Now that you have your idea, that you have done the market research and identified the US market as having the greatest potential, it is time to protect it. But is it really patentable under a utility patent? You could waste a lot of time and money putting a product on the market that can not be protected. Worse, a competing company could simply copy you and release a similar version at a lower price. For all these reasons, today we will explore what is patentable and what is not patentable under the United States Patent Trade Office (USPTO) rules.
We will begin by presenting the 4 criterias of patentability, namely:
- Statutory class – In which class can your innovation be categorized?
- Useful – Is your innovation useful?
- Novelty – Is there an innovation similar to yours elsewhere in the world?
- Unobviousness – Would someone specialized in the field of your innovation have thought about it?
An innovation must meet these 4 criterias in order to be considered patentable. All of these criterias come from the excellent book Patent it yourself – Your step-by-step guide to filing at the U.S. Patent Office by David Pressman. I recommend it!
The opinions expressed herein should not be considered in any way as legal advice. For more information, please consult your patent agent or patent attorney.
1- Statutory class
The statutory class is a category in which an innovation must fall into to be considered patentable. If your innovation does not fall into one of the 5 statutory classes, your patent application will be rejected. Here are these 5 classes:
Process or method
A process or method is a way to manipulate real matter and transform said real matter. Thus, shuffling theoretical or abstract ideas is not considered a process per patent law. Be aware that these manipulations can be manual and considered acceptable. For example, a new way of holding an umbrella handle to reduce hand fatigue during strong winds would be an acceptable method.
A machine is an equipment used to perform a task. Thus, a machine can be powered by human muscle (a manual can opener) as well as by another source of energy (an electric can opener). The machines are classified into 2 categories:
A) Conventional machine
In the general sense, almost any equipment or tool that performs a specific task will be considered a conventional machine.
B) Software machine
An example of a software machine would be a control system of a manufacturing process. Indeed, sensor data and actuator controls help regulate the manufacturing process, so this system helps to manipulate and transform real matter. Thus the machine statutory class requirement would be met.
Article of manufacture
It may be thought that an article of manufacture is only an industrially produced object, but handmade objects are also acceptable. Any object that exists in its primary form in nature is not considered an article of manufacture. For example, rocks, air or water.
Composition of matter
These are chemical compounds in the solid, granular, powdery, liquid or gaseous state. As an example, a new and unique bituminous mix would be fall in the composition class. At home, a spaghetti sauce would be fall in the composition class as well.
New use of one of the four previous classes
Here, the creativity does not come from a new process or machine or article of manufacture or composition of matter, but rather a new and purposeful use of what already exists. For example, an inventor received his patent after using an industrial vacuum to suck prairie dogs out of their holes!
To be patentable under a utility patent, an innovation must be useful. Remember that a utility patent is valid for 20 years in the United States, as in Canada.
If the innovation is not useful but of original design, it can still be protected under a design patent, valid for 14 years only.
There are several exceptions, including these two:
- A drug dangerous to health is not patentable.
- An innovation created for criminal motives is not patentable.
Of course, your innovation must be new. This is one of the greatest dangers of the innovator, that is, to fall in love with his product. Love makes you blind, as the old saying goes. Thus an innovator who does not perform a prior art search may spend a lot of money and time creating a product that already exists.
The prior art refers to all that has already been invented in the world, protected or not by a patent in force or expired. Thus, a product invented on the other side of the planet or 200 years ago will prevent you from obtaining your patent.
Pro Tip: Before going to a patent agent or intellectual property attorney, do a prior art search yourself! To do this, I recommend using Google, Google Image, Amazon, AliExpress and Alibaba to get an idea of what exists around the world.
This research is no silver bullet, but it will quickly give you an excellent idea of the existence of a similar innovation. This search will allow you to find similar products, competing products and the companies that produce them. Moreover, this research will allow you to expand your market research. Best of all, it will become a starting point for the prior art research for the patent agent or patent attorney. Not to mention the money you will save! More about the prior art search in another blog post!
Bonus Pro Tip: Again, do your own research with Google Patents and the USPTO database in the US and Canadian Intellectual Property Office or OPIC database.
Start by brainstorming as many words as you can about your innovation. Then enter each of these words and combinations of words into the USPTO and CIPO search engines. Each search will give you a set of related classifications and patents. Finally, you must check whether these classifications and / or patents are related to your innovation or not. It is a long and tedious process, but it will save you a lot of money!
More about using the USPTO and CIPO databases in another blog post! Same thing for searching through Google Patents!
Hands down the most difficult hurdle to determine the patentability of an innovation.
According to USPTO statistics, nearly half of patent applications are rejected because of this criteria.
According to the law, innovation must be unobvious to a hypothetical specialist working in the field of your innovation. He is an engineer or designer with average intelligence and creativity, but having the knowledge of everything that has been created in his field of expertise.
At the sight of your innovation, he must slap his forehead saying: Why the heck didn’t i think of that!
Judgments in court often refer to the unobviousness criteria as a flash of genius and whose innovation produces unusual and surprising results. The idea here is to reward the creativity of men and women who, through their efforts, help the human race move forward.
Before starting out, it is better to double check that an innovation is patentable. The patentability of an innovation must answer the following questions:
- Does the innovation fall into one of the 5 statutory classes?
- Is innovation useful?
- Is the innovation new compared to the prior art?
- Is the innovation unobvious to a specialist working in this field?
If you answered yes to these 4 questions, let me congratulate you! You have taken another step on the long road to bring your innovation to market. By doing your own research of prior art and patentability, you can confidently present yourself at a patent agent or patent attorney office. They will be strongly impressed by the seriousness of your approach and the strength of your case. Not to mention that the money saved can be reinvested as starting capital!