September 7th, 2016

Can You Patent an Idea?

Can I get a patent for my “idea?”

Clients sometimes ask us whether it is possible to get patent for his/her “idea.” The word is somewhat too vague to warrant a definitive answer. Our initial reply would probably be stereotypically lawyer-like: it depends. However, some further explanation may probably provide enough guidance.

When a client asks whether his/her “idea” can be patented, it usually falls into two kinds of situations. In the first category, the idea, though somewhat complete, is an abstract one that cannot be reflected in something concrete, such as a tangible device or a chemical compound. One fine example is a method to evaluate the ups and downs of the stock market. Can the client patent such an “idea?” The second kind of “idea” usually refers to a design or blueprint that is directed to something concrete, but the intended target of the “idea” is far from complete. For example, if the inventor has a detailed, fine scheme to build a remote-controlled paper clipper but the lack of funds made it impossible to buy some parts for now, can the inventor patent his “idea” for the device?

It is no surprise that which category does the “idea” belong to can affect its patentability – the likelihood it can get patent protection. For the first category of “abstract ideas,” the key is proper patent drafting that makes the “idea” fit into the subject matter requirement of patent law. If it is the latter category, the inventor needs to put more consideration into how detailed the “idea” currently is and how likely it will be materialized. This week’s blog post will discuss the first type of “abstract idea,” while the second category will be discussed next week.

For “abstract ideas,” the main obstacle for a patent protection is the subject matter requirement of patent law. Under Section 101 of the United States Patent Act, only “new and useful process, machine, manufacture, or composition of matter” can be patented. An “abstract idea,” in most circumstances, can be considered in some way as a process. However, a pure abstract idea, such as a mathematical formula (E.g. Einstein’s E=mc2), on its own, cannot be patented. On the other hand, a process to calculate, for example, the fluctuation of the stock market, may be patented if the patent application is drafted in an appropriate manner. The federal courts, through the years, have wrestled with the boundaries of patenting an “abstract idea.” In the past few years, the U.S. Supreme Court and the Federal Circuit Court have provided some guidance that is helpful to such an inquiry. All the legalise aside, the most reassuring way to make an “abstract idea” patentable is to associate the idea with “machine or transformation”—as instructed by the Federal Circuit Court. Under this doctrine, an idea, or a process is patentable if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another. For most of the “abstract ideas,” the most straight forward approach is to draft a patent application that directly links the idea to a machine that carries out the idea. It should be noted, however, the “machine or transformation” approach is not the only way to make a process patentable. However, as indicated above, it is probably the most reassuring method. Moreover, to draft such a patent application requires experience and a keen understanding of the invention. It is probably wise to seek professional help to avoid unnecessary delays in getting a patent.

So what about the “ideas” that are directed to tangible devices or compounds but the intended projects are far from complete? For these “ideas,” the key is how concrete and detailed the design or plan is. The major legal obstacle here is the Enablement requirement imposed by Section 112 of the United States Patent Act. Section 112 states that the specification of a patent, the detailed descriptions for the invention, shall Enable “a person skilled in the art” to “make and use” the invention. Here, “art” can be generally understood as the field of technology of the invention. If the patent application does not satisfy the Enablement Requirement, a patent will not be issued.

To better understand the Enablement Requirement, it is essential to get a basic grasp of the underlying rationale of the patent system. Fundamentally speaking, the patent system is an exchange between the inventor and the public: the public, through the government, grants to the inventor or the owner of the invention a monopoly of limited time (currently it is 20 years) to make, use, and sell the invention, in exchange for the disclosure of the invention by the inventor. Naturally the Enablement Requirement comes into play. Without this, there is no guarantee that the disclosure in the patent is sufficient to warrant granting the patent monopoly. The Enablement Requirement is the statutory language to hold the inventor to his/her side of the bargain—a full and useful disclosure of the invention. It is designed to make sure that the public, again through the government, will not be shortchanged.

For an “idea” that is not fully materialized, the patent law does not prevent the holder of the “idea” to get a patent for it. You need not wait to have a prototype remote controlled paper-clipper to file a patent for it, as long as your disclosure enables a “person skilled in the art”—usually considered a general expert in the field, to make one. However, if the “idea” is so vague and amorphous that it will not teach “a person skilled in the art” to build a remote controlled paper-clipper, the government will not grant a patent. As you may realize now, it is impossible to draw a definitive line here without carefully reviewing the “idea.” Moreover, it is also essential to be able to parse the legal definition of “a person skilled in the art” as well as the technology demand to “make and use” the invention. Therefore, it would probably wise to at least briefly consult a patent law professional as some legal expertise is required here.

Sometime a client may ask an important and related question regarding patenting an unfinished design: when is the time of invention—the time of having the “idea,” or the time of finishing making the prototype? If this blog was written a month ago, the answer would have been very complex and confusing. However, as if hearing the voice of the troubled inventors, Congress passed the America Invents Act of 2011 on 9/9/2011 and President Obama has signed it into law on 9/16/2011. Under the revised framework, the U.S. adopts a “first-to-file” system that no longer focuses on the time of invention to determine who the rightful owner of the invention is. The new system emphasizes the time to file the application. If A conceives the “idea” earlier, or even makes the prototype earlier than B, A still loses if B files his patent application first. Therefore, the new patent laws encourage one to file a patent application for his invention as soon as possible. But what is to stop him from filing for something dreadfully premature? That will be the task of the Enablement Requirement, which remains intact under the new law.

– Contributed by Y. Harry Du


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