Law & Business Podcast Episode 23: Three Items that make a Patentable Invention

In Episode 23 of the “Law & Business” podcast, Verna Law’s own patent agent, Wil Jacques, speaks with Anthony about the three items that make a patentable invention.

The three items for a patentable invention are:

1. It must be new or “novel”: the invention must never have been made in public in any way, anywhere, before the date on which the application for a patent is filed. It is almost always preferable to file a patent application before any public disclosure of the invention. Most patent attorneys will try diligently to file a patent application prior to any public release or announcement in order to allow international patent filings.
2. The invention must involve an inventive or “unobvious” step: this step must not be obvious to others with good knowledge and experience of the subject of the invention.  This determination is made by deciding whether the invention sought to be patented would have been obvious “to a person having ordinary skill in the art to which the claimed invention pertains.” In other words, the invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.
3. The invention is capable of industrial/useful application: an invention must be capable of being made or used in some kind of industry.  The invention must have a useful purpose. In most cases, the usefulness requirement is easily met.

Here is a lightly-edited transcript of the podcast episode:

Anthony Verna:
Hey everyone, welcome to the Law and Business podcast. We’re in the middle of season two and it’s a pleasure to have you with us. My name’s Anthony Verna, Verna law where we focus on intellectual property and advertising law. Today with me is my patent agent. Wil Jacques.

Wil Jacques:
Hello everyone.

Anthony Verna:
Hey, Wil, thanks for coming.

Wil Jacques:
Yeah. Pleasure to be here. Thanks, Anthony.

Anthony Verna:
And Wil is not just the patent agent for Verna law. He’s also a patent marketer and as well as monetization expert over at Emanus LLC. How did I do?

Wil Jacques:
Yeah, you did very well. We always try to tell folks how to make money from their IP rather than just filing, it’s a good thing.

Anthony Verna:
Well, I think that’s something a lot of people don’t quite realize is that, is that getting the patent is the first step, but you also have to make money with all of your intellectual property.

That’s the part of having the business.

Wil Jacques:
Absolutely. It’s an asset of value and you should try to monetize that. If you’re going to spend the time in dollars to actually go about getting the patent, it should at least you know, allow you to protect a product that you can sell in the marketplace, either you or your licensee.

Anthony Verna:
I wholeheartedly agree with that. I know that you’re not going to disagree.

Wil Jacques:
No, not at all.

Anthony Verna:
I want to start everybody with patent basics because that’s not something we’ve covered on the podcast before. It’s also, our relationship is fairly new in the clock of time. Yeah, and so let’s bring everybody up to speed with a little bit of patent basics and let’s talk about what makes an invention patentable.

Wil Jacques:
Kind of three broad classes, Anthony. I would say the first thing is you gotta at least assure yourself that what it is that you believe is an invention is actually an invention.

That means it’s new or it’s novel and we’ll get into some questions around what makes something new or novel. But that’s the first thing that people should try to consider. The next thing is does it involve something that would not be obvious, and obviousness is a very interesting part of patent law.

Anthony Verna:
Don’t we know?

Wil Jacques:
Yes, yes. You know, obviousness really depends on how people who are skilled in the art may view what it is that you’ve invented. So, we’re not talking about inventing in the area of medicine and then not to be pejorative, but the plumber is the person or the art that’s being quoted against that is someone who’s skilled in the art. So you want to make that someone

who is skilled in the art would not have come up with your idea. The last thing, and this is where a lot of my clients tend to have a little bit of an issue and that is, it has to be useful. It has to, you know, have utility. And this utility or usefulness that I’m talking about is something that you actually have to describe in your patent application into specifications. So, for instance, my clients come to me and they say, I have a great idea and that’s when I usually freeze, but I have a great idea. And I say, well, you know what? I think that’s a great idea as well. Now how does it work?

Anthony Verna:
Yeah, I don’t know.

Wil Jacques:
Great idea, but I have not enabled it. I have not enabled the public to be able to take my invention and actually make it and use it and let’s say had the intended results from that invention that I thought should be there.

So those are kind of three very broad classes of things that you need to consider when you’re talking about getting a patent.

