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Patents: Inventors Handbook
C. Assessing the Idea
Before investing a considerable amount of time, energy and money on an
invention, potential inventors should consider two questions. First, can
the invention be patented? This refers to whether or not an invention
is eligible for patent protection. The second question is; should the
invention be patented? This refers to whether or not an invention is worth
patenting even if it can be patented.
I. Is Patenting Possible?
In order to obtain a patent, an invention must be novel (“new”),
useful, and non-obvious. Any invention is novel as long as it has not
been known or used by others in this country, or patented or described
in a printed publication in any country before the date of invention.
The invention must be different in some way from all other previously
known inventions. Other novelty rules include the one-year prohibition
on patenting inventions that were publicly used or on sale (as mentioned
above).
The usefulness requirement can be satisfied as long as an invention serves
some utilitarian function. This is a relatively easy standard to overcome,
and even minor utility satisfies the requirement.
Finally, the invention must be non-obvious in light of other inventions
in the Art. This means that the improvements sought to be patented cannot
be improvements that would be obvious to someone of similar skill as the
inventor seeking the patent.
II. Is Patenting Practical?
Even if an invention can be the subject of a patent, it may be impractical
to patent the invention for one or more of the following reasons: It will
be difficult to detect and deter infringers, the invention has little
market value or will have a short lived market value, the goal of the
invention can be accomplished in a variety of ways, or in situations where
the invention is best preserved as a trade secret.
III. Research: The Idea and the Market
In order to assess the question of whether a patent application should
be filed, it is important to research other inventions in the Art (the
field of the invention) and the commercial viability of an improvement
in the marketplace. This assessment should include the following:
Potential Customers: Prospective customers who might use the invention
can provide resourceful insights, critical analysis and feedback on existing
similar products as well as suggestions for improvements.
Competing Products: Existing products in the Art can be a valuable resource
for predicting the success of an invention. In particular, the respective
advantages and disadvantages of products already on the market; and how
they compare with each other can yield valuable information.
The Market: If the market is very small, or of a limited duration, it
may be advisable not to file a patent. Patent applications typically take
between two and three years to issue, and in very small markets, the nature
of the competition may not warrant the expense of obtaining a patent.
It may be advisable to visit trade groups or industry meetings such as
trade shows to see recent developments in the art and the market.
Market research firms specialize in researching potential products, and
may be a useful source of information. These firms can be useful in determining
the potential competition your product will face, demographics for customers,
and financial information regarding the economic feasibility of the invention.
Logistic Problems: If the invention can easily be reproduced by others,
and in particular, if it will be difficult to detect or deter infringers,
it may not be advisable to seek patent protection. If the invention fails
to provide a competitive advantage, such as offering a cheaper or better
alternative to inventions known in the art, a patent may be inadvisable.
If there are multiple inventors who have not assigned their rights in
the invention, they will have the right to practice the invention should
a patent issue, diluting the patent rights. Finally, if filing a patent
on an invention will necessarily involve the disclosure of trade secrets
– since patents are public documents – it may be inadvisable
to file an application.
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