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Navigating Patent Laws

What Can I Patent?

In order to obtain a patent in the United States, your invention must be: A process, a machine, a manufacture, or a composition of matter. These are further defined in the patent regulations:

  1. Process: A mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.
  2. Machine: A concrete thing, consisting of parts, or of certain devices and combination of devices.
  3. Manufacture: A tangible article that is given a new form, quality, property, or combination through man-made or artificial means.
  4. Composition: A combination of two or more substances and includes all composite articles.
  5. Novel or new—not covered under an existing patent.

This is referred to as the two-part test and it’s used by the USPTO to evaluate the validity of the inventions under review.

What Can’t I Patent?

The fact that your invention must be

a process,
a machine,
a manufacture, or a composition

of matter might seem a bit restrictive, but inventions tend to fall into the broad definitions of one of those categories. It also may seem like you have to physically develop a prototype to obtain a patent, but that’s not the case. You can patent designs for an invention or process whether or not you’ve actually made it or implemented it. With that said, not everything can be patented.

Abstract Ideas

Because the courts recognize that the availability of basic concepts are important to the furtherance of knowledge and invention, inventors may not invent an abstract idea. Inventors can, however, patent an application of an abstract idea. For example, no one can obtain a patent for space travel, but they can get a patent for a particular type of rocket.

Laws of Nature and Natural Phenomena

As is the case with abstract ideas, the USPTO does not issue patents for the laws of nature, natural phenomena, or the products of nature. Natural occurrences, like light, sound, and gravity can’t be the subjects of a patent application, but flashlights, speakers, and jet packs can.

How do I get a Patent?

If you believe that you have a proprietary invention that isn’t similar in design and function to something that’s already been invented, and it qualifies as eligible subject matter, you can apply for a patent. Here are a few questions that you should consider before submitting your application:

  • Provisional patent application, non-provisional patent application, or both?
    • Once you file a PPA, the clock starts ticking for your protection. You’ll need to at least submit your NPA in a year’s time or your invention will be unprotected.
  • Should I Hire a Registered Patent Practitioner?
    • The U.S. Patent and Trademark Office has a registration process for attorneys who represent inventors and companies in their pursuit of patents. Applying for a patent and obtaining one is a rigorous, confusing process, and it’s recommended that you hire a patent lawyer to cut down on the possibility of mistakes delaying or sabotaging your application. Anything you discuss or show your attorney is covered under attorney-client privilege, and all effective patent lawyers recognize the need for secrecy with regard to inventions.
  • What’s the Marketability of My Invention?
    • Just because you have an idea for something novel doesn’t mean that it will have financial value. You should try to determine how you intend to monetize your invention as early in the process as possible.

Your Role in the Process

Source: USPTO – Ownership/Assignability of Patents and Applications

You don’t necessarily have to be an inventor to obtain a patent. The law recognizes several categories of applicants:

  • Inventor – The inventor can be a person, team, or a corporation, but the inventor is the entity responsible for the creation of the invention.
  • Owner – The inventor doesn’t automatically own the right to the product or patent. In many cases, an inventor is working for an employer who legally has the right to anything invented by that employee.
  • Client – If the inventor is in the employment of the client, the client will generally have contractual ownership of the invention if it’s within the scope of that legal arrangement.

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