Before Applying for a Patent: 3 Questions to Ask Yourself by Joe Runge, Esq.

Before Applying for a Patent: 3 Questions to Ask Yourself

Inventing is hard but knowing when to file your patent can be even harder. These 3 questions will help you decide when you are ready to file and when to go back to the drawing board.

by Joe Runge, Esq.
updated September 03, 2020 · 4 min read

Unlike other forms of intellectual property protection, patents require absolute novelty. This means no one can have invented, published or otherwise made obvious your invention before you file your patent. You have to do some research before you apply for a patent. The best way to get a patent is to ask yourself these questions:

What makes my invention new?

Before you find out if your invention is novel, you need a firm grasp of what makes it new. Take a good look at all the related products and technologies and determine what makes your invention different. Did you add a component? Change the order of the steps? Apply the technology in a new field? Before you can determine if your invention is novel you must first know what makes it different than everything else.

Sometimes the determination of the new part of your invention will broaden its scope. For example, you invent a new configuration of a machine that adds a foil guard to a machine to protect the gears. The foil flexes which protects the gears while the machine moves.

You realize that the guard could be any flexible surface and not just foil. This broadens the scope of your patent by including other materials. You check similar devices and very few have guards. Some have rigid guards that that do not work very well. As the machine moves, debris falls around the guard and into the gears.

Understanding what makes your invention new will also give you a better sense of its value. If similar machines fail at a high rate due to debris jamming the gears then you have a very immediate value; your invention will allow machines to run a longer time. Knowing what makes your invention new is critical to the next question.

Is my invention novel?

Before filing a patent, you have to know more than what is new about it: you have to know if its novel. For a utility patent application, no other invention, publication, or product for sale can contain all of the elements of your invention. In the example above, your foil guard is an improvement to an existing machine. Some of those existing machines have rigid guards, but none have your flexible guard. Is that novel?

It can be very hard to say. The patent process entails negotiating with the patent office. You will need to convince the patent examiner that the flexible guard is not the same thing as the rigid guard or the machine without a guard. What may be more difficult is convincing the examiner that the flexible guard is not obvious in light of the rigid guard. This means that the patent wouldn’t have been simply figured out by any reasonable person working in the field.

Obviousness is a frustrating argument for inventors because so many things are obvious in hindsight. To make an obviousness argument, the examiner must find all the elements of your invention in one or more references. For instance, the examiner may point to the existing machine with the rigid guard and a similar machine that is used for a different application that has a rigid guard. The examiner will then argue that it was obvious to combine the two things to make your invention.

You can argue against any of those assertions: your improved machine with the flexible guard is totally different than the original machine, the flexible guard from the other machine is totally different or that no one would think to combine them. Obviousness arguments are common and require a well-written patent application to overcome.

Am I ready to file a patent application?

You cannot patent an idea. When you first had the idea of the flexible guard you were not ready to file. You had to experiment and determine how flexible and how strong the guard had to be. You had to test materials to find one that works. As you go through that process it is important to keep records. Even though recent changes of patent law make filing early more important you still may need to prove that you invented something first to save your patent application from other, similar applications.

One way to get an early filing date without completing all the experiments is to place a bet. You may have a list of 10 materials that you think will work for your guard but no time to test them. File a provisional patent application and list all 10 materials.

You will have a year before you need to file a full utility application. That utility can expand on the use of those 10 materials, but, if you find an 11th and 12th then you cannot include them in the same patent application. Those materials are not supported in your original provisional application. Unless materials 11 and 12 come directly from using your original 10 materials, you cannot include it.

There are is no finish line for your invention, you are building an argument that your invention is new, novel, and not obvious. Before filing a patent, make sure that you have a good idea of your invention’s novelty and if you have enough of a patent application to survive patent prosecution. That will help you to file the best patent application that you can.

If you're ready to file a patent, LegalZoom can help you get started. File for a provisional patent application online with LegalZoom by completing a simple questionnaire. We'll review your answers and electronically file your patent application with the USPTO.

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Joe Runge, Esq.

About the Author

Joe Runge, Esq.

Joe Runge graduated from the University of Iowa with a Juris doctorate and a master of science in molecular evolution. H… Read more