Understanding the process of getting a patent in the United States can be daunting, particularly for startups looking to innovate and protect their intellectual property. Patent law is intricate, and there are numerous requirements that need to be met in order to successfully obtain a patent. In this blog post, we will explore the four main things you need to show the government to get a patent, based on a real-world story.
In high school, I was a hurdler. More accurately, I picked the hardest race to run on the track: the 400M hurdles. This is a grueling race. You have to run a quarter-mile—all the way around the track—with ten 36″ high hurdles in your way. Those last four hurdles were always brutal. One time, at the conference championship meet, I got a face-full of track after tripping over hurdle seven in the preliminary round. But I still got up and placed in the finals. In patent law, even when you “trip” by getting a rejection, you have the ability to get back up and argue back to make your case.
To give us the best shot at not tripping altogether, it’s best practice to start the process of getting a patent with a strategic assessment. This is a three-step process:
1. Understand business strategy (crucial).
2. Perform a patentability assessment.
3. Make a decision.
When done in this order, step 3 is fast and can be done without hesitation. Too many founders start with step 3 and end up in decision paralysis. Read on.
The Initial Patent Assessment: Beyond Patentability
The journey towards getting a patent often begins with a business strategy rather than jumping directly into patent law. The story is common: a client contacted us at Stake with an invention he intended to build a business around. Rather than diving immediately into patent discussions, we first focused on his business strategy. The philosophy we follow at Stake is that your intellectual property strategy should be driven by your business strategy, not the other way around. Protecting patents, trademarks, or trade secrets should serve your business strategy effectively.
Determining Patent Scope
Once the business strategy was clear, we moved on to discussing the kind of patent scope that would best fit the strategy. Questions like “Should the patent scope be broad or narrow?” and “Do we need to get a patent quickly?” were addressed. The business strategy greatly influenced these decisions. In the end, the business strategy helped us determine the appropriate patent scope.
Patentability Analysis
Once we had a scope, the next step was to determine whether the invention was patentable. This involved conducting a patentability analysis, which includes two main steps: a patentability search and the subsequent analysis.
The Patentability Search
The patentability search involved defining the search scope and looking for prior art. This was a worldwide search, including places such as academic databases, online product databases, and existing patents. Check out this article to learn more about prior art.
Analyzing the Results
The next step was to review the search results for quality and relevance. We needed to ensure that the person who conducted the search clearly understood the scope of the invention. This initial review told us two things: whether the scope was correctly communicated, and whether the searcher was looking in the right places. A quality search helps tremendously in making informed decisions.
The Four Main Requirements for Patentability
1. Utility and Eligibility from 35 U.S.C. § 101
This is the first requirement and involves making sure the invention has utility. This is generally an easy bar to clear unless the invention is something like a perpetual motion device, which violates the laws of physics and is thus not useful. Eligibility, however, can be tricky, particularly for software inventions. The eligibility bar generally bans mathematical algorithms, natural processes, and abstract ideas. This can be argued around, but it often comes down to how you wrote your software claims, especially in AI.
2. Novelty from 35 U.S.C. § 102
Novelty is the cornerstone of patent law. It requires that no single prior art reference discloses each and every limitation of your claimed invention. Essentially, your invention must be new. To learn more about whether your invention is novel, check out this article.
3. Non-Obviousness from 35 U.S.C. § 103
Obviousness goes beyond novelty and asks whether multiple prior art references could be combined to disclose the invention in a way that would have been obvious at the time of filing. This step involves arguing against obviousness with the Patent Office to hone the claim scope and ensure that the invention clears this bar.
4. Adequate Description from 35 U.S.C. § 112(a)
The final requirement involves how the invention is described in the patent application. The description must be detailed enough that a person skilled in the relevant area could read your patent specification and make or use the invention. Meeting this requirement is crucial for the quality and enforceability of the patent.
Conclusion
In our story, we found that our client’s invention met these requirements: it was useful, probably eligible, novel, not obvious, and could be adequately described in a patent application. So, the client was able to make an informed decision to proceed with the patent application.
If you want to learn more about building out your startup’s IP strategy or procuring patents, contact Stake. Protecting your inventions is a crucial step in building a successful startup, and a well-rounded IP strategy can make all the difference.