early concept or prototype to a marketable product is a long one. Many technical problems must be overcome on the way.
Problems could include making the product perform a function accurately enough, reliably enough, or quickly enough to meet a need in the market. Other problems could relate to making the product affordable, smaller, or suitable for mass production. Each technical solution to these problems could be described as an invention.
It can be commercially valuable to protect inventions made at any stage through the development cycle. An invention devised towards the end of development may be very specific. However, if the viability of the product hinges on it, there may be a strong advantage in having a monopoly on that invention. Therefore, the spotting of inventions and assessment of their patentability is important at all stages of development. Not just at the early stages.
When is an invention patentable?
The most important criteria for an invention to be patentable is that it must be new and involve an inventive step.
An idea being new simply requires it to be different to the prior art.
The inventive step criterion means that the difference must be more than trivial. It must be clever in some way. On the face of it, this is a subjective test that is open to argument. To assess this criterion in an objective and predictable manner, patent systems typically invoke a fictional legal person called the “person skilled in the art” and ask the question: given the known prior art, would the claimed invention be obvious to that person?
There are, of course many other substantive and formal requirements in play here. A good patent attorney will help navigate these requirements.
The person skilled in the art
When inventors are considering the potential patentability of their ideas, it is important they put themselves in the shoes of the aforementioned fictional person skilled in the art.
This person is skilled in the respective field of technology to which the invention relates. They are good at their job and able to perform routine work and experimentation. They are aware of the general knowledge that would be commonly known to someone in that field (through textbooks, scientific journal publications and so on). The fictional person will also have access to and can understand all prior public knowledge. Language and paywalls are not a problem. The person skilled in the art does not have inventive capacity. This is in stark contrast to a real-world inventor.
Unlike the fictional person, a real-world inventor will have an inquisitive mind and many years of experience making significant contributions to their technical field. An inventor must set aside their individual creativity when considering patentability.
Invention must be non-obvious to be patented
Once in the shoes of the fictional person skilled in the art, the question to answer is whether the invention would have been obvious. This usually involves determining the differences between the invention and a prior art arrangement. Would it have been obvious for the fictional person to modify that arrangement to arrive at the invention? The person skilled in the art can combine prior art disclosures to arrive at the invention if it would have been obvious for them to do so.
There are many factors why it would not be obvious to arrive at an invention. A non-exhaustive list of these factors includes:
- There is a prejudice in the field against the invention.
- The invention is counterintuitive.
- The result of the invention is unexpected or surprising. This might be the case, for example, if the invention is significantly more effective than would have been expected.
- The invention has some disadvantage (e.g. adding complexity) but it has been found that the advantages of the invention outweigh that disadvantage.
- The problem solved by the invention is new and not obvious. Sometimes the identification of the problem contributes to inventiveness. This might be the case in immature fields of technology.
- There was a long-felt need for the invention. This could be coupled with evidence of commercial success of the invention.
- When differences between the invention and a first prior art disclosure are taught in a second prior art disclosure, the invention can still be non-obvious:
- If the skilled person would not turn to that second prior art disclosure, for example because the second prior art document is in a different technical field.
- If the teaching of the second prior art disclosure is not compatible with the first prior art disclosure.
- If the arrangement disclosed in the first prior art disclosure would require substantial and non-obvious modifications to include features from the second prior art disclosure and / or the modified arrangement would no longer work as intended.
- If the first prior art disclosure teaches away from the invention.
- If there is still a missing feature even after combining the first and second disclosure.
If one or more of the above factors applies to an invention, then it may be non-obvious.
Avoiding hindsight with inventions
One common challenge in assessing non-obviousness is avoiding hindsight bias. Inventors often fall into the trap of assuming that, because they have successfully created something, it must have been obvious all along.
It is essential to evaluate the invention based on the knowledge available at the time of filing the patent application. For example, with the benefit of hindsight, it is easy to forget or dismiss that there was a prejudice in the field against devising the invention.
It is important to think about what would (not could but would) have been obvious to the fictional person skilled in the art. For example, it may be that, with hindsight, an invention could possibly be arrived at by combining two prior art disclosures in unrelated technical fields. But that does not mean that this is a combination that the person skilled in the art would have made.
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Embracing the patent mindset
By embracing the correct mindset, an inventor or decision maker in a company should be able to spot potentially patentable inventions, whether the invention is in relation to early blue-sky research or a late-stage refinement to a concept to get it ready for market launch. Thinking about inventions as technical solutions to technical problems can help broaden what is considered to be an invention beyond ground-breaking concepts. Assessing the obviousness, and so patentability, of inventions through the eyes of the person skilled in the art, without hindsight, enables inventiveness to be judged objectively.
It is important that companies establish and maintain robust processes for reviewing their generated IP, including inventions, as part of a robust IP management policy. These processes should be continuous as IP can be generated at all stages of developing a concept, not just at the start. Companies should consider providing IP and / or invention spotting training to their employees and implement procedures in which employees can report their inventions for consideration for patent protection. Even if a patent application is not filed, it may be prudent to protect the IP in some other way, for example as a trade secret, or by filing a defensive publication.
Onsagers go beyond conventional patent drafting and filing services by additionally providing IP consultancy services. This can include aiding companies establish internal IP management processes. Onsagers can also run invention spotting exercises, perhaps as part of a more general IP audit.