To Patent or not to Patent? – That is the Question

You came up with a million dollar idea. Should you bother patenting it? Why? Why not?

A simple reason for patenting is that if you intend to get development funds or to license your invention, you need proof that the invention actually belongs to you and is not already known and in the public domain. Selling your idea to potential investors or licensees without having a patent is like trying to sell the Brooklyn Bridge. No savvy investor or buyer will take you seriously. Worse, the unscrupulous ones will take your idea and commercialize it themselves, leaving you out in the cold with no recourse.

A filed patent, provisional or not, gives you protection by providing you with a priority filing date – but a filed patent is neither a proof of innovation nor a proof of ownership: it is only a document stating that your invention has been filed with the US Patent Office. Nothing more.

An awarded patent is the proof of ownership. It signifies that your invention has been

· examined by the US Patent Office;

· compared with prior art;

· has been found to be original enough to be granted a patent; and

· actually belongs to you.

To be taken seriously you need an awarded patent. Not a search. Not a filed provisional application. Not even a filed non-provisional application. To be taken seriously in any licensing negotiation, you need an awarded patent.

In addition, if you intend to manufacture and sell the invention yourself, having a patent is also a good business move: the federal government has enacted patent law to reward inventors by giving them the right to exclude others from making, using, selling, offering to sell, and importing the invention in the US. A patent lasts 20 years from the date of filing, after which it falls into the public domain.

Patenting your invention is a good idea. But is your invention patentable? To be eligible for patent an idea needs to be useful; it can be a process, a machine, a manufacturing method, a composition of matter, or an improvement on an already existing patent (35USC 101).

Ideas which are not patentable include:

1) Printed matter or music - these are eligible for copyright;

2) Naturally occurring substances except for those which are purified, modified, or genetically selected or engineered.

3) Scientific principles such as E=mc².

4) Aggregate with no functional interconnection or no utility per se, such as a dishwasher with a telephone.

5) Illegal devices or methods.

6) Devices which do not work, for example, perpetual motion machines or time travel machines.

7) Atomic bombs. (Nuclear technology not associated with bombs is patentable and weapons are patentable).

8) Pure algorithms or mental processes. To be patentable ideas must be tied to a material transformation or to a particular machine.

Works of art and architectural designs are eligible for design patents. They may also be eligible for copyright.

Furthermore, to be patentable, your idea needs to be original. An idea used or published by others anywhere in the world is not patentable. Making such determination is difficult since any publication in any language since the invention of writing can be material in patentability. Do not skimp on the patent search. Do the search yourself, for example, using Google Search; then ask a professional to do it again before proceeding further.

Having determined that your invention is patentable, the next step is to draft a business plan to find out if it has any money making potential. This will be the topic of a future newsletter.

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2010 by George Levy