Category: US Patent Practice Tips

Where to start?  With questions of course!

Getting a good patent depends both on what is in the patent application and also how it is written.  Getting the what right might be obvious, but getting the how right can save not only headaches, but huge amounts of time and money.  So this space, which over the coming months will be devoted to suggestions and strategies for US patenting, will sometimes be devoted to the what (e.g. patentability, invention disclosure, etc…) and sometimes to the how (e.g. USPTO formal requirements, initiatives, etc..).

But before we dive into the ‘whats’ and ‘hows’ of US patent practice, I’d like to ask other, even more basic, questions:

1. Why do you want to get a US patent? What do you think you will gain from it? Will it help you to actively exclude others from your technology space so that you can proceed in the US market without competition? Will it help you to attract investment?More than just the importance of self-awareness, your goals (or your client’s) will also drive your decisions during application preparation and examination.

2. Can your type of technology be patented in 2017? And do you care? It (still) cannot be said enough: Fewer types of technology are patent-eligible in the US today than were just a few years ago. So before you file a patent application in the US, it is well worth considering whether a patent is even possible.  But despite the difficult outlook for certain technologies such as medical diagnostics, software, and isolated biological materials, you or your client may not actually care about eligibility fights (see question #1).  If the value of a patent application is its pending status; or the creation of prior art to prevent others from registering their own patents in your area, then current patent eligibility challenges may not matter.

So do you still want a US patent? Then come along, and together we can hopefully answer the ‘what’ and ‘how’ questions, and make your patenting experience more successful, and less difficult.

Looking to the next tip: What do you mean I can’t patent my new app?!

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Note: Our second tip in a series. To view previous articles please click here.

Patents are an invention of society . It goes like this: you have new technology, the public wants it, and to get you to tell us about it, society (through enacting laws) invented a time-limited monopoly that we call a patent! It sounds simple, except here’s the catch: because patents are society‘s invention, society gets to decide which inventions it wants and considers to be deserving of a patent. This is known as “patent-eligibility”.

In the US, the issue of eligibility has developed over the last few years into a critical problem for technologies in certain fields. But is this something you need to worry about?

That depends: Is your technology related to software (including mobile apps), business methods, isolated biological materials, or medical diagnostic methods? If the answer is “yes”, stay with me for a few more minutes; it might save you time, money, and years (not to mention tears) of frustration. Here are three basic tips:

Recognize that a problem exists. Your app may do fantastic things across our interconnected world. You may have discovered a new way to diagnose a disease that until now had been beyond detection. You might be saving lives with a newly-discovered and purified phytochemical. But none of these things will make an invention patent-eligible if it does not meet the USPTO’s standard, which cares nothing for hard work or elegant experimental design.

Talk to your US patent attorney – early! You know your invention better than anyone, but your patent attorney (or her US colleague) can help determine if your technology may have problems meeting the current US patent eligibility standards. These issues are best discussed before a patent application is written. It may be that there is no eligibility problem. It may be that there is a problem, but your patent attorney can describe and claim your invention in a way which will make all the difference. Or it may be that with a bit more time in Research and Development, your technology can gain the technical features it will need to meet the current US standards. But these are issues to discuss and consider early, not the day before you need to file a patent application. 

Be flexible. Be open to a range of IP strategies. Not ALL aspects of your technology may be US patent-eligible, but other not-so-obvious sides to your invention might be, and can still result in your receiving a valuable patent.

And lastly – don’t forget that patents are not the only types of IP relevant to your business! Trade secrets, trademarks and designs are all ways to gain market advantage and keep value for you and your investors.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!