How to Know if Your Invention Is Patent Worthy

How do you know if you have something patent-worthy? More importantly, how can you determine if you have something patentable before you invest hours of effort and sink $10K or more into lawyer fees?

Though complex and nuanced, the legal standard for a patent can be summarized into three core requirements:

1. Be useful
2. Be different (or novel)
3. Don’t be obvious

Be useful.

Being useful means:

• your invention has at least one real-world context of use (it’s not mythical)
• using your invention generates some immediate benefit (not some future potential benefit that needs further R&D to determine)
• your invention is plausible (not factually impossible or misleading)

If your invention does something and that something is specific and credible, your invention is most likely useful.

Be different.

For your invention to be novel, two thresholds matter:

• Is your invention new to the public domain?
• Does your invention have at least one differentiator over all others?

New to the Public Domain. Have you ever disclosed your invention in any media or publication, used it publicly, or offered it for sale to the public? You should file a patent application before doing any of these if possible.

If you’ve already disclosed your invention, the US allows a 12 month grace period whereas many international jurisdictions don’t allow any. It’s best to check with a lawyer if you’re unsure what applies to you.

At Least One Difference. Your invention is not novel if each and every element of the invention is found in a single prior art reference.

Prior art is anything made available, or disclosed, to the public prior to the patent filing date that might be relevant to an invention, which includes:

• domestic & foreign patents (including published patent applications)
• non-patent literature (a broad term covering “anything else” that is usually scientific, technical, or research-oriented)

Prior art comprises of hundreds of millions of documents and it’s impossible to review them all. Find at least one significant differentiator and be as precise and honest with yourself about these as possible.

Does your invention:

• solve a unique problem?
• fulfill a unique function or purpose?
• result in a unique outcome?
• execute a unique process?
• contain unique components?
• integrate unique techniques or methods?

Don’t be obvious.

Most patent applications are rejected because they’re considered obvious.

The patent examination process assumes that the novel aspects of most inventions come from:

• combining known things in new ways
• substituting known things to produce something new

To show that your invention is a combination or substitution, patent examiners will first look for prior art references that are similar or analogous to yours, then mix or match them to replicate your invention.

To show that your invention is obvious, examiners will then consider the rationales or motivations that one of ordinary skill in your field might have to actually mix or match.

• Was someone with ordinary skill motivated to try your combination or substitution?
• Did someone with ordinary skill know to expect an advantage from trying your combination or substitution?

To get around this, its important to understand how a patent examiner might interpret and decompose your invention. You can’t know with certainty what prior art an examiner will find but you can be judicious in identifying what could be seen as relevant or analogous to your invention in some way. You can then be intentional about counteracting it.

How to do this is a discussion for next time.

To Summarize:

1. Have a clear use case in mind.
2. Know precisely and exactly what makes your invention novel.
3. Be mindful of ways your invention could be labeled obvious.