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Inventors Handbook
C. Assessing the Idea
Before investing a considerable amount of time, energy and money
on an invention, potential inventors should consider two questions.
First, can the invention be patented? This refers to whether or
not an invention is eligible for patent protection. The second question
is; should the invention be patented? This refers to whether or
not an invention is worth patenting even if it can be patented.
I. Is Patenting Possible?
In order to obtain a patent, an invention must be novel (“new”),
useful, and non-obvious. Any invention is novel as long as it has
not been known or used by others in this country, or patented or
described in a printed publication in any country before the date
of invention. The invention must be different in some way from all
other previously known inventions. Other novelty rules include the
one-year prohibition on patenting inventions that were publicly
used or on sale (as mentioned above).
The usefulness requirement can be satisfied as long as an invention
serves some utilitarian function. This is a relatively easy standard
to overcome, and even minor utility satisfies the requirement.
Finally, the invention must be non-obvious in light of other inventions
in the Art. This means that the improvements sought to be patented
cannot be improvements that would be obvious to someone of similar
skill as the inventor seeking the patent.
II. Is Patenting Practical?
Even if an invention can be the subject of a patent, it may be impractical
to patent the invention for one or more of the following reasons:
It will be difficult to detect and deter infringers, the invention
has little market value or will have a short lived market value,
the goal of the invention can be accomplished in a variety of ways,
or in situations where the invention is best preserved as a trade
secret.
III. Research: The Idea and the Market
In order to assess the question of whether a patent application
should be filed, it is important to research other inventions in
the Art (the field of the invention) and the commercial viability
of an improvement in the marketplace. This assessment should include
the following:
Potential Customers: Prospective customers who might use the invention
can provide resourceful insights, critical analysis and feedback
on existing similar products as well as suggestions for improvements.
Competing Products: Existing products in the Art can be a valuable
resource for predicting the success of an invention. In particular,
the respective advantages and disadvantages of products already
on the market; and how they compare with each other can yield valuable
information.
The Market: If the market is very small, or of a limited duration,
it may be advisable not to file a patent. Patent applications typically
take between two and three years to issue, and in very small markets,
the nature of the competition may not warrant the expense of obtaining
a patent. It may be advisable to visit trade groups or industry
meetings such as trade shows to see recent developments in the art
and the market.
Market research firms specialize in researching potential products,
and may be a useful source of information. These firms can be useful
in determining the potential competition your product will face,
demographics for customers, and financial information regarding
the economic feasibility of the invention.
Logistic Problems: If the invention can easily be reproduced by
others, and in particular, if it will be difficult to detect or
deter infringers, it may not be advisable to seek patent protection.
If the invention fails to provide a competitive advantage, such
as offering a cheaper or better alternative to inventions known
in the art, a patent may be inadvisable. If there are multiple inventors
who have not assigned their rights in the invention, they will have
the right to practice the invention should a patent issue, diluting
the patent rights. Finally, if filing a patent on an invention will
necessarily involve the disclosure of trade secrets – since
patents are public documents – it may be inadvisable to file
an application.
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