Is Your Idea Patentable? with Jason Webb

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I'm Jason Webb. I'm an intellectual property attorney at Pearson Butler. My practice is all over the country. I have plants all over the place. It's federal practice, so I'm not limited just to my state. And I also have a lot of international clients. One of the things that a lot of my clients ask me about is how can you tell whether something's patentable or not? And so one of the key pieces is, first you want to look at, is it something that really is appropriate for a patent, or maybe it's appropriate to be protected in some other way. So, for example, your branding, the name of your company, the names of your products, those are all protected under trademark. Books that you write, art that you create, songs that you put together, videos that you put together, that's all copyright. Things that are secret that you can keep a secret, they're valuable because they're a secret. Those are trade secret. And occasionally you have to make a choice between protecting something with trade secret protection or patent protection. But just remember, if you can't keep it a secret, if it's the inner workings of your product that you sell to people and they can just take it apart and see what it does, that's not a trade secret anyway. So once you've kind of narrowed it down that we're looking at technology, we're talking about methods of doing things, processes, those sorts of things, gadgets, apps, software. Now we're in the world of patents. And what you want to do when you're looking at patentability is there are four key requirements to patentability. The first one is that it needs to be patentable subject matter. And patentable subject matter just means there's sort of a list of things that we're able to get patents on and things that we're not able to get patents on. For example, if you are a physicist and you discover a new law of nature, you discover anti gravity, right? You can't get a patent on anti gravity because that's a law of nature. If you are a mathematician and you come up with this wonderful proof, that's just math, that's just algorithms, right? And so we're not going to be able to get a patent on just the algorithms or just the mathematical principles that may be discovered. Another piece is that there's a real hard line that we draw on owning people, right? And so there are some, a lot of cases out there that say what you can own and what you can't own in gene sequences and things like that. Anyways, so it's this list and probably the best way to figure out whether you're on the list or not of what's patentable subject matter is to talk to a patent attorney. But those are some guidelines in the world of software with patentable subject matter, that line is actually changing all the time. In the past 10 years, it's probably changed 15 times where that line is drawn. So that's another thing where you'll want to talk to a patent attorney. If you've got an app or software that you wanted to patent, is it patentable subject matter? How do we make it patentable subject matter? A lot of times it's how you describe it and what you try to own. So, so that's the first one. The second one is it needs to be useful. Now this is a requirement, but it's not a very high requirement. I know there's a patent out there on a self butt kicking machine which is this crank that you turn and it's connected through a pulley to a wheel and the wheel has these shafts on it with boots at the end of it. And as you turn the crank, the boots kick you in the butt while you're turning it. And that's useful. So most everything that you would bring to a patent attorney to ask questions about is going to be considered useful. The place where that gets a little dodgy is when you have developed something and really it's just decorative or it's just design. So it's where the utility is that it's beautiful or it's interesting. Then we're on this edge of whether it's useful or not. And so that's something that you definitely want to talk to a patent attorney about. The third one is that it needs to be new. This is something I think that a lot of people just intuitively know because most people that come to me with an idea that they want a patent, they say, well, I went out looking for it, I tried to buy one and I couldn't find it. Or I've been in this industry forever and I've never seen anybody make anything like this that's talking about whether it's new or not. And so in order to patent something, it has to Be new. Sometimes people will say, well, my patent's expiring. Can I just refile that same patent and restart it? No, because you would get rejected based on your own patent because it's no longer new. And so that's why you can't just keep renewing patents forever. You have to keep improving the technology if you want to keep filing patents. And typically when you hire a patent attorney to do patent research, that's usually the research that you're doing. I call it a basic patent screening search. Sometimes people call it a patentability search. There's several names for it. But basically you're trying to look around and see is this new or not? Because if it's not new, then it's not a good candidate for a patent. If it is new, then it may be. The last one is it has to be non obvious. And this is sort of like a step up from whether it's new or not. Even if something's new. Let's say, for example, you've invented a mouse and the mouse is a color that no one has ever done before. So that would be new and it would be useful. And the mouse itself is certainly patentable subject matter. But what's new about it is this new color that you've done, right? Well, the thing is, is that it's obvious to make things different colors. And so that's one of the things that's obvious. Right? And so since it's obvious to do that even though it's new and it meets all the other requirements, you're not going to be able to get a patent on a mouse that's different color unless there's something so unique and special and functional about that color, that the color itself is a functional aspect of the mouse. Right? So let's say that it was that color. And because it was that color, you could use an app on your phone in conjunction with the mouse and it tracks the mouse in a particular way. Right now we're starting to get into functionality. And so then maybe the color really does make a difference. And it's not just decorative, it's functional. So then we might be back into non obvious subject matter. Anyways, the patent office uses that requirement, the obviousness requirement, to reject almost all applications. So the last data that I saw that they had published was I think they reject around 93% of applications at least once, usually two to four times. I think that's the most common rejection is saying that it's obvious. So that's not something you usually figure out in the Very beginning. It's something that you'll talk about and get a sense of, but you don't really know whether it's really obvious or not until you start fighting with the patent office about whether it is. And they're going to argue that it's obvious, and your attorney is going to argue that it's not obvious. And then it just kind of comes down to whether your attorney is able to convince the examiner that it's not obvious. And there's thousands of pages of cases and rules and exceptions to the rules as to what's obvious and what's not obvious. The manual for Patent examination procedures is 10,000 pages long, and a bunch of those pages are devoted to talking about how do you decide what's obvious and what's not obvious? Then sometimes you even have to go up on appeal to convince, to get to the point where the Patent office will say that it's not obvious anyways. Those are the four key main requirements as to being able to tell whether something's patentable or not. And as I said, some of them you can tell right away is something useful or not that you can probably tell just by yourself. And whether something is patentable subject matter is often something that you don't need to do any research for. You just need to have a short conversation with your pattern patent attorney. So the real research and the real uncertainty often comes from whether it's new and whether it's obvