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Steve O'Donnell, Ph.D. Registered Patent Attorney

What can be patented?

In the US, one can patent any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof…” Great, so what does that mean?

If we break it into chunks, it’s easier to understand.

A process, machine, manufacture, or composition of matter pretty much covers everything. Really, we’re pretty broad about what you can patent. There’s stuff you can’t patent of course, things like mathematical formulas, scientific laws, mental processes, abstract ideas are pretty obviously out. Methods of doing things and software might be patentable or not, depending on the case. Most of time we don’t have to spend too much time on whether an individual invention is the type of thing that can be patented.

Whether something is useful is also something we don’t usually have to think about. There are some really stupid inventions that have been patented--things you just can’t imagine anyone wanting. Or course, you can’t tell an inventor their idea is stupid because they’ll never believe you. Trust me, I’ve tried. that’s the thing we need to worry about. We should probably think about the requirement really being “new and nonobvious” since that’s what it really means.

New is well, new. Something no one has done before, or even thought of before. Something that creates its own market. Radio was new. TV was new. The internet was new. The electric toaster was new. Now, not everything new is going to change the world quite like the toaster did, but we can hope. The way I think of it is that if something is new, it has no direct competition. Radio and TV may compete with each other and with movies and stage performances and books for your attention, but it’s not like people spend too much time deciding whether to buy a radio or a tv because they’re very different things.

Non-obvious is trickier and trips up more inventors that anything. Something is obvious when “differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The way I think of it that is if someone familiar with the field of the invention would have been able to think of the invention without being particularly clever, then it’s obvious. Or, if you to go up to someone and ask them how to solve the same problem your invention solves, and they come up with the same idea, then maybe it’s not much of an invention. It might still be clever, it might still sell, but it might not be patentable.

For example: automatic windshield wipers. Lets say you put a water sensor on a windshield and wire that it starts the wipers. Is that an invention? Well, if you go up to just about anyone and ask them how to have windshield wipers turn on automatically they’ll probably come up with the same idea. In that case, it’s probably not patentable. I’m not sure if it’s even an invention. Now, if you built your wiper-device and discovered that the wipers were turning on in humid weather, or that they were being triggered too early or late to be effective so you designed a system where there were four sensors on the outside of the car and three of them had to be triggered to start the wipers and the speed of the wipers corresponded to how often the sensors fired...that might not be obvious.

Another indication of obviousness is whether all the parts of the invention already exist and someone could just put the parts together to make the invention. Going back to my windshield wiper example, if there was an existing product that measured precipitation which detected when rain started and reported the rate of rainfall, and all you had to do was buy it and wire it to the wiper switch...then your invention is probably obvious. Even though no one ever thought to put those things together before, and even if you didn’t know about the precipitation measuring device and build yours from scratch.

There are arguments we can make if an application is rejected for being obvious, and sometimes they work. Sometimes they don’t.

You and your patent attorney can save a lot of money and hassle by estimating the risk of your application being shot down for obviousness early in the process. Then, you can decide whether the risk is acceptable, whether you can change the invention to make is less obvious, or whether it makes more sense to save the money that would have gone to a patent application and spend it on marketing instead.