Patentability – the “Dennis the Designer” standard

Is your product, or your idea for a product, patentable?  Not every idea is.  Getting a patent requires us to jump through four legal hoops.  By name and number, they are (101) Statutory subject matter, (102) Novelty, (103) Non-obviousness, and (112) Enablement.  For purposes of today’s post, I want to discuss the 103 and 112 issues as opposite ends of a spectrum.  I have come up with a nice role-playing scenario that will help you assess your likelihood of patentability.

103.  Non-obviousness

Your invention can be patented only if it is “non-obvious.”  This means, legally, that it cannot be a simple combination of previously existing prior art that would be obvious to a person of ordinary skill in making similar products, if he had knowledge of all prior art at the time the invention was made.  In other words, your invention must involve something new and / or improved over previously existing ideas, and even simple combinations of those ideas.  You could accomplish this by adding, removing, modifying, or combining features of previous inventions, especially in ways that give rise to “unexpected results”.

Obviousness is (obviously) related to the complexity of the invention.  Simply combining two unrelated ideas into a single product (say, a “blender lamp”) is usually considered obvious.  A non-obvious invention might  combine two related ideas with synergy (a Breathalyzer car key), three or more elements (a blender lamp clock), or two elements that nobody thought could be combined (square wheels).  The more specifically your product is defined, the more unique and non-obvious (and hence patentable) it is, but the harder it is to protect.

The simpler your invention is, the more obviousness becomes an issue.  Many simple inventions end up being so narrowly defined that it does not justify the cost of the patent procedure.

112.  Enablement

You must be able to describe not only what your invention does, but how it does it.  An unsupported idea about an invention’s purpose is not enough to earn a patent.  We need to disclose enough details to enable someone who is skilled in the art of making similar products to bring your plans into practice.  The more high-tech your invention is, the more enablement becomes an issue.  It is very easy to fully enable a designer to make a spatula.  It takes much more work to enable the design of a complex app or something with many moving parts.  The bar would be extremely high for “revolutionary” or “magic” products like Star Trek transporters or mind-reading helmets.  The ideal inventions are those right at the outer envelope of current technology.

The “Dennis the Designer” test

To summarize patentability, think of your target audience as Dennis the Designer.  He is a skilled worker in your field of art.  Which conversation are you having with Dennis?

Take 1

You:  “Dennis, please build me a device (or app) that does ______________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “No problem; I have just the solution for that.”

Problem:  Oops, your invention is too obvious and fails under 103.

Take 2

You:  “Dennis, please build me a device (or app) that does ______________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “Wow, that would be a challenge.  I wouldn’t know how to accomplish that.  Can you give me some more details about how it works?”

You:  (Provide your specification)

Dennis:  “I don’t know, that sounds pretty vague and I’m still not sure how I’d put that together.  I think I’d have to do a lot of experimentation.”

Problem:  Oops, you have not yet properly enabled your invention, and it fails under 112.

Take 3

You:  “Dennis, please build me a device (or app) that does ____________________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “Wow, that would be a challenge.  I wouldn’t know how to accomplish that.  Can you give me some more details about how it works?”

You:  (Provide your specification)

Dennis:  “Oh wow, that’s a great way to achieve your solution!  I’ll put one together right away.”

Congratulations!  Your invention is patentable!

(Well, assuming that you pass the 101 and 102 tests).  It’s never simple.  When in doubt, call me and ask!

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