Should Your Startup Apply for a Patent?

Essentials to consider when you’re trying to determine if your idea or technology is patentable.
Headshot of James Murphy
James P. Murphy
Expert Columnist
October 15, 2020
Updated: October 16, 2020
Headshot of James Murphy
James P. Murphy
Expert Columnist
October 15, 2020
Updated: October 16, 2020

Innovation is crucial for business and intellectual property law is crucial to protecting that innovation. Here, I address some of the most frequently asked questions about intellectual property that businesses and entrepreneurs often need answered. These patent essentials cover what to know about intellectual property (IP) in the early stages of a company or in the early stages of working to protect your patentable ideas.

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Do I Have a Protectable Intellectual Property Asset?

IP assets are products of an individual’s creativity; or, as stated in the U.S. Constitution, the “writings and discoveries” of “authors and inventors.” Each different category of intellectual property asset is protected by a distinct set of laws.

  • Patent laws apply to any “new and useful process, machine, manufacture, or composition of matter.”
     
  • Trademark laws protect any “word, name, symbol, or device, or any combination thereof” used “to identify and distinguish” goods in commerce and “to indicate the source of the goods.”
     
  • Copyright laws focus on protecting “original works of authorship fixed in any tangible medium of expression.”
     
  • Trade secret laws protect “information that (a) the owner thereof has taken reasonable measures to keep secret; and (b) derives independent economic value, actual or potential, from not being generally known.”

Given these fairly broad definitions, it is inevitable that every startup will develop and own at least some IP assets at some time. But I’ll focus on patents and patentable inventions.

 

Is My Idea or Technology Patentable?

It is not always easy, or intuitive, to know when you have a patentable idea. Even if you have developed something you believe is new, it may not be legally patentable.

Patents cannot legally be granted to “abstract ideas” or “laws of nature,” for example. These are difficult to define specifically, but include mathematical equations and processes that exist in nature (like gravity). Sir Isaac Newton could not legally patent the process of an apple falling from a tree, for instance, although he may have been the first person to understand why it fell. So, although your technology offers improvements over what may be generally commercially available, it may not be patentable.

Trying to define what is patentable in the abstract is far too complex to delve into here. But, in general, if you have improved a machine, or a process, or have created a product that is disruptive, it is likely you have created a patentable technology.

I have counseled many inventors that have humbly, but incorrectly, dismissed their idea for just being a new assembly of existing parts or technology. That is the wrong analysis. Patentable inventions are nearly always based on old, existing elements. As Howard Markey, a former chief judge of the U.S. Court of Appeals for the Federal Circuit (the court that hears all patent case appeals), once famously wrote“Only God works from nothing. Men must work with old elements.”

You should assume that if your technology is new, or at least new to the commercial market, it is at least theoretically patentable.

 

How Can I Determine If I Have a Patentable Idea?

OK, you believe that you have invented something — that is, developed a patentable product or process. Now, what do you do?

As stated above, it must be new. Under patent law, this requires that your invention either has not existed in its exact embodiment or, if something similar has previously existed, your invention is not “obvious” in view of that “prior art.” (The term “prior art” refers to any information publicly available before the date of your invention.)

To simplify what is a complex legal concept: To begin the process of determining novelty or obviousness, you should search the relevant databases to determine the scope of available prior art. Only then can you begin to assess whether your invention is new or non-obvious.

There are many means to search for prior art. Here are a few free options:

There is also no perfect way to search because there is no standard way for inventors to have defined their inventions. The exact words and descriptors will rarely match up nicely, but resources such as these are worth utilizing.
 

How Can I Evaluate My Invention in Relation to Prior Art?

The ultimate assessment to determine whether your invention is new (or novel) is relatively straightforward. If all aspects of the invention were previously publicly disclosed in a single prior art reference (such as a single publication or product), then it is not novel. Contrarily, if all aspects of the invention had not been previously disclosed, it is likely novel, and therefore patentable.

However, even if your invention is novel, it may still be similar to some prior art you found. If so, then the patentability analysis gets trickier, because whether or not something is obvious in view of the prior art is somewhat subjective.

A legal test for obviousness assesses these factors:

  1. The scope and content of the prior art.
     
  2. The differences, if any, between the invention and the prior art.
     
  3. The level of general technical skill of those people working in the same field of endeavor of the invention.
     
  4. Additional considerations, if any, that indicate that the invention was obvious or not obvious when it was made.

And remember as you make this assessment that your invention need not constitute a quantum leap or disruptive technology to be eligible to receive a patent. Even a minor improvement over prior technology that was not obvious when made is eligible.

So, if you have a reasonably good argument as to why your invention is not obvious, then you should consider filing a patent application to protect your invention.

 

How Can I Begin to Protect My Idea or Invention?

Always keep your technology secret, to the maximum extent possible. In the United States, patents are awarded to the first inventor to file an application on the invention. So, keep it secret, until you are ready to file your application. If you must disclose it to anyone outside of your organization, or anyone not generally under a duty of confidentiality, use a non-disclosure agreement to establish a duty of confidentiality.

If you have publicly disclosed the idea or invention, intentionally or otherwise, all may not be lost. Generally, you will have one year after a public disclosure to file your patent application. But, that grace period should not, as a rule, be relied upon. Keep your invention as secret as possible, and file your patent application as soon as possible.

 

How Can I Lock Down My Idea or Invention While I Develop It?

Inventions often require a lot of time — and money — to perfect. So, it is often not practical to file a patent application at the idea stage. Rather, building and testing need to be performed.

To lock down some of your early work and help to protect your ability to obtain full protection eventually as you continue to develop and refine your inventions, and also to secure your patent office filing date, inventors can file provisional patent applications. Provisional applications are informal documents filed at the U.S. Patent and Trademark Office. Provisional applications do not get examined. They are merely placeholders that evidence the date of filing of the disclosed invention.

Once filed, an inventor has one year to file a corresponding non-provisional application to benefit from the filing date of the provisional one. Patent counsel can provide significant value in helping to make this determination.

Read This Next5 Areas of Intellectual Property You Should Focus on Now

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This article provides just an initial look at some basic issues related to patents. If you have other topics you would like me to address in my next installment of frequently asked questions, feel free to reach out to me at [email protected].

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