By Christopher McHattie
“Is my idea worth pursuing?” That question can be more complex than it may first appear. For example, many ideas are great, but are they feasible, viable, protectable and non-infringing of existing rights? So, while “I have a great idea that will help people” is a great start, it’s just that, a great start. The component of the inquiry addressed here is whether the idea is protectable, by patent or other form of intellectual property protection.
Innovators often ask themselves and patent attorneys: “is my idea patentable?” and they often want a simple “yes” or “no.” Not surprisingly, it’s not that easy (and in fact in many ways not answerable by other than a patent attorney). In order for an idea to be patentable, an “invention” must be “eligible” subject matter and the invention, or some part of the invention, must be both “novel” (i.e. no one has already done it) and “non-obvious” (i.e. not “obvious” to one of ordinary skill in the relevant field).
Eligible subject matter includes any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement.” Whether an invention is novel or non-obvious is determined, generally, by comparing it to preexisting innovations and inventions and other disclosures, such as existing patents, published patent applications, articles and papers. This latter step is often called a “patentability search” and it is a worthwhile first step for a variety of reasons as it will help: (1) avoid effort directed to an un-protectable innovation; (2) prepare the inventor to discuss the invention; (3) help avoid infringing existing patents and other rights; (4) provide information regarding preexisting developments in the field; and (5) educate on technical information not likely available any place else.
Provided below are some recommended steps adapted from the United States Patent and Trademark Office (“USPTO”) which may be referenced when conducting a “patentability and feasibility search” with respect to an Applicant’s invention. These recommendations focus on using the USPTO’s Cooperative Patent Classification (“CPC”) system to search both issued U.S. Patents and U.S. Patent Application Publications. The reason for the focus on existing patent documents is twofold. First, patents are often the most informative prior art documents, and second, patents are what patent examiners are likely to look at first when examining a patent application and determining patentability. It should also take into consideration all other available means to analyze the merit of a potentially patentable invention. Such means often include an analysis of an Applicant’s own activities, published literature and other published materials relevant to the invention, as well an analysis of other publicly available information which is discoverable, for example, through online keyword searching.
When undertaking any of the above searching techniques, it is critical to not only cast the search using high-level terms, but to do so by recognizing any and all purposes behind the invention. This inevitably uncovers additional relevant “prior art” applicable to the invention. Furthermore, when casting this broad “net of purposes,” it is often the case that a search will reveal more narrow aspects of the invention so as to afford a patent practitioner the opportunity to assist an Applicant in learning and expanding upon the viable aspects of patentability, for example a component part which highlights the whole of the invention.
As background for consideration of the USPTO recommendations provided below, please consider the following example. When conducting a search for an “adjustable writing platform,” it would be prudent to focus on the broader purposes of adjustment and support whereby suggested search terms may include the following: “adjustable stands,” “adjustable surfaces,” “movable stands,” and “movable surfaces.” Employing these terms accounts for the proposition(s) that both stands and surfaces encompass and satisfy structure that may itself define and/or include a writing platform that is or is not stationary. Examples of relevant structure to be found when undertaking the search with this approach would include conventional, adjustable desks, sit/stand solutions and even laptop writing surfaces.
With the foregoing said, we present a Seven Step process adapted from the USPTO:
THE SEVEN STEPS
1. Brainstorm terms to describe your invention based on its purpose, composition and use.
2. Use these terms to find initial relevant CPCs using the USPTO website’s Site Search box. In the Site search box found in the top right hand corner of the home page enter “CPC Scheme [plus keywords(s) describing invention]”. a. For example, if you were trying to find CPCs for patents related to umbrellas, you would enter “CPC Scheme umbrella”. Scan the resulting CPC’s Schemes to determine the most relevant classification to your invention. If you get zero results in your Site Search, consider substituting the word(s) you are using to describe your invention with synonyms or other terms to describe your invention. (If you continue to be disappointed with the CPCs search results, look for your search term in the International Patent Classification Catchword Index. We first note, that while a little more work, the use of patent classification in searching U.S. patents and published applications usually results in a more comprehensive search than one done by word and phrases (keyword searching). Classification searches are supplemented best by keyword searches in the field of patents, due to the technicality of the terms.
3. To make sure the CPC you found is relevant, compare it to the CPC Definition linked to it (if there is one).
4. Retrieve U.S. patent documents with the CPC classification you selected in the Patents Full-Text and Image database. Narrow down the most relevant patent publications by focusing on the abstract and representative drawings on the front page.
5. Using the selected set of U.S. patent documents found in Step 4, begin an in-depth evaluation for similarity to your own invention. References cited by the applicant and/or patent examiner may lead you to additional relevant patents.
6. Retrieve U.S. published patent applications with the CPC classification you selected in Step 3 in the Applications Full-Text and Image database. Use the same search approach used in Step 4 to first narrow down your results to the most relevant patent applications. Studying the abstract and representative drawings on the front page of each application can be helpful. Then examine the selected published patent applications closely, paying close attention to the additional drawings pages, the specifications and especially the claims.
7. Broaden your search to find additional U.S. patent publications using keyword searching in Patents Full-text and Image or Applications Full-Text and Image databases, classification searching of non-U.S. patents on the European Patent Office’s Worldwide Espacenet patent database and searching non-patent literature disclosures of inventions using the free electronic and print resources of your nearest Patent and Trademark Resource Center and the internet.
If, after at least some effort has been made to determine if your innovation is feasible and protectable, you should get the process started!