Definition of a patent: “A grant made by a government that confers upon the creator of an invention the right to exclude others from making, using and selling or offering for sale his invention for a set period of time.” (35 United States Code, Section 154)
In many companies, the question often arises whether some improvement in a machine or process is “patentable.” This issue is typically referred to the person within the organization who appears to be the most qualified to answer — usually an engineer working with this type of improvement. Unfortunately, the individual is being asked a serious legal question camouflaged as a technical one.
Oftentimes, the engineer, who is trained to break down and analyze technical problems, is given the task of evaluating patentability because of his or her knowledge of the technology. Regrettably, there are several traps for the unwary and a flawed analysis results in missed opportunities or dangerously unprotected business assets.
Typically, the evaluator dissects the invention into its constituent parts and evaluates each as to whether he or she believes it to be patentable. Alternatively, the company's technical staff will tend to look at just the heart of the invention.
Sometimes the technical “importance” is the dispositive factor. Unfortunately for the company and the inventor, none of these approaches yield sound decisions on patentability.
There are just two simple legal criteria for determining if an invention is patentable, assuming the subject matter is capable of being protected under law by a U.S. patent. The first is whether the invention is new. This is as simple as it sounds: whether the invention was conceived by someone previously.
The second criterion is less clear — whether it is “nonobvious.” Essentially, this describes whether the invention represents some level of technical effort beyond that known by practitioners in that industry and easily achieved.
Only certain inventions can be protected by a U.S. patent. These are apparatus and devices, machines, processes and methods that are functional or utilitarian in nature, as well as articles of manufacture.
Classic examples of inventions that can be patented include sewing machines, the thread used with the sewing machine and the needles used to stitch the thread. Protectable subject matter can also include the computer programs and algorithms used to operate these types of machines and any improvements to them. The product made by the machines and processes can also be protected, as can business methods.
First, any invention must be evaluated as a whole. The classic mistake made by those evaluating patentability is to overlook the fact that all patentable inventions are made up of old elements in new combinations. It is the combination as a whole that is evaluated for novelty and nonobviousness, not the elements individually.
Computer programs have been written to hold details of pictures and other complex images, while sewing machines have been made to move in complex ways and use a multitude of threads. While both are old, the combination of a computer-controlled sewing machine that can embroider an image on cloth is (or was) not, and that combination is subject to patent protection.
Accordingly, the proper analysis looks at the invention as a whole combination of elements or steps to see if it is both new and whether it is nonobvious. However, it is not proper to use the invention as a roadmap through prior patents or as simply a parts list that finds bits and pieces of the invention in a variety of sources.
With regard to nonobviousness, one does not have to create an invention that rises to the level of a “significant” technical advance in order to be patentable. The key question concerns how much time, effort, and work were required to create the invention and perhaps whether the work in this area was pointing in the direction of the invention. Also, a stroke of genius is not required. The invention can simply overcome a problem or shortcoming with a known process or machine.
The tendency is to use an engineering yardstick to evaluate patentability. Too often technical evaluations have disregarded valuable intellectual property of a company on the basis that improvements were deemed to be insufficiently sophisticated or technically advanced. In this way improvements which are important, perhaps vital to the company, are filtered out of the business evaluation process.
Although patent protection should be used judiciously with regard to protecting the inventions, machines, processes, computer programs and the like of a company, increments in technology sometimes should be protected because they only come after great effort and expense on the part of the company. Alternatively, the marketplace may be so highly competitive or so mature that small improvements can be leveraged into a greatly enhanced competitive position.
Finally, new technology should be evaluated with input from a minimum of three areas within the company. The first is, of course, engineering. The second is marketing and business planning. And the third is legal.
While technical input from an engineer is vital to this process, it is not the sole one.
J. Kevin Grogan is a patent and trademark lawyer and partner with intellectual property law firm McCormick, Paulding & Huber LLP in Springfield, Mass., and Hartford, Conn.