Office of Research, Innovation, and Economic Development

What is Patentable?

What is Patentable?

Researchers, inventors, and entrepreneurs are those that identify a problem and work out a solution for the explicit purpose of teaching others their unique solution.  Should others adopt their solution there is recognition and even financial gain.

A patent is one form of public recognition for an invention. Patents must describe a unique solution to a problem and sufficient information about the solution that it can be practicable by others. But there are many steps in the invention to patent process that must be documented, validated, and defended in order to obtain a patent.

Step 1:  What is patentable? 

Certain materials, processes, and ideas—while innovative, do not meet the eligibility requirements of the patent process.  For a detailed list, go to the U.S. Patent and Trademark Office website: www.uspto.gov.

Step 2: Meeting the Eligibility Requirements

If your invention cleared the USPTO’s definition of what is not patentable, then it must also meet the following characteristics of patentable innovations:  

            -new and novel

            -original and nonobvious

            -useful

Let’s discuss each of these characteristics of a patentable innovation separately.

New and Novel:

The patent process confirms uniqueness to your innovation but you must prove it to the patent examiner. Novelty is part of the patent review process conducted by the examiners. They compare the claims in a patent filing with what has already been patented, what is called the prior art. You should know the prior art in your respective field and the level of uniqueness of your research before spending the time and resources on submitting a patent application.

It is a common question to ask “How do I know when I’ve discovered something unique?” The patenting process considers the concept of “new combinations” when evaluating ideas. When existing knowledge is combined in new ways, the result can be an innovation and patentable. What the patent examiner is looking for is new insight gained from the combination of existing knowledge in new ways or applied to a new set of problems.

This is considered the ‘inventive step’ in European patent law or ‘conception’ in U.S. patent law. Conception is the “…formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention.” U.S. Judge Learned Hand stated this as “The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination.”   

Original and Non-Obvious:

Moving to the next criteria, the question is whether the concept is original, not obvious to someone skilled in the art.  What does ‘someone skilled in the art’ mean?  The patent examiner is looking to see if this invention is trivial, would it appear to be obvious to anyone with an average level of training in the field or professional knowledge. U.S. patent law is linked to the concept in economics of the ‘reasonable person’ or rational consumer. This fictional person is meant to be representative of someone that should they be presented with your innovation, would consider it to be unique, original.

Useful:

The useful criteria requires inventors to demonstrate in the patent application how the invention would be used by others. To be useful, the invention must have a useful purpose such as “made or used in some kind of industrial application. In addition, in U.S. patents the application must also describe what is called ‘best mode’.  Best mode is the practical method or commercial application of making or practicing the invention. This requirement is to ensure the inventor is not holding back from explaining to the public (or one skilled in the art) how to make or practice the invention. 

Governments issue patents as a trade-off to inventors.  A patent issued protects the inventor’s right “to exclude others from making, using, offering for sale, etc. the patented invention for a limited time”, i.e. the length of the patent life. In return for this period of protection, the patent must include sufficient information, such as the ‘best mode’ for one skilled in the field to be able to make use of the information at the time the patent expires. In this manner, the public benefits from the inventor’s efforts while the inventor receives a level of protection against infringers and competitors while the concept matures from idea to a commercial product or innovation.

Innovations then are much more than improvements to existing technologies. They are truly novel, unique, and non-obvious for patenting purposes. Patentable ideas must be more than an idea, they must be well thought out so that the protected information in the patent is useful to others at the conclusion of the patent protection period. In fact, patents represent one of the important ways that man teaches others their unique solutions to problem-solving.   

Marketing Intellectual Property

Marketing technologies to companies potentially interested in them will give these technologies the greatest chance of being licensed. Technology developed at the University and not previously committed to a commercial sponsor will be marketed to as many companies as appropriate.

Procedures

Contacts are established with potential licensees by three primary routes:

  • approaches by the University to potentially interested parties;
  • approaches to the University by interested parties who have read a paper describing the work or heard a talk about it;
  • personal contacts to which the inventor describes the work.

Non-Confidential Disclosure

If the University is to take the lead in identifying potential licensees, a non-confidential disclosure is prepared. This is a marketing document that has no restrictions on the use to which it will be put, and is intended to spark interest in the technology. The elements of a non-confidential disclosure are:

  • a summary of the technology developed, stressing the results achieved, not how they were achieved;
  • the current state of competing products in the market place and their limitations; and
  • an indication of why this technology is superior and will offer the licensee a competitive advantage.

As part of this process, all of the specific applications of the technology should be identified. These may constitute discrete fields of use (i.e., markets) that can be licensed separately.
It is helpful if the inventor is actively involved in the preparation of a non-confidential disclosure; however, the Office of Research, Innovation and Economic Development will develop one as necessary using information supplied during the invention disclosure process.

The non-confidential disclosure will be provided to companies known or believed to be interested in the fields of use of the invention.

Next Steps

Companies that express interest normally will be asked to sign a confidentiality agreement. Subsequently, the Office of Research, Innovation and Economic Development will send confidential information, such as a patent application or research data, to them. Companies will also generally want to talk with the inventor at this stage.

Finally, all interested companies will be asked to submit proposed license terms, covering both the financial aspects and the developmental commitment they are prepared to make. These proposals will be compared and the most appropriate one(s) selected for license negotiation.

Facilitiating Technology-Based Business Launch

In some cases, the evaluation of the invention disclosure suggests that a given technology is appropriate for a new business launch and is not suitable to an existing corporation.  In such instances, the Office of Research, Innovation and Economic Development will facilitate the launch of a new business based on the new technology platform by licensing the technology to a start-up company.