Anthony Verna:
So, let’s start at what new or novel means. This invention must never have been made public in any way before the date on which the patent application is being filed. What does it mean to be new?

Wil Jacques:
It’s a very good question. And even given my experience with the patent law, one tries to look at it in the positive, but it’s almost impossible to look at it in the positive, right to, to make a positive statement around what’s new. The way we look at what’s the new is what has not been already disclosed. Okay. And so what the patent office is going to do when you send an application in is to try and show that what you believe is quote unquote an invention.

Right? You know, they’re not in the business of actually giving you patents by the way…

Anthony Verna:
But they’re defenders at the gate.

Wil Jacques:
They are defenders at the gate and actually they’re there to protect us all. But what they will do is a search to see whether or not that idea, concept, or invention that you believe is an invention. In fact, was it ever done before by anyone? And so, they have certain rules and it gets to be a little bit complicated. I got to let you know that even I struggle with this from time to time and so I always have my references close at hand.

Anthony Verna:
But I think we all struggle with these gray areas. When you’re dealing with law, there are always going to be gray areas outside of what you’re doing.

Wil Jacques:
Absolutely. And you would know that best. But one of the things we have to keep in mind is that when the patent office is looking for whether or not something is new, it wants to see whether or not there’s been a prior public disclosure and that disclosure of information could have been done in any manner whatsoever.

It could have been in a publication, it could have been on a website, it could have been done at a presentation but wherever that information that discloses your invention, if it were ever made and it was publicly accessible, then that would be a reason for them not to allow you to get that patent. One of the ones that searchers and a lot of people are familiar with is the idea of whether or not there are other patented documents, or I shouldn’t say patent documents or patent applications that describe your invention. You know, prior to your describing your invention,

Anthony Verna:
I’m reminded of a story at my first law firm out of law school. Now we’re talking, you know, 14 years ago.
I was reviewing an invention disclosure form and in looking at it, it was an improvement to help line up a goose hitch trailer. And I went to talk to the partner, and I said, “Scott, I think we’ve already received an invention disclosure that was very similar to this. I believe that a few weeks ago I recall doing one that was similar.” and Scott poo-pooed my concern, sadly, which I don’t think was the correct move because in a situation like that, one, if there is a conflict, obviously the law firm would be conflicted out of representing both clients, but two, if you’re the junior patent applicant in that particular situation, that could be an easy rejection that hey, two months prior to your filing we received something very similar. Correct?

Wil Jacques:
It could be. It could be, and we’ll kind of talk a little bit more about that later, but let’s suffice to say what I want you to key on right now is it has to be publicly accessible.

Wil Jacques:
Okay. Right, because there’s some disclosures that are made internally between the inventors themselves. It never leaves the room. It is generally not public. It is when these disclosures are done in large forums, they’re done on websites, they’re done even in libraries, trade shows, anywhere where the public has access to that information, whether or not they actually read it is not the point at a patent office. But if it were available then it would be cited against you as what we call prior art unreason not to allow you to have a patent. Let’s talk just very briefly about why the cost of searching for these kinds of a document can be exorbitant. You know, it’s a business call. You’ve got to kind of play against your budget, your wallet and the risk associated with not finding anything. As always. The one that I always tell my clients is be aware of this. It could be a disclosure in any language.

Anthony Verna:
Ah, so if the disclosure is in French, because somebody in Nice may have similarly invented it and the patent office finds that, then your invention is now not going to be considered new or novel.

Wil Jacques:
Absolutely. Absolutely. So it doesn’t have to be an English, which means you’re kind of caught with trying to make a decision as to how deep and how broad is going to be the scope of your search for these documents or for quote unquote what might’ve been your invention ahead of you. And it tends to be one of those decisions that the patent attorney and the client really have to kind of consider budget risk and whether or not they want to go that deep.

Anthony Verna:
I think a lot of people don’t realize that job of intellectual property attorneys and patent agents is to help with assessing that risk.

Wil Jacques:
Yes, yes, absolutely. What I always try to advise clients to do then is we can do the search. We can make it minimal. We can make some adjustments or assessments like I guess I should say based on the results that we get back.
But your insurance is to not tally. It’s to not delay. If you believe that you have something waiting a year or fumbling it in your mind so to speak is not necessarily the right approach. You really have to be committed not only to your invention, but you have to be committed to the idea of getting a patent if in fact it’s something that’s gonna add value to your invention.

