Can I Patent My Idea?

By William J. Hoofe IV

Strictly speaking, an idea alone cannot be protected by a patent. Patents protect inventions,1 so it is essential for inventors, or those who aspire to become inventors, to think in terms of creating an invention. Interestingly, the (elusive) concept of a dichotomy between idea and invention in patent law produces the apparent paradox that, while every invention started as an idea, not every idea qualifies as an invention.

Ideas frequently arise in response to identifying a problem or finding an opportunity for innovation. Great ideas tend to develop gradually after studying a problem in depth—but not always.2 "Sometimes, an insight hits like a bolt from the blue."3 On occasion, a person recognizes a problem not previously identified and the eureka moment hits.

No matter how your idea arose, if you have decided that your idea is worth developing, or at least exploring, then you need to set down in writing, both, a general description of your concept, as well as a detailed description, so that, at some point, the idea will be specific enough for it to be considered an invention.

How do I get from my idea to an invention worth protecting?

Put simply, cultivate your idea. If you are at the idea phase, to move from idea to invention, you need to describe your idea in highly specific terms—so that it no longer is "merely an idea."

Brainstorming sessions are used not only to generate new ideas but also to combine and improve ideas. To kick-start the creative process, ask open-ended questions to gain insights and expand your idea. As you answer the initial questions, there's a strong chance other questions prompted by your answers will come to mind. Examples of the types of questions to ask when brainstorming include: "what if" questions (e.g., "what if this element were changed in this manner"); "how" questions (e.g., "how can the cooling rate be selectively controlled," or "how do I dampen the vibration"); and so on. By the nature of brainstorming sessions, no ideas are bad ideas because every idea can provide stimulus for additional ideas.

Use every idea to spark new ideas, "because brilliant solutions are often discovered in the oddest ways."4 Recognize that, sometimes, ideas come to us not when we are consciously trying to solve a problem but when we aren't seeking them during our recesses between the creative, problem-solving periods.

The point in asking questions—and writing down the answers—is for you to be able to generate more ideas and possibilities. The objective is to conceive of and develop additional details that describe how the invention might be implemented in practice.

Invention Disclosure

Oft at the front-end of the trail from idea-to-invention-to-patent is an invention disclosure. An invention disclosure is a confidential document written to describe an invention. The (albeit lofty) aim is to provide in highly specific terms the various nuances of each and every aspect of the invention.

It is strongly recommended that you describe the previously unknown key features of the invention and explain why those features are not obvious in view of the existing technology or solutions and why those features are advantageous or valuable. A qualified patent attorney can help you describe various options, combinations, and characteristics that make up several different versions (or, in patent parlance, embodiments) of the invention.

Abstract Ideas

Recognize that no matter how brilliant your ideas are, even brilliant ideas may be excluded from patent eligibility because of the abstract nature of the ideas. In the words of the U.S. Supreme Court, "abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."5 As such, abstract ideas are excluded from patent eligibility based on the concern that "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it."6

However, where the invention involves a particular, practical application of the abstract idea, the invention may nonetheless be eligible for patent protection. A qualified patent attorney can help you determine patentability of an invention.

Inventorship | Conception

In the realm of patent law, other (elusive) concepts to be aware of that may potentially present obstacles to securing patent protection for your invention include issues concerning inventorship or conception of the invention.

In the United States, failure to correctly name the inventor(s) of a claimed invention in an application for patent is a proper ground for rejecting the application or invalidating any patent that may issue from the application. A qualified patent attorney can assist in correctly identifying the inventors that should be named in a patent application.

Written Description | Enablement

To obtain a patent, the "specification" section of a patent application must contain an adequate disclosure of the invention for which patent rights are sought. This patent law requirement is known as the written description requirement. In the words of the courts, the "function of the [written] description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him."8 The premise is that requiring an adequate disclosure of the invention "ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent."9

In the United States, a patent application must include a complete disclosure of the invention such that a person of ordinary skill in the area of technology related to the invention can, after reading the disclosure, make and use the claimed invention without an unreasonable amount of experimentation. This patent law requirement is referred to as the enablement requirement. The courts have stated that written description and enablement are separate, albeit intertwined, requirements.10

Recognize that the level of detail needed in a patent application may vary depending on the simplicity or complexity of the invention and the level of ordinary skill of persons familiar with the area of technology related to the invention.

Best Practice

A patent application is best filed before any public disclosure of the invention. In the United States, there is a one-year grace period from the inventor's own public disclosures of the invention to file a nonprovisional patent application or a provisional application for patent. Certain international jurisdictions do not afford a grace period and any prior enabling disclosure of the invention in the United States may foreclose the grant of patent protection in those countries having an "absolute novelty" requirement.

  1. See, e.g., Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1345 (Fed. Cir. 2010) (en banc) ("Every patent must describe an invention.")
  2. Irvine, W. B. (2015). Aha!: The Moments of Insight That Shape Our World. New York, NY: Oxford University Press.
  3. Id.
  4. Harris, L.V.A. (2014). Idea Engineering: Creative Thinking and Innovation, p. 104. New York: Momentum Press.
  5. Gottschalk, Acting Commissioner of Patents v. Benson et al., 93 S.Ct. 253, 257 (1972).
  6. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct., 1289, 1293 (2012).
  7. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson On Patents 532 (1890).
  8. In re Edwards, 568 F.2d 1349, 1351 (CCPA 1978).
  9. Manual of Patent Examining Procedure (MPEP) § 2162 "Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph."
  10. See, e.g., Vas-Cath Incorp. and Gambro, Inc. v. Sakharam D. Mahurkar, and Quinton Instruments Co., 935 F.2d 1555 (1991) (citing In re Wilder, 736 F.2d 1516, 1520 (Fed. Cir. 1984), cert. denied, 105 S.Ct. 1173 (1985)) ("'The description requirement is found in 35 U.S.C. § 112 and is separate from the enablement requirement of that provision'") and (citing Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421 (Fed. Cir. 1987), cert. denied, 108 S.Ct. 1735 (1988)) ("'These requirements may be viewed separately, but they are intertwined.'")

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