As an initial matter, I would note that no matter how good the invention is, there is never a guarantee that it will result in a patent being issued by the USPTO. The patent application could be poorly drafted, thereby allowing a patent examiner to reject it, or the patent examiner could take a position against the applicant that is difficult to overcome. If the patent examiner is wrong, but will not budge in his or her position, the only way to get a favorable result may be to appeal the patent examiner to an appeal board, a process that will take significant time to get a result from, and also cost a lot of money.
Additionally, simply procuring a patent is not always the best goal. Rather, procuring a good patent with quality claims is a better goal. It is often not that difficult to simply procure a patent. More specifically, crafting claims with a scope that narrowly defines the invention results in patents being issued far more often than claims with a scope that broadly defines the invention. However, designing around these types of patents, narrow patents, is not difficult for competitors who are able to read and understand the claims. In these situations, competitors can simply copy the majority of the patent owner’s invention, but deviate in a small way to take their competing product outside of the scope of the patent. For example, if a claim of a patent requires a bar to be threadabtly connected to a base, a competitor could likely simply make the exact same invention, but connect the bar to the base via a latch mechanism. A smarter way to craft the claim would be to say that the bar is coupled to the base. This claim would cover embodiments wherein the bar is coupled to the base by both a threadable connection and a latch mechanism. Accordingly, it is far more desirable to procure from the USPTO a patent on broadly drafted claims. Doing so will make it more difficult to copy the invention disclosed in the patent.
Because procuring a patent is costly, endeavoring to procure one when you have a low likelihood of success is risky. To procure the patent, the big considerations to keep in mind are that your invention has to be new and nonobvious. A good practice to get a sense of this before preparing and filing an application is to conduct a prior art search. This can be done in varying degrees, but it essentially involves searching databases of existing technologies to see whether the applicant’s invention has already been invented, or whether something close to the inventor’s invention has already been invented.
Most patent attorneys are capable of performing this type of search, but there are also firms that specialize solely in this practice. These search firms typically charge a lot less than patent attorneys to search. Typical databases that are searched are the USPTO’s collection of patents and patent application publications, Google patents, as well as other specialized softwares. Once the results of the prior art search have been obtained, it is best to have a skilled professional evaluate them. If the results of the search show that the invention is novel and that an obviousness position would be very weak, then you have a relatively high likelihood of success of procuring a patent, although there are no guarantees, even for very good inventions. If the results show that the invention is novel, but that an obviousness position would be relatively strong, then there is a reduced likelihood of success. For example, if the majority of the invention is found in one single reference, but a minor, non-crucial aspect of the invention is missing, obviousness would be easier to prove by a patent examiner.
It is also worth noting that there is no requirement for a search to be conducted in advance of filing for a patent. If an inventor is very skilled in his or her art, and believes with a high degree of certainty that there is nothing out there similar to his or her invention, then that inventor can simply file a patent application without having conducted a prior art search. This route may be riskier, but if the inventor is very confident, it could save on unnecessary costs.
In sum, knowing whether an inventor has a high likelihood of success in obtaining a patent involves knowing the state of the prior art. This is often done via prior art searches by patent attorneys / search firms, although an inventor’s knowledge of the prior art can supplement it. Evaluation of whether there is significant deviation of the inventor’s invention from the existing prior art provides the best measure of whether an invention has a high likelihood of maturing into a patent.
This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.
©John P. Powers, 2020, all rights reserved.