Anthony Verna:
And let’s talk about that one year, by the way, because an inventor gets a year’s worth of disclosure to the public, correct?

Wil Jacques:
Yes, they do. Yes, they do. So, you know, there are some exceptions to these bars, so to speak, that the patent office, at least the US Patent Office puts in front of you. So those bars, just to kind of state them succinctly is if there is a disclosure with a prior public availability date, then that’s something that’s a bar.

If it’s published as a us patent or a foreign patent or patent application, that would be a bar. Let’s kind of deal with some of the exceptions to that. And so, you brought out a very gracefully that you will be allowed at least one year or less prior to filing your patent application to have this sort of a disclosure. As long as that disclosure was done by you yourself or a joint inventor or a party in which let’s say has some interest. It could be an employer, it could be a group that you’ve assigned your rights to in some way, but those kinds of disclosures are protected for a period of one year or less. And again, these grace periods can have intervening art. I wouldn’t want to get too deep into that. Yeah, but suffice it to say, if you’re in control or a party that you’re associated with is in control, then that prior art would not be cited against you.

Anthony Verna:
Also, the US is really the only country that gives inventors that one year grace period. So for most patent attorneys, most patent agents are going to advise clients to file ASAP and an invention really is created because you don’t get that grace period elsewhere. And if you want to take your invention and move it to other countries and have it protected in Europe, have it protected in Asia, Canada, Mexico, you’re just not getting that grace period.

Wil Jacques:
It’s very difficult to do that and I, by law actually have to work with attorneys and agents in those other jurisdictions, what we might say in the United States to be foreign jurisdictions, but you know, I would have to work through them in order to assess patent ability or to get a patent for you. But let’s say this, be a good or be it bad in the worldview, in the world view, we do have an advantage of this grace period. We’re actually given even 12 more months of an advantage by being able to file in the United States what we call a provisional patent application. Now that that’s a tricky matter, but what it essentially allows one to do is to file a quote unquote application on your invention without necessarily needing to make a claim. I advise clients to use this when they’re still kind of working on some aspects of their invention. There may be more than one embodiment that they may want to claim in their regular patent application and so what the US PTO is allowed you to do is to file this thing ahead of time and then within a year or less of that filing, be able to file your regular patent application once you’re kind of sure about what it is you’re doing.

Anthony Verna:
Understood. Let’s move on to having an inventive or not obvious step in this new or novel invention. It’s a tricky subject. What does it mean to be inventive? What does it mean to be not obvious?

Wil Jacques:
Good question.

Anthony Verna:
I only ask the good ones.

Wil Jacques:
Yeah, it’s somewhat difficult one to explain sometimes, but a person who is skilled in the art may be able to view what it is you claim to be an invention and they themselves would consider that to be something that is well known in that art and something that would have been easily, I won’t use the term derived but would have been easily enabled just given the skill set that they already have. These don’t come by way of communication. They’re actually shown in other documents and these prior art documents that I spoke about earlier, particularly in patents, one would look into a patent and let’s say you wanted to, if you wanted to file a pencil with an eraser that was orange in prior to you, there was a pencil with an eraser that was blue.

Just to kind of keep sharp simple, it would have been obvious to one skilled in the art to say that you can make eraser of many different colors and there are more than enough evidence that erasers could be done in different colors that just hadn’t been done, but it would’ve been obvious.

Anthony Verna:
One of the classic examples that I remember from law school are headphones and headphones, in the sixties and seventies, were very big and bulky and it had the bigger RCA Jack as well. Well as technology advanced, eventually headphones were able to be miniaturized so that the sound quality was just as good, but the size was smaller and the patent trademark office said, well, no wait, it’s obvious if you can make them this size. It’s obvious that you can make it that size.

Wil Jacques:
Yeah, exactly. And further to your point, Anthony, in many cases under these obviousness type rejections that you might receive from PTO, they will use more than one document, two documents in order to make their points.

