When it comes to patent protection, the decision about whether to file for a patent is equal to if not more important than actually filing for the application itself.

Yet all too often entrepreneurs short-cut the patenting process to their peril because they are reluctant to spend precious economic resources on products or activities that they do not consider vital. They mistakenly believe that if there is nothing like their invention on the market then a patent will be standard issue.

In fact, the true test of patentability starts with a determination that the invention makes a contribution over and above what is already known or available to the public. In legal parlance, this information is known as prior art. If prior art exists, a patent application will be denied.

Patentability Searches

Just because no one is selling the invention, or something similar to it, does not mean that the invention has not already been described by someone else.  It is entirely possible that the invention was the subject of someone’s graduate thesis, or described once in a PowerPoint presentation at a meeting, or perhaps included as part of a YouTube video.

Also possible is that an entrepreneur or start-up company has filed a patent application which is then published – or actually succeeds in becoming a patent – but the entrepreneur/company runs out of money.  The invention has never been brought to market, but now a description of the invention is definitely in the prior art.

Without a patentability search, it is extremely difficult to figure out whether an invention will be considered a true step forward in technology — and thus deserving of a patent — without conducting a patentability search.

A patentability search provides several benefits:

(1) A comparison of the invention to similar inventions;

(2) Identification of feature(s) that make(s) a significant contribution over what has already been described;

(3) Suggestions as to whether further adjustments need to be made before the feature(s) would qualify as a significant improvement over what has been described before.

Certainly an entrepreneur can conduct a basic search of issued patents and published patent applications on his/her own using the USPTO website http://patft.uspto.gov/.  An enterprising entrepreneur can also search international published applications and the patents resulting from that were filed through the Patent Cooperation Treaty (PCT) using the World Intellectual Property Organization (WIPO) website https://patentscope.wipo.int/search/en/search.jsf.

But a professional patentability search will go further,  turning up references directed to previously unidentified inventions and that could make the difference between going forward with an application or going back to the drawing board.

Focus on the Features

Knowing what critical feature(s) distinguishes the invention from previously described inventions is important.  Ideally, that feature is something that is not found in any of the prior art references because that will help ensure that your invention is found to be novel. But identifying the critical feature is only step one.  Now it becomes important to figure out whether it would have been obvious to include or change that feature, which can be tricky and is seldom straightforward. Then the question becomes “should I file a patent application?”.

Generally, it does not make sense to move forward with an application if the invention is minimally different from the prior art or if the protection that can be obtained is so narrow that a competitor could easily make a small change and not fall within the boundaries of the claimed invention.  For example, if the prior art describes a chair that is constructed using glue and a new patent application for the invention only claims using screws so as to make the chair more sturdy,  then if someone makes the chair using nails they would not infringe a patent issuing from that application.  In this case it probably does not make sense to go forward with a patent application – the protection is too narrow to justify the time and expense.

Assuming that the critical feature is different enough from the prior art so that protection will not be restrictively narrow and a viable market exists for the invention, that feature(s) is what the patent application should focus on.  While all features of the invention must be described in a patent application, the critical feature(s) is the one that should be most prominently discussed and discussed in a clear and specific manner.

Why is that?  One reason is that focusing on the critical feature(s) means that there will be more description and discussion of that feature(s).  This is important because the more specific information provided as to what feature(s) is responsible for:  (1) unexpectedly improved results compared to what the prior art teaches, (2) why the feature(s) does not work the way it would be expected to work, and/or (3) how the feature(s) surprisingly interacts with other components of the invention, then the better the chance of moving the application forward to a patent.

Another reason is that by giving more “air time” to the critical feature(s), it is more likely that many variations of that critical feature(s) will be described.  This can serve as the basis for broader claims and also provides potentially important “fall back” positions should the claims need to be amended,

Yet another reason is that when the patent application is assigned to a patent Examiner for examination, the Examiner is given only a certain period of time in which to assess the patentability of the invention.  By drafting the patent application so that the feature(s) making a significant contribution over the prior art is highlighted, the Examiner can focus on that aspect – he or she does not have to waste time trying to figure out what is different and possibly missing the important feature altogether.

Deciding to file a patent application should be a BIG decision.  The time and expense involved in the patenting process is considerable and should not be undertaken lightly.  A trained professional can help entrepreneurs figure out many of the risks associated with the process.  After assessing these risks, the entrepreneur is in a better position to make the business decision whether it makes sense to go forward.

Susan Gorman, Ph.D., Esq., is principal of Gorman IP Law, a law firm focused on helping companies leverage intellectual property assets to maintain a competitive advantage, enhance market share, plan for growth and better manage resources and expenses. Through a proprietary process, Gorman IP Law helps businesses build a formal IP strategic plan that defines your business goals, establishes benchmarks and allows you to better project costs. Dr. Gorman can be reached at susan.gorman@gormaniplaw.com.

The information contained herein has been prepared by Gorman IP Law, APC, for informational purposes only and is not legal advice.