As a part of the standard operating procedure here at Verna Law, P.C., we have a special form for clients and potential clients when we have a meeting over a new invention and the ability for the inventor to receive a utility patent from the United States Patent and Trademark Office on it. Remember that a provisional patent application only gives you an extra year to file a utility patent application. A provisional application does not give any legal protection.
Do you have a question about your invention? Call us at 914-908-6757 or send us an e-mail at anthony@vernalaw.com.
The purpose behind the form is to have a deep dive, a drill-down, to peel the layers off the onion of the invention. Pick a cliché to describe that investigation into a new product. That form is intended to help us understand our clients’ inventions and also to help discuss the novelty of the invention. Under the Patent Act, the invention must be new and novel. Under a Supreme Court ruling, software, algorithms and business methods must also have an “inventive step.”
When we at Verna Law turn to drafting the patent, the concentration is on the claims of the utility patent. An inventor obviously wants to describe the version of the invention that was created. A design patent only protects the shape – or design – of the new product. But the inventor-patent team must also think of versions that the inventor thinks has commercial potential or might be knocked-off. But the inventor cannot merely describe the invention in a specific way. The goal must be to describe the invention specifically, but to also broaden out to describe and capture the invention broadly.
What is Patentability?
In order to receive a patent, an invention must be new (or novel) and it must not be obvious (there must be more than the ability to combine prior art in order to create the invention). A patent cannot be obtained upon a mere idea or suggestion. Patents are granted for a new machine, manufacture, process, etc., and not upon the idea or suggestion of the new machine, manufacture, process, etc..
So, in asking questions about a client’s invention, we want to know how it works.
- What is the purpose of the invention?
- Are there drawings or photographs of the invention?
- What is the description of all the parts of the invention?
- How is the invention used?
- How are all the parts of the invention used?
- What are some of the novel features of the invention?
- What are some of the advantages of the feature?
- What is the business plan once the utility patent application is filed?
Now, some of these questions may seem redundant, but they all do serve a purpose: Finding out how the invention works.
Avoid Marketing Language
Sometimes, inventors will want to answer these questions with marketing and advertising language. That is understandable! As a society, we have been taught that we are always marketing and always trying to sell and always trying to brand.
For example, in pitching to investors, one article describes how one app creator was successful:
- The app’s CEO and co-founder, Tomer Alpert, credited a key change in its pitch: shifting from a focus centered purely on the business model to one centered more on Felt’s human aspect — the app’s founders and its customer reactions to the Felt concept.
In speaking to their lawyers and their intellectual property team, many inventors do this. Again, it is understandable! But in order to understand an invention properly and correctly, the conversation must move to nuts and bolts.
- Does data exist to support concept/invention?
- Have prototypes, products, apparatus, compositions, etc., been made and tested?
Many inventors wonder if they need a prototype prior to patenting an invention. The simple answer is “no’. A prototype is not required prior to filing a patent application with the U.S. Patent and Trademark Office.
While prototypes can be valuable in developing an invention, they can also be costly. Considering that a licensee of your patent rights will most likely redesign the product described in the invention, developing a costly prototype is not required and in some situations may actually not be feasible. If a prototype can be constructed without spending a lot of money, then prototyping the invention can be a very good first step with the invention process.
However, if there is a prototype, then it is information that is important to the patent process. How does the invention work? Are there any steps needed to reengineer the product? What lessons have been learned in creating the prototype?
Your bright idea! Is it patentable?
- What are the closest competing technologies, products, etc.?
- Who else is working in this technological field (other academics, companies, etc.)?
These questions will help us learn what our clients know of the field, therefore, how our clients can improve upon existing solutions. Also, these questions will help us begin a patent search, as current solutions will form the basis of prior art.
- Has this technology been publicly disclosed in any way?
- Any papers presented? Planned publication?
Because an inventor must file a patent application a year after an invention is publicly disclosed, knowing when a public disclosure happened (if at all) is important to understand. Verna Law, P.C. wants to do a good job in drafting the patent application, so information is needed.
The need for patents highlighted on the TV show “Shark Tank” aligns closely with the criteria for patentable subject matter, although there are distinctions and nuances in patent law that might not always be apparent from the show. It does simulate what happens when business owners visit potential investors in order to secure funding. Here’s a detailed comparison:
1. Patentable Subject Matter:
Patent law defines what inventions qualify for patent protection. Under U.S. law, to be patentable, an invention must fall within one of the following categories:
- Process: A method of doing something, usually involving technical steps.
- Machine: A device or apparatus.
- Manufacture: Articles that are made or produced.
- Composition of Matter: Chemical compositions, mixtures, or compounds.
Additionally, the invention must be:
- Novel: It must be new and not known to the public before the filing date.
- Non-obvious: It must not be an obvious improvement over existing knowledge or products.
- Useful: It must have a practical utility.
2. Shark Tank’s Emphasis on Patents:
On “Shark Tank,” entrepreneurs often discuss their patents to demonstrate the uniqueness and protectability of their inventions. The show tends to focus on products and business methods that have clear market potential and competitive advantages. Here’s how these align with the concept of patentable subject matter:
Alignment:
- Novelty and Non-Obviousness: Entrepreneurs on “Shark Tank” often emphasize how their inventions are unique (novel) and different from anything else on the market (non-obvious). This aligns with the patent law requirements for novelty and non-obviousness.
- Utility: Startups on the show demonstrate the practical applications and benefits of their inventions, which aligns with the requirement for an invention to be useful.
- Categories of Inventions: Many products presented on “Shark Tank” fall into the categories of machines, manufactures, and compositions of matter, which are patentable subject matter under U.S. law.
Nuances and Limitations:
- Abstract Ideas and Business Methods: While some business methods are patentable, abstract ideas and purely intellectual concepts are not. On “Shark Tank,” entrepreneurs sometimes pitch business models or software innovations, which can be more challenging to patent due to restrictions against patenting abstract ideas. However, if the business method involves a technical process or has a concrete application, it may be patentable.
- Natural Phenomena and Laws of Nature: Inventions that rely on natural phenomena or laws of nature are not patentable. This is less commonly an issue on “Shark Tank” since most pitches involve applied technology or products.
- Software and Algorithms: Software inventions must demonstrate a specific technical improvement or application to be patentable. This is a more complex area of patent law, and while “Shark Tank” often features software-based businesses, the nuances of patenting software are not always fully explored on the show.
Practical Implications:
- Education on Patent Law: While “Shark Tank” highlights the importance of patents, entrepreneurs still need a thorough understanding of patent law to determine if their inventions are patentable.
- Patent Strategy: The show emphasizes the strategic value of patents in securing investment and market position, but startups must also navigate the legal complexities to ensure their patents are valid and enforceable.
- Beyond Patents: Not all successful “Shark Tank” pitches rely solely on patents. Trade secrets, trademarks, and other forms of IP protection are also important for safeguarding business interests.
In summary, “Shark Tank” effectively showcases the need for patents by emphasizing the importance of protecting unique and valuable inventions. However, entrepreneurs must understand the legal criteria for patentable subject matter to ensure their innovations qualify for patent protection and to develop a comprehensive IP strategy.
Conclusion
In short, the first question we ask our clients is “Is this invention patentable?” We do that through a series of deep, open-ended questions that help us at Verna Law understand our clients’ inventions better. This is not marketing language, but an attempt to have our clients explain the nuts and bolts of the invention. Call us at 914-908-6757 or send us an e-mail at anthony@vernalaw.com.
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