And so, in one document, just to use your example, they would have an invention for the large headphone. You want to come along and miniaturize this. But in that same area, same class in general industry, there will be patents that talk about miniaturizing electronic components. And so if one were to, again simply speaking, put those two documents together, it would have been easy for a person of skill in that particular art to say, I have large headphones, I have small electronics, I could combine them and now I can have smaller headphones.

Anthony Verna:
But on the same token, just because the patent and trademark office says that it’s obvious doesn’t really mean that it is because in a situation like this with the headphones, it’s really hard to miniaturize a lot of electronics to get it to a certain point. So therefore, it’s not necessarily obvious even though there might be a couple documents is not always necessarily obvious and that particular rejection of obviousness is something to fight.

Wil Jacques::
Yes, absolutely. And this is where a knowledge of the law, of the patent law, As well as, and I never be little the idea that one really has to know the art that they’re working in. Again, going back to my early inventor who said, I have a great idea, you know, one must be able to actually do what it is they say they’re going to do. But you know, in answering your question about an obviousness, you know, one who was skilled may be able to make that argument and it’s a reasonable argument to make to the patent office to say, no, this would not have been obvious because at the time no one would have known how to quote unquote, let’s say package this type of electronics into a head phone of the art may in fact have taught them that in order to get the best sound quality, it had to be of a larger size. And so, if you find references in those documents, Oh, I should say words in those documents that they’ve cited against you that actually teach away from what it is you’re doing, you can sometimes get around these obviousness claims that the patent office, you know, might put in front of you and sure.

Anthony Verna:
And the Supreme court has tried to clarify what obviousness is. But as we can imagine, one of the issues that personally I have with the Supreme court as an IP attorney is that they’re just not intellectual property attorneys. And I think some issues like obviousness get cluttered rather than clarified with Supreme Court opinions. And in this particular instance, I mean we have a decision from 2007 that states that the patent and trademark office can take two references and combine those references and come out with an obviousness rejection. Even if somebody skilled in the art might not necessarily put those two patents or documents or whatever else together as well. So to me that muddles what obviousness is.

Wil Jacques:
It does muddle because then it puts forth the tenant and patent law that there must have been a suggestion and it is not something that the US PTO gets to pull out of the air. It has to be, you know, resident within the documents that they’re citing against you. But there has to be a suggestion or at least a motivation of some sort in that document that suggests that these two things could have or would have, over some period of time, be combined in order to produce the invention that you yourself are trying to get a patent on that they said it’s obvious and that’s where the arguments tend to stem from. What is motivated? What is a suggestion? What’s a reasonable suggestion? Again, someone who understands the technical area that they’re working in with a patent agent, patent attorney, that also has an understanding of that area as a better chance of getting around those objections.

Let’s diverge for just one moment. This is probably a topic for one of your later podcasts, Anthony. But the simplicity of actually writing the patent application and writing the claims in the first place has a way of allowing you to get around or see down the road what may be a potential obviousness claim that may come up against you. And so, you really want to look out, and have some sense of what’s evolving in your industry, what may happen in your industry. And even to the extent you may not be able to claim an invention in the future that is unknown today. One could in fact kind of protect themselves by at least signaling to the world and signaling to judges that this is something that would have been contemplated. This is something that would have been known and just keep it simple. They’re not all scientists and so you don’t want them chasing around trying to figure out what you meant. So just tell them,

Anthony Verna:
you know, this also goes back to really the beginning of the relationship between a potential patent applicant and the agent or attorney where the agent or attorney should be asking, “What’s your business plan and how long have you been in this business?” I mean, how many times have we had phone calls with people who are like, um, yeah, I’ve never done this before and I just kind of had this idea and I figured I’d start the business right here. Right?

Wil Jacques:
Yeah. The biggest red flag is again, the inventor with the idea. Right. But you know, it is not necessarily the attorney, your agent’s job to assess.

Anthony Verna:
That is correct.

Wil Jacques:
It is not necessarily their job, but someone who takes the profession, the way you know, the folks at Verna Law would do it is to really kind of talk about the economics of what it is they’re trying to do. Case in point, I had a conversation with an inventor the other day who I guess miraculously, you know, asked a question, this is an invention that should be worth millions of dollars. And, and I said, well, what did you check that against? And she had not, right? So, a very quick, simple, kind of calculation to look at her market, look at the market size and look at where her invention would be placed, helped her to make a better decision.

