Is your idea patentable? How can you tell whether something is patentable or not? Intellectual property attorney Jason Webb says one of the key pieces is you want to look at if something is appropriate for a patent or maybe appropriate to be protected in some way. For example, your branding, the name of your company, or the ends of your products are all protected under trademark. The books that you write, the art that you create, the songs or the videos that you put together, that’s all copyright things that you can keep a secret. They’re valuable because they are trade secrets. Jason teaches how to make a choice between protecting something with trade secret protection or patent protection.
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I’m Jason Webb, an Intellectual Property Attorney at Pearson Butler and my practice is all over the country. I have clients all over the place. It’s general practice, so it’s not a mistake and outside, I have a lot of international clients. One of the things that a lot of my clients ask me about is how can you tell whether something is patentable or not? One of the key pieces is first, you want to look at is it something that is appropriate for a patent or maybe it’s appropriate to be protected in some other way? For example, your branding, the name of your company, the ends of your products, those are all protected under trademark. The books that you write, art that you create, songs that you put together, videos that you put together, that’s all copyright things that you can keep a secret. They’re valuable because they’re a secret. Those are trade secrets. Occasionally, you have to make a choice between protecting something with trade secret protection or patent protection.
If you can’t keep it a secret the inner workings of your product that you sell to people and they can take art and see what it does, that’s not a trade secret. Once you’ve narrowed it down, we’re looking at technology. We’re talking about methods of doing things, processes those sorts of things, gadgets, apps, software. We’re in the world of patents. What you want to do when you’re looking at patentability is the four key requirements to patentability. The first one is that it needs to be patentable so bad. Patentable subject matter means a list of things that we’re able to get patents on and things that we’re not able to get patents on. For example, if you are a physicist and you discovered a new law of nature, you discover anti-gravity, you can’t get a patent on anti-gravity because that’s a law of nature. If you are a mathematician and you come up with this wonderful proof, that’s math, that’s algorithms. We’re not going to be able to get a patent on the algorithms or the mathematical principles that may be discovered.
There’s a real hard line that we draw on owning people. There are a lot of cases out there that say you own and what you can’t own in gene sequences and things like that. It’s this list and probably the best way to figure out whether you’re on the list or not of what’s patentable subject matter is to talk to a patent attorney, but those are some guidelines. In the world of software with patentable subject matter, that line is changing all the time in the past years. It’s probably changed fifteen times where the mind is going. That’s another thing where you want to talk to a patent attorney if you’ve got an app or software patent. Is it a patentable subject matter? How matter to make it a patentable subject matter? A lot of times, it’s how you describe it. That’s the first one.
The second one is it needs to be useful. This is a requirement but it’s not a very high requirement. I know there’s a patent out there on a self-taping machine, which is this crank that you turn, and it’s connected to a holly to a wheel and the wheel has the shafts on it with boots at the end of it. As you turn the crank, the boots kick you in the butt while you’re coming at it and that’s useful. Everything that you would bring to a patent attorney to ask questions about is going to be considered useful. It gets a little dodgy when you have developed something and it’s decorative design. Utility is that it’s beautiful, it’s interesting then we’re on this edge of whether it’s useful or not. That’s something that you definitely want to talk to a patent attorney about.
The third one is that it needs to be new and this is something a lot of people intuitively know because most people that come to me with an idea that they want patents, they say, “I went out looking for it. I tried to buy one and I couldn’t find it or I’ve been in this industry forever and I’ve never seen anybody making anything like this.” That’s talking to you about whether it’s new or not. In order to patent something, it has to be new. Sometimes people will say, “My patent’s expiring. Can I refile that same patent and restart it?” No, because you would get rejected based on your own patent because it’s no longer new. That’s why you can’t keep renewing patents forever. You have to keep improving the technology. If you wanted to file patents, that’s typically when you hire a patent attorney to patent the research that you’re doing. I call it a basic patent screening search. Sometimes people call it a patentability search. There are several names for it but basically, you’re trying to look around and see is this new or not. If it’s not new, then it’s not a good candidate for patent. If it is new, it has to be none of this and this is a step up from whether it’s new or not.[Tweet “We’re in a world of patents.”]
Even if something’s new, for example, you’ve invented a mouse and the mouse is a color that no one has ever done before, that would be new and it would be useful and the mouse itself is certainly patentable subject matter. What’s new about it is this new color that you’ve done. The thing is that it’s obvious to make things difficult and so that’s one of the things that’s straight. Since it’s obvious to do that, even though it’s new and it needs all the other requirements, you’re not going to be able to get a patent on a mouse. Unless there’s something so unique and special and functional about that color, that the color itself is a functional aspect of the mouse. Let’s say because it was that color, you could use an app on your phone in conjunction with the mouse and it tracks the mouse in a particular way.
We’re starting to get into functionality. Maybe the color does make a difference and it’s not decorative, it’s functional. Then we might be back into non-obvious subject patents. The patent office uses the obviousness requirement to reject almost all applications. The last data that I saw that they had published was they rejected around 93% of applications at least once, usually two to four times. That’s the most common rejection is saying that it’s obvious. That’s not something you usually figure out in the very beginning. It’s something that you’ll talk about and get a sense of, but you don’t know whether it’s obvious or not until you start fighting with the patent office about whether it is and they’re going to argue that it’s obvious and your attorney’s going to argue that it’s not obvious and then it comes down to whether your attorney is able to convince the examiner that it’s not obvious. There’s thousands of pages of cases and rules and exceptions to the rules as to what’s obvious and what’s not obvious.
