Over the years I have had the opportunity to work with many inventors. In fact, over the years I have worked with or advised literally thousands of inventors, the overwhelming majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. One of the most common mistakes I see inventors make deals with the inventor being unable to describe what they feel is the patentable feature and/or unique contribution their invention is making to the relevant technology field. This isn’t to say that inventors cannot articulate what they have invented, but rather the problem is associated with being able to identify and explain what features or aspects of the invention will contribute most to patentability.
Doing a patent search is absolutely essential. Until you understand what is already known in the prior art you have absolutely no way of knowing whether a patent is likely to be obtained. Furthermore, without a thorough and complete picture of the prior art you are unable to focus the description of your invention on those aspects that will most likely contribute to patentability. Without a patent search you will invariably describe all aspects of the invention with equal importance, although we know from experience that there will always be certain features that deserve greater attention because they will contribute more to patentability. While it is helpful to identify any difference between an invention in the prior art, it is critical to spend the greatest amount of time discussing the features and variations that that will contribute to a patent being issued; that is where the patentable invention resides. This uniqueness will allow you to build a patent application that can lead not only to a patent, but a patent that meaningfully protects the core of what makes the invention unique compared with the prior art.
Frequently I hear from inventors that they have never seen anything like their invention on the market, so they know there is nothing that could stand in their way of obtaining a patent. While this may seem logical, it is simply not true. There are a good number of reasons why something may have been patented, or a variation that is too close for comfort may have been patented, and still the product not reach the market. For example, many times independent inventors will obtain a patent and then run out of money or lose interest and, therefore, the product never makes it to the market. Then when others come up with the invention themselves, or learn of the now defunct patent, they choose not to pursue it because without being able to protect the invention with a patent as soon as the product comes to market it will be copied by others if it is successful.
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Due to the laws of nature, and the reality that there are only a finite number of solutions to any particular problem, every generation invents, or re-invents, many of the same things. Thus, it is always wise to do a patent search to start the process. While it is a good idea to start with your own patent search (see Patent Searching 101 and Patent Searching 102) I guarantee that a professional patent search will uncover inventions that you did not know were out there. With close to 9 million utility patents having been granted in the U.S. and well over 1 million pending patent applications, and millions of other published but abandoned patent applications, there is always something that can be found that at least relates in some ways. You are always better off knowing about those related inventions. This allows you to determine whether moving forward makes sense, and it also allows for a patent application to be written to accentuate the positive, and likely patentable, aspects of an invention.
When filing a patent application you should always explicitly mention that which sets your invention apart and will make the invention patentable. That seems simple enough, but still many struggle figuring out how to precisely accomplish the task. My advice is to create a table that dissects the elements of what the prior art teaches. Take a look at the example table below, which is for a hypothetical shovel.
The invention is listed in the chart along with three hypothetical prior art references. Your invention and the prior art all have a shovel head, a handle and grip on the handle in common. One prior art reference teaches a rubber grip, two of the prior art references teach an aluminum handle, one of the references teaches a threaded handle and a matching threaded head. None of the references teaches a radio integrated into the handle. Typically when you are looking for uniqueness you want to find something in your invention, most preferably something structural, that is not found in any of the prior art references. I am oversimplifying here, but if you can find a structural uniqueness not found in the prior art that means you should be able to craft a patent claim that would overcome a novelty rejection under 35 U.S.C 102 and you should have at least a fair chance (perhaps even a good chance) of overcoming an obviousness rejection under 35 U.S.C. 103. Obviousness is quite subjective, so generalizations there are difficult and dangerous. Still, you have identified a uniqueness. For more on obviousness see Obviousness Basics and When is an Invention Obvious?
Now ask yourself whether that uniqueness is broad enough to build a patent around. Sometimes the answer is yes, sometimes the answer is no. You have to be honest with yourself at this point. The last thing you want to do is to spend good money chasing a patent that has little chance of being awarded, or if it is awarded will be so narrow that it could never realistically be infringed. Inventors are very creative people and if you invented once you will invent again. So ask yourself whether the differences between your invention and the prior art are great enough in two separate contexts: (1) Are the differences enough so that you believe you could obtain a suitably broad and meaningful patent? (2) Are the difference enough so that consumers would be willing to pay a premium to acquire your invention over and above what they would pay for the prior art?
Now for the inevitable disclaimer. As with virtually everything in patent law, you do need to be careful. You should stay away from saying things like “the only thing that makes the present invention unique is…” Rather, consider saying something like “one of the things that makes the invention unique is…” The second alternative is only slightly different, but leaves the door open for you to argue later that there are other aspects that make the invention patentable. The first alternative could be construed as an admission and very difficult, if not impossible, to get around. In essence, if you say something simple, and seemingly harmless, you could be giving the Patent Examiner the ability to use your own words against you. Your invention is NOT simple, it is elegant.
The moral of the story is to be careful. Getting help from a trained patent professional is the best and safest way to proceed. If you do not have the funds available to seek competent professional advice you should really ask yourself whether you should be pursuing the patent path. We all have dreams, and sometimes we take risks, but the invention to patent to commercial success path can be long, time consuming and expensive. I dream big myself, so I am not about to tell others not to follow their dreams and believe in themselves and their inventions, but it is best to go into the process understanding what lies ahead and pursue moving forward in a financially responsible way.
For more information on patent application drafting please see:
- Is This Patent Any Good? How to Tell a Good Patent From a Bad One
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Learning from common patent application mistakes
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Patenting business methods and software still requires concrete and tangible descriptions
- Describing an Invention in a Patent Application
- Patent Drawings and Invention Illustrations, What do you Need?
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- The Importance of Keeping an Expansive View of the Invention
- Patent Application Drafting: Ambiguity and Assumptions are the Enemy
- Patent Drafting: Appropriately Disclosing Your Invention
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications
- Understanding Patent Claims
- Patent Drafting: Top 5 Critical Things to Remember
- Patent Drafting: Not as Easy as You Think
- Completely Describe Your Invention in a Patent Application
- Software Patent Basics: What Level of Description is Required?
- Drafting Patent Applications: Writing Method Claims
- Turn Your Idea into an Invention with a Good Description
- Patent Drafting: What is the Patentable Feature?
- Patent Claim Drafting 101: The Basics
- A Guide to Patenting Software: Getting Started
- Does the term “Invention” in the Specification Limit the Claims?
- Working with Patent Illustrations to Create a Complete Disclosure
- Patent Drafting: Describing What is Unique Without Puffing
- Patent Claim Drafting: Improvements and Jepson Claims
- Patent Drafting: Drilling Down on Variations in a Patent Application
- An Introduction to Patent Claims
- Patent Drafting Lessons: Learning from the Grappling Dummy
- Patenting Business Methods and Software in the U.S.
- Defining the Full Glory of Your Invention in a Patent Application
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot
- The Key to Drafting an Excellent Patent – Alternatives
- Tricks & Tips for Describing An Invention in a Patent Application
- Patent Drafting: Defining Computer Implemented Processes