Turning Your Idea into Innovation

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution. Practically anyone could be an inventor because the first step on the path to inventing is the generation of an idea. Unfortunately, ideas cannot be patented. For many individuals the path to invention stops right there. But it doesn’t have to stop there. Frequently you just need some help collecting thoughts and a little push in the right direction. In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.

One thing that many individuals and professional inventors employed by corporations (i.e., “corporate inventors”) have in common is that they frequently do not perceive what they have come up with as being worth patenting. So many have the notion that a patent is something that gets awarded only to breakthrough innovations. As interesting as the philosophical discussion about whether getting a patent should require a breakthrough innovation is, it is important to understand that patents are not awarded only on significant breakthroughs, or only to those in the running for a Nobel Prize. In fact, it is far more common to have a patent awarded to cover an improvement on an existing product.

Improvements are particularly interesting and among the most commercially valuable innovations. For example, if you can improve upon something already in the marketplace you know there is already an existing market for the underlying product or service. If consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success than if you were developing something that heretofore had never existed and you needed to educate the consuming public in order to create a market. This was what Thomas Edison famously learned and why so many of his inventions were improvements.

While it can be quite useful to have some kind of a prototype, even a crude prototype that you create yourself, there is no requirement that a prototype exist before you file a patent application. This statement catches many by surprise and they think it has to be incorrect. It is only a slight exaggeration. The rules of the United States Patent and Trademark Office say that the only time you must produce a working prototype is if you are claiming a perpetual motion machine. Our current understanding of science says that a perpetual motion machine cannot exist, and the USPTO has grown tired of inventors claiming they have invented a perpetual motion machine. So as long as you are not going to claim a perpetual motion machine all you have to do is describe your invention in writing, through the use of text and illustrations, so that others can understand what you have, how to make the invention and how to use it.

There are, in fact, four primary patentability requirements. An invention must be defined in the claims to contain patentable eligible subject matter, it must be useful, it has to be novel (i.e., new) and it must be non-obvious. If you satisfy these four substantive patentability requirements you are entitled to a patent on your invention so long as you adequately describe the invention. There is a fifth requirement relating to describing your invention. The law that governs adequate description is found at 35 USC § 112. In reality, it is probably better to think of the description requirement as the core to patentability. If you can describe your idea with enough specificity you no longer have an idea, but rather have migrated past what I refer to as the idea-invention boundary, which means you have something that can be patented if it is unique. For more on the patentability requirements please see my 4-part series: Patentability Overview: When can an invention be patented?

The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the relevant technology will be able to make, use and understand the invention that was made by the inventor. For the most part, and from a legal perspective, this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.

The enablement requirement requires the inventor to describe his or her invention in a manner that would allow others in the industry to make and use the invention. Enablement looks to place the invention generally in possession of the public. In the words of the great Thomas Jefferson, we are only going to suffer the embarrassment of granting a patent and subjecting ourselves to giving the inventor exclusive rights if the public gets some benefit. The benefit is the information and ability to make and use of your invention once the patent term has expired.

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