Follow These Guidelines to Decide

Patent Attorney Paul Tomita shares insights for determining whether your invention idea is patentable.

As a patent attorney, I frequently have conversations with clients, family and friends about their new ideas. The main question they usually ask is whether their idea is patentable. And most of the time, my answer is no.

You see, in order for an invention to be patentable — even before filling out an initial patent application — an idea needs to have practical utility while being a novel and inventive concept. Almost all of the ideas I hear about have utility, with abstract ideas, such as mathematical equations or naturally occurring phenomenon, being the exception.

The following guidelines are how I evaluate most new ideas for their patent potential. If you’re thinking about pursuing an idea, use the criteria below to determine whether or not it’s worth your significant time and money investment.

1. Research Your Idea

When fielding ideas, performing detailed research is a crucial part of formulating my professional advice. When researching, it’s important to assess what’s already been published and patented concerning a specific idea. Public databases such as the U.S. Patent and Trademark Office, the European Patent Office and Google Patent Search are a great place to start.

If your idea is found to be already patent-pending, it’s no longer novel, and therefore, not patentable.  This lack of novelty can be based on a single prior reference, which basically shows that at least one other person came up with the idea first.

While many inventors are disappointed to discover their ideas are not patentable, it is better to know an invention is not patentable right away rather than finding out after a significant time and money investment. In some instances, a person’s old idea can be modified with novel and non-obvious features to become a patentable product. But generally speaking, ideas that lack novelty should be abandoned.

2. Know the Novelty Loopholes

If no single reference is found that matches your idea, it does not necessarily mean an idea is immediately patentable. In some cases, the difference between an idea and a prior reference may boil down to a minor improvement. Someone, for example, may have an idea for a tennis ball painted with stripes. But painting stripes on a tennis ball is a very minor modification, rendering the idea not patentable.

In some situations, an idea previously patented can be altered into a novel product. Let’s look at the tennis ball example again. This time, a person has an idea for a tennis ball that glows in the dark so people can play tennis at night without lights.  If no single prior reference is found disclosing a glow-in-the-dark tennis ball, yes, the idea would be considered novel.

3. Understand Your Risks

The true value of prior research is determining if an idea is patentable or not. Yet even if all publicly available prior research is found, a person’s idea is not necessarily patentable.

In some cases, prior coverage may not be published and cannot be found. All patent applications, for instance, are initially confidential and normally not published until 18 months after the initial patent application filing date, with some patent applications only being published after they have been granted. Thus, if two people have the same idea and file patent applications for the same idea, neither inventor may know the other person filed a patent application to begin with.

While prior research is an important tool that can indicate whether or not an invention is patentable, there are always risks that can prevent your idea from becoming patented. In the case that two patent applications satisfy all patentability requirements, the USPTO will grant the patent to the first person who filed the patent application. The second patent application will be rejected because the first patent application is considered prior art.

Edison Nation Medical partners with numerous intellectual property attorneys, such as Paul Tomita, J.D., as a means by which to provide inventors with access to valuable information and resources related to inventing. To learn more about Edison Nation Medical or to submit a medical invention idea for full evaluation and potential commercialization, click here.