Anthony Verna:
So let’s highlight a useful application. I think that is something that a lot of people don’t really understand what it means to be useful for this invention to be patentable.

Wil Jacques:
Usefulness. Well, what the law has allowed us to do very differently from the way inventions were, say, handled way back in the day of the guilds, right? So, in the guilds, all the secrets, all the knowledge was held within the guild and only people who were members of the guilt were able to practice because they were the only ones that knew. But our forefathers were smart enough to understand that if you want it to grow the economy, then one of the ways of doing that was to share that information but in order to get people away from the idea of separateness in the guilds, well what is it that would be required in order for them to want to share it as information? And so, what they did was they allowed you a period of time, the term of your patent to disallow anyone else from practicing that invention.
And, of course you, could always license it to them. That’s a different conversation. But essentially it gave you some of an, an advantage to keep others from practicing what it was. You invent it for a period of time. But there is a trade off in that tradeoff in terms of usefulness is it had to be something that they could actually make and use. And so the way you describe what’s in your patent and hopefully the way you have developed your invention is it has to work because you have to describe it in such a way that someone else, particularly a person who’s skilled in the art, would be able to take, you know, the contents of your patent, be able to reproduce to some degree your invention.

Anthony Verna:
So those people who send us an invention disclosure for a teleportation device, probably not. All right, not work well.

Wil Jacques:
Not that we know of and one cannot use, you know, the Star Trek episode as a way of proving their invention.

Anthony Verna:
The way I look at usefulness is in a copyright law standpoint, what is useful will not be able to be copywritten. And this is a mirror image of that. Because in copyright law people ask me often, can I copyright clothing? No, it’s a useful article, it has utility. You put an on you and you’re no longer naked and you’ll keep you warm. Or maybe I’ll keep you cold. Now he has special fabrics. So clothing is useful. No copyright law there. But the picture that might be screen printed on your shirt is not useful. Right? There’s no utility to that particular picture that falls under copyright law.

Wil Jacques:
Yeah. These are great ideas that you’re coming up with because you know, it’s one of those areas that I’d like to see almost change in patent law to some degree that these things that have utility that we may not particularly pay attention to are at some point we’ll be given some level of credence just very quickly.
The economy that we work in, particularly this digital economy that we work in, there’s been a lot of case law that makes it very, very difficult in order to achieve a patent for something that just uses a computer anywhere, just kinda manipulating some numbers. But in terms of its use, in the usefulness of those things, there’s some really creative ideas that are coming into the marketplace that people don’t quite understand today. Until we look backward that a things like can I gain additional market share by doing this particular thing and can I show that this particular thing that I’m doing is gaining market share. Now is market share or the increase of something in finance, something that should be considered to be a patentable arena, patentable subject matter. Today? Maybe not. In the future, maybe that’s someplace that we’d go to.

Anthony Verna:
Well, I’ll tell you what, we can definitely do two hours on computers and software and all that. Basically, all of the hair you pull out of your head over.

Wil Jacques:
Yeah. Well, you know, I have none by the way. So that you know, but I think I lost it all doing this sort of thing. But essentially to get back to your original question about usefulness, it has to be something that someone can do without a lot of the undue experimentation. Right? So, it can’t take them 25 years in order to attempt to reproduce what it is you have. I won’t say tricks, but there are certainly methods by which you know, one may be able to protect their invention, get a broad claim on their invention, but the law only requires that you show quote unquote, what we used to call a best mobile, or at least embodiment that the general public or people could actually take your patent and they could reproduce. At least that embodiment is as it is described in your patent.

Anthony Verna:
Wil, thank you very much for being here on this episode. I know coming up, we’ve got another episode with Wil. We’ve got an episode with Michelle Carter, founder of News Funder. We’ve got some episodes coming up with some professional bloggers, people who make money blogging, so keep listening here to the Law and Business podcast. Talk to you soon.

Wil Jacques:
Thank you, Anthony.