Heyl Royster


Heyl Royster


Seven Steps to Determine Whether You Can Patent Your Invention


By: Michael Kokal, mkokal@heylroyster.com

1. An idea is not enough.

Generally speaking, you don’t have to have a working prototype to apply for a patent, but in your patent application you will have to be able to describe the invention in detail and show how it will work. You will have to describe how the invention is constructed by one ordinarily skilled in your field.

2. Do you have the right subject matter?

Not all ideas are subject to patent protection. If you file a patent, the patent office recognizes three different types of patents: Utility Patents, Design Patents, and Plant Patents. These are described as follows:

  • Utility Patents – The United States Patent and Trademark Office (USPTO) will grant a utility patent to an inventor who discovers any new or useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement of the same. An invention meets the requirement for utility under U.S. law if it provides some benefit and is capable of use, although most inventions will be able to meet this requirement;
  • Design Patents – A design patent may be granted to an inventor who invents a new, original and ornamental design for an article of manufacture; or
  • Plant Patents – Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of a plant.

3. Are you patenting an invention of your own?

A patent can only be applied for in the name of the actual inventor or co-inventor of the invention. It is not enough to have made a financial contribution to the product to be considered an inventor.

4. Has your idea already been patented?

Your invention must be “novel” in order to be eligible for patent protection. This means that the subject matter of the patent must not have been disclosed prior to the date of the invention. For example, if the invention has been previously made public, sold, or made available to use, or was disclosed in a prior application, the patent office may very well determine that your invention is not “novel.”

5. Is your idea or invention “non-obvious”?

Your invention must be “non-obvious” in order to be eligible for a patent. Here, the patent office will look to determine whether your invention is easily understood to a “person having an ordinary skill in the art” in which the patent is intended. In other words, your invention may not be something that your industry already knows about. In order to make this determination, the patent office will look at the scope and content of existing knowledge and technology in your industry and the difference between your claimed invention and what’s already known in the industry.

6. Is your invention a new and useful invention?

For “utility” patents your invention must also describe new and “useful” process, machine or composition of matter. In other words, the patent office requires that the patent provide “utility.” If an invention is unmarketable, or useless to the public, there is no need to patent the item.

7. Were you the first to file for the patent?

In the past, the patent office granted a patent to the first inventor to invent a new invention. That is no longer true. As of 2013, Congress passed a law that grants a patent for the inventor who is the “first to file” for the patent. In other words, if you fail to patent your invention and someone else files for a patent for the same idea, you may be legally prohibited from taking advantage of your invention.

If your new idea meets each of these requirements, then it may be time to speak with a patent attorney about filing for a patent to protect your invention. At Heyl Royster, we would be happy to assist you in this endeavor – please contact any of our attorneys in our Intellectual Property Practice for assistance.