Startups guide: From idea to patent

Startups often have a great idea but there is plenty they should know before beginning the US patent process, says Reed Risenmay of Birch, Stewart, Kolasch & Birch.

I love it when people ask me what I do for work. My reply “I am a patent attorney” is usually met with a mix of confusion and mystery. But that is not the interesting part of the conversation.

The interesting part comes when they realise that I work with inventors and inventions. Very often this realisation is followed by my favourite line “I have a great idea for [insert dream idea here].”

This article is for all the dreamers out there who have a great idea. By the end of this article, dreamers will have a better idea about whether a US patent can help make your dream come true.

Some ingenious ideas are patent eligible, and others are not patent eligible. Generally, a business idea is not patent eligible, but a useful product or a method of making a product is patent eligible. If the product itself, or the novel aspect of the product, isn’t useful it might still be eligible for a design patent.

In the US, software is not patent eligible by itself, but a machine running the software might be.

Similarly, a program that calculates the perfect amount of time to toast a piece of bread is likely not patent eligible, while a toaster that implements the program to toast the piece of bread, would be.

Unpatentable idea? Don’t worry

Simply because an idea is not patent eligible, does not mean that it is not a brilliant idea.

Many business enterprises have been built on ingenious ideas that were not patent eligible. The business idea of selling books online is not patent eligible, however, Amazon has been tremendously successful.

If your dream is to cultivate the most delicious apple ever, you are in luck! Living organisms may be patented, if the living organism is not a human being. A plant variety patent can be obtained for plants which can be reproduced asexually, such as apple or plum varieties, which are reproduced using grafting.

A utility patent may also be obtained for living organisms with manmade characteristics. For example, a naturally occurring bacteria is not patent eligible, but a genetically engineered bacteria may be patent eligible. Similarly, a naturally occurring compound is not patent eligible.

However, a process of harvesting, refining, or purifying the naturally occurring compound may be patent eligible.

AI: Not always patentable

Many people dream of using artificial intelligence (AI) or other machine learning models to automate tasks previously performed by humans.

These are great ideas! However, they might not be patent eligible. Having an AI perform a task that can be performed by a human mind is generally not patent eligible. Luckily, a practical application included in the patent claims can change this.

For example, an AI that reads through emails and labels them as spam is likely not patent eligible because these actions can be performed by the human mind.

However, an AI which reads through emails, detects malware in emails, deletes emails including the malware, and blocks senders of the deleted emails is likely patent eligible because it has the practical application of improving security.

Similarly, a claim that only includes automation of mathematics, or tasks which may be performed by the human mind, whether using AI or not, is not patent eligible.

However, additional elements that provide improvements to a technologic field can cause an automated task or calculation to be patent eligible.

For example, a generic computing device which receives movement information and calculates a position with the movement information is not patent eligible because the calculation could be done in the human mind or with the assistance of pen and paper.

However, a computing device which uses a custom array of sensors or other hardware that interacts with the real world to provide an improvement in sensing capabilities to track a device’s location is likely patent eligible.

Dreaming big

If your dream invention is really big but you haven’t actually built the invention, you may still be able to obtain a patent. Before a patent can be issued, the inventor needs to have reduced the invention to practice.

This means, the inventor does not necessarily have to build the invention. This is evidenced by performing a search in Google Patents for “space farms” where you will see that there are many patents issued for inventions that have likely never been built.

The inventor, however, must be able to describe the invention well enough that someone else could make use of the invention. For example, if your dream is to build a teleporter, you cannot obtain a patent on that dream invention unless you can describe how to build a teleporter.

To obtain a patent, the invention must also be sufficiently novel and non-obvious. A patent cannot be issued for something that you did not invent nor for something that is an obvious variation or combination of other inventions.

For example, a car with an electric toothbrush charger inside may be a new idea, but it is obvious to plug something into the car’s electric outlet. It is unlikely that a patent could be obtained for such an invention unless there were additional non-obvious elements.

Who’s the inventor?

Many inventions require the input of more than one person.

The inventors listed on a patent application are determined by what is claimed within the patent application. A person may contribute to the building of the invention and not be an inventor.

For example, a person who designs a stand for a new surveying device is not listed as an inventor in a patent application for the surveying device, if the stand is not included in any of the claims.

Therefore, if a person did not conceive of any feature that is claimed in the patent application, then that person will not be listed as an inventor.

If you, as a dreamer, plan to take your dream invention worldwide, one patent may not be sufficient. A patent issued in the US secures the rights of the inventor in the US only and does not secure the rights of the inventor outside of the US, with limited exceptions, of course.

Patent laws vary based on geographic areas. It may be possible to obtain a patent in one country but not in another country. Unfortunately, even if your dream is patentable, you may not be able to practise the invention.

A patent does not guarantee the right to make the invention.

Rather, a patent secures the right of the inventor to prevent others from making, using, selling, or importing an invention in a specific geographic area.

A separate patent could possibly be infringed by making, using, selling, or importing your invention. The owner of a patent related to an improved device might not be able to make the improved device because the original device design is still protected by a patent. Additionally, laws against making weapons of mass destruction could also make it illegal to build various devices.

Defensive tools

In summation, patents are excellent defensive tools for securing your dream.

During the lifetime of a patent, the patent can be used to prevent others from competing with your dream.

An unscrupulous potential investor is far less likely to try to “cut you out” and steal your dream if they know you have a patent application pending. This is because a patent would allow you to shut down the scoundrel’s infringing enterprise.

A foreign competitor trying to move into your national market may also be dissuaded by patents, which could be used to prevent that foreign competitor from importing and selling competing products.

No matter what your dream is, there is value in considering whether a patent may help you achieve that dream.

Personally, I love helping people achieve their dreams and secure their patent rights.

Reed Risenmay is an associate at BSKB specialising in all aspects of patent prosecution in the electrical arts and IT services. He can be contacted at reed.risenmay@bskb.com