Many engineers and scientists fail to appreciate when they have conceived of a patentable invention, perhaps presuming that if they came up with the idea, someone else must have done so already. Many believe that patents are reserved for breakthrough inventions. Also, some believe that an invention cannot be a combination of things that are already well known. As a result, many potentially valuable inventions go un-patented and are dedicated to the public through public sales of products and publications of technical papers.
In fact, the vast majority of patents are granted on improvements—sometimes minor improvements—to products, methods or systems that were already known. Also, almost all inventions involve known things that are combined in new ways. For example, the airplane invented by the Wright Brothers was a combination of a glider, that had been known for years; with the gasoline engine, which had been perfected in automobiles; and the propeller, which had been perfected in fans and ship propellers. Yet, no one doubts that the airplane was a patentable invention.
Similarly, new methods of fabricating or making known materials or products may be patentable when the method is indeed new and not obvious in view of what is known. For example, methods of making materials that improve a known material’s performance or manufacturing yield, or reduce its costs may be patentable even though the material or product is not.
In short, it can be a challenge for inventors to recognize when an improvement or known things combined in new ways rises to the level of a patentable invention.
One approach to ensuring no patentable invention is lost is to attempt to patent every new idea and let the patent office sort out the patentable from the unpatentable. However, this approach is generally impractical and unaffordable. The preparation of patent applications and invention disclosures is time consuming, and the legal and government fees associated with filing patent applications are very expensive. For this reason, many companies implement a review process designed to select those inventions that have economic value and are likely to result in an issued patent.
A better method for capturing and protecting valuable inventions is to establish policies and procedures for recognizing inventions and assessing their potential and value as patents.
A good test for recognizing patentable inventions is based on the effort required to conceive and perfect a solution to a difficult technical problem. Engineers, programmers, and scientists are typically problem solvers; and to coin a phrase, problems are the mother of invention. Solving a technical problem typically involves inventive effort. But not all inventive solutions are patentable inventions. So, how do you sort the patentable from the unpatentable invention?
In the Internet era, engineers, programmers, and scientists have ready access to the combined knowledge of the world. Using an Internet search engine, a technical expert seeking a solution to a technical problem can readily find known solutions in just a matter of minutes to a few hours of sorting through Google search results. For this reason, if a technical expert cannot find a solution to a particular problem on the Internet within a day or so, there is a good chance that the solution, when finally conceived and developed, will be patentable.
Of course, not every patentable invention is worth the time and expense to patent. The costs of filing for patents should be reserved for those innovations that are likely to have significant economic value. Thus, a second test to consider before filing a patent application on a new solution to a technical problem is whether the solution is central to or enables a product that has value in the marketplace or reduces the cost of making a valuable product. The more important the technical problem is to a valuable product or service, the more valuable the patent is likely to be to the enterprise.
When a patentable invention is conceived, care should be taken to avoid making any public disclosures until an application is filed or a decision not to patent has been made. Public disclosures can render inventions immediately unpatentable in many countries, and unpatentable within a year in the United States. A patent-killing disclosure may be as simple as discussing the invention with somebody outside of the company who is not under a nondisclosure agreement. Disclosing an invention in technical papers submitted for publication before a patent application is filed can block a patent on the invention. Similarly, mentioning the invention while making a presentation at a technical conference can dedicate the invention to the public. So can discussing the invention with customers and partner companies. Even beta testing products with customers can end up blocking a patent in some circumstances.
Another reason not to delay filing a patent application on an identified invention is that others may be inventing in the same area of technology. Like early birds and worms, it is the first inventor to file for a patent application that can obtain a patent. Thus, to quote a colleague, inventions are not like wine—they do not improve with age.
Given the need to promptly file patent applications on inventions, companies can benefit from implementing a routine practice for identifying and selecting inventions suitable for patenting. Scheduling regular meetings among a team of invention evaluators helps to ensure that inventive ideas are given timely consideration. Such meetings should be held monthly or at least quarterly. Regularly scheduled patent review meetings help to ensure that the daily grind does not get in the way of protecting a company’s intellectual property.
Another procedure that companies can use to ensure that valuable inventions are not lost due to inattention is to hold periodic invention harvesting sessions. Invention harvesting sessions are gatherings of engineers, programmers, scientists and other problem solvers involved in activities in which inventive ideas are likely. In such sessions, key problems that are being worked on may be reviewed and inventive solutions discussed by the group. Novel ideas and problem solutions may be listed on a white board. When all ideas have been written down, the list may be reviewed by the group to identify those with the greatest economic value and novel elements that make each idea worthy of patenting. By developing a list of potential inventions, company managers can learn about intellectual property under development that may be suitable for patent protections or trade secrets.
Periodic invention harvesting and evaluating meetings are particularly important for small businesses performing under Federal Government contracts. Typically, such contracts implement federal regulations that permit small businesses to retain ownership of intellectual property developed, at least in part, under a government contract. This can be a good deal for many companies. However, the opportunity for a company to retain ownership in intellectual property in such situations requires promptly disclosing inventions to the government and timely filing a patent application. Otherwise, the intellectual property will be owned by the government or dedicated to the public through government research publications.
The requirement to disclose inventions to the government and timely file patent applications specified in technology development contracts are a reasonable burden in view of the benefit that such funding can provide to small business. However, without a periodic mechanism for identifying patentable inventions, a company can lose the significant benefit provided by such contracts of being able to own the intellectual property they developed using government funding.
As a closing note, it is important for companies to be judicious in patent filings, particularly when filing patent applications around the world. We have had clients go out of business largely because excessive patent filings, particularly international patent filings, drained the company of money that would have been better spent on technology development and product marketing to establish a revenue stream that would have sustained the business. Thus, it is always good to keep in mind that not every invention is patentable, and not every patentable invention should be patented.
