The Intellectual Property Series V

Ashish Vaidya
Published on: October 2012
" you got inspired from 3 Idiots?" asks a friend referring to Rancho - Aamir Khan's character in the movie who is shown to have filed about 400 patents. Well, I was inspired even before the movie came out. By then I already had six ideas refused and seventh one being analyzed - which eventually became my first one to get filed. :)

"The question that matters is", I asked, "What are YOU waiting for to get inspired and do something?" Like most people, my friend did not have an answer to this question. How about you?
the intellectual property,patent
Anyways, let's get back to the intellectual property stuff. "Can such idea/stuff be patented?" is the most frequently asked question she comes across, tells Kellan-IP Counsel at Citrix. I am sure that every patent attorney shares Kellan's experience.

The reason for this question to be asked so much is that it is quite befuddling for an uninformed individual to identify if an idea or product falls into a patentable category or can be classified as "patentable subject matter".

This query is considered as a threshold question because while there are other requirements for the patentability, first thing to consider is whether the product or idea falls under one of the following main categories that constitutes Patent Subject Matter:

a. Machine - a functional item that generally has moving parts which interact and do something.
b. Manufacture - an article that might lack moving parts yet provides a function. For example, a hammer.
c. Composition of matter - a chemical composition that may include mixtures of ingredients as well as new chemical compounds.
d. Process- an act, method or set of steps to do something. For example, softwares fall under this category as they function in a certain way, other example can be the process of creating a drug.
e. Improvement over any of the above - an improvement over a product or process can also be patented. In fact, most patents are for the incremental improvements in the technology which confirms the saying - innovation is evolution rather than revolution.

While common sense is mostly enough to understand and identify if the idea fits the mold of patent subject matter, the case of process and improvement is debatable many times. There, one may need aid from someone experienced and qualified to validate the claim.

If you are able to classify your idea as Patent subject matter, Congratulations! Now you need to just evaluate if your invention meets other requirements for patentability, namely

1. Novelty - Novel or new means that invention should not have been made public in any way i.e. it must not have been already patented elsewhere, described in a printed publication, has been in public use or put for sale in the country. US Patent and Trademark Office (USPTO) allows for submitting the patent application within one year of making the invention public, but most Patent offices don't.
2. Usefulness - It means that the invention has to do something - it must take or constitute the practical form of an apparatus or device to perform its intended purpose. While submitting a patent application, you need to describe what purpose gets served by the invention and how it operates or performs to achieve the same.
3. Non-Obvious - The invention cannot be an obvious derivation from Prior art i.e. any body of knowledge that relates to your invention and includes previous patents, publications, public discussions, trade shows, or public use or sales anywhere in the world. One can't just change color or size of something and ask for a patent. Even if no prior art is found, the invention must be different enough from similar inventions out there. Implementing some functionality of mobile phone in telephone may not be considered patentable. Further, the invention must be non-obvious to a person having ordinary skills in the area of technology related to your invention. For example, your invention in field of computers must be non-obvious to computer engineers who upon knowing about your invention should say, "Wow! Why didn't I think of that?"
Once your invention passes all of these simple tests, you may go ahead and look for an attorney to draft the application and submit it. :) If you are working in a company, they shall take care of getting it done but your idea must be related to one or more of company's products or a field where they may want to venture in future. Otherwise, like four times in my case, company may refuse to take it further because "the invention is good but does not serve them any purpose".

I hope now you are familiar, if not clear with what can be patented. Next article in the series shall be a more interesting one and about what can NOT be patented.

Keep thinking and smiling :)
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