The manual for patent examination procedures is 10,000 pages long and a bunch of those pages are devoted to talking about how do you decide what’s obvious and what’s not obvious. Then sometimes you even have to go up on appeal to convince to get to the point where the patent office will say that it’s not obvious. Those are the four key main requirements as to be able to tell whether something is patentable or not. Some of them you can tell right away. There’s something useful or not that you can probably tell by yourself and whether something is patentable subject matter is often something that you don’t need to do any research for. You need to have a short conversation with your patent attorney. Then the real research and the real uncertainty often comes from whether it’s new and whether it’s obvious.
One point that the term sometimes confuses people because often inventions are obvious to inventors. In my experience, inventors have a different mindset. They have a different way of looking at the world. The patent office, when they phrase that, they say obvious to one of ordinary skill in the yard. They’re making it clear that we’re not talking about is this obvious to an inventor. They’re saying, “Is this obvious to one of ordinary skill in the art?” What they mean is if you’ve invented a new mouse for computers, is this obvious to the engineers that produce mouse? Is it obvious to the people who their job is to be in that technology? They’re not inventors but they’re skilled in that technology.[Tweet “Inventors have a different mindset. They have a different way of looking at the world.”]
What I’ve noticed is inventors think out of the box. They combined things together that no one thinks to combined. They take all technology, they put it together and ways. These are the things that are non-obvious and new. That’s one of the reasons why we have more and more patents all the time because the more things that we create, the more things we have to combine it together in your ways. That’s that.
Jason, we have a couple of questions. One of them is referring to trademarks but they said marks in general. I’m assuming their main trademark is a foreign person, the person not from the US, allowed to own a US trademark and/or be assigned one.
I don’t know any restrictions on that. I know that there are restrictions on certain kinds of corporations, but lots of people outside of the United States though and in the United States trademarks.
What are some things that you can do to help your attorney so that it doesn’t cost as much to do the search so that you don’t come back and find out it wasn’t useful, or it wasn’t patentable in any way and because you failed to find something?
Two things that you can do. One, have a conversation with your attorney before you pull the trigger. Talk to him on the phone and say, “Here’s my idea. This is what I think. This is a good candidate for a patent. Is this something that you think is worth searching?” You want to have a candid conversation with your attorney and you want to make sure that you feel like you can have a candid conversation with your attorney. Everybody’s different and some people are order takers. If your attorney is an order taker than used to searching whatever’s put in front of them, that may be great in a large corporation where you want operations to run smoothly and without having to have lots of extra conversations.
When you’re talking about entrepreneurialism small and medium-size businesses where they don’t have the infrastructure to pre-filter inventions, then you want to have a conversation about whether it’s a candidate and then you also want to do your own research first. I definitely recommend looking to see if you can buy the product somewhere. I wouldn’t call people and say, “Do you have anything that does this, that, and the other?” Because that’s disclosing the invention you want to keep a secret. Look online to see if you can find it. Going through catalogs of where they sell those things. You want to look around and see if you know if someone’s doing this or not. Because no one’s selling it, doesn’t mean someone has filed a patent on. There are lots of people that file patents and then they fail somehow to get a product to market or they get it to market and they don’t do well and it never reaches you. You should definitely be doing your own searching first.
We’ve also searched the patent office records if want to. You can do it at USPTO. Google has a good patent search tool. There are other patent tools out there. You’re not going to be able to do as good of a job patents or patents or even understanding what’s okay and what’s not okay. Even to whatever level you’re comfortable doing your own search, looking to see is this new. You should definitely do that because if you can find it in half an hour, the chances are I could have found it in two or three minutes and why do you want to pay me to do something? You could have done it yourself.
We have 37 patents. We only have one that didn’t issue out of all that. That’s statistic. You said 93% get rejected.
93% get rejected at least once. The overall allowance rate of the patent office is 60%. If you would’ve had 38 files, if your average than probably twelve of those, no more like fifteen of those wouldn’t have been allowed.
What we found was that the difference is because we had all of these and Tom works closely with whatever attorney and we’ve had multiple attorneys filed them over the years. Works closely with that when we’re filing them, making a decision to file or not to file. There are more inventions than that that we shelved and never filed or have to trade secret instead. That happens. That’s the starting point is that communication that you mentioned is key to our issuance rate and that one single one because we had done it as work for another client and we offer up a package to our clients in which they pay a one-time fee.
We provide all the initial communication to our training and we provide it for as long as they need it through the patent and trademark process. If they need to call us for years from now because there was an objection they can and so we do that at once because we learned that this communication ongoing was where it falls apart and no one from that company ever contacted us to talk to us about it or any of that. That’s why it didn’t issue. They got rejected and they gave up too quickly.
They never even contacted you after it was rejected?
No, because we had done the work for another company and the attorney that they never came back.
The attorney contacted them but didn’t know that they contacted you for support?
They didn’t. Because of that, when we found out we were like, “Why was it rejected?” We finally found out why. We were like, “They were wrong about how they communicated that. If you would first share it with us and shown us the claims, we could have realized that you were wrong to begin with.” Then secondly, you can always have that struck after, as you negotiate and get it issued. We’ve found that our rejection rate might not be quite as high as that as 93% that seems high, but probably at least 75% were rejected once. That’s pretty standard.
My point is that the communication with your attorney from day one or pre-day one, as you put it, is critically important to getting that patent issued and making it meaningful because that’s what’s important to us. Thank you so much for joining us on an Office Hours with Jason.