This guest blog was written by patent attorney David Stein of Cooper Legal Group, a firm that specializes in providing a range of intellectual property services to clients in high-tech industries. David resides in Fairfax, VA, and frequently visits the patent office to conduct examiner interviews in furtherance of patent prosecution. David’s practice focuses on patent procurement for computing technologies, including software and electrical and computer engineering.
When individuals and companies develop valuable ideas, their first question is: "Can I patent this?"
Patents generally involve concepts that are functional and useful. Artistic works, such as books, music, and videos, are typically not patentable (but are likely protected by copyright); and other types of information, such as proprietary data, can be protected by trade secrets.
The US Patent Act identifies four classes of patentable inventions:
- Machines (devices composed of interoperating parts);
- Manufactured articles (products made from raw materials);
- Compositions of matter (combinations of chemicals); and
- Processes (sequences of steps).
In general, these terms are broadly defined. "Compositions" can include living organisms and food products; "machines" can include umbrellas and microscopic robots; and "processes" can involve computation.
Also, some ideas may be described in different ways that fit several of these categories. A new metal alloy might be patented as a composition; as an alloy-generating process; and as a machine or manufacture that is made from the alloy. It may be possible to combine these distinct ideas into one patent, or to obtain different patents for different aspects of a multifaceted idea.
On the other hand, patents cannot be obtained for "abstract" ideas, such as laws of nature, physical phenomena, and mental processes. This exclusion includes concepts that utilize technology only in an incidental manner, such as financial transactions, advertising and sales tactics, and basic biological processes. This question can be difficult to answer in such areas as business processes, software, and drug development research.
It is notable that patents often focus on the specific element of the invention, rather than products in which the invention can be used. For example, a new type of spark plug for automobiles may be patented as a new filament, or as a fuel ignition device. Actual products are usually described in patents only if the invention depends on some of these details in order to work properly, or if the invention addresses a product-specific problem. It may be tricky to describe the invention in a way that is not limited to specific products, and also not so “broad” that it might be considered “abstract."
Finally, the invention must satisfy some basic requirements of patent law.
Of course, the invention must be functionally different from known technologies in the same field. Also, the invention must be explained in sufficient detail for an average technologist in the relevant field of technology to use it. While a working prototype or proof of concept is not required, the invention cannot have any significant gaps or problems that still need to be solved.