Patentability is not a “Shark Tank” Pitch

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 patent on it.

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.  That form is intended to help us understand our clients’ inventions and also to help discuss the novelty of the invention.

When we at Verna Law turn to drafting the patent, the concentration is on the claims of the patent.  An inventor obviously wants to describe the version of the invention that was created.  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?

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 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?

• 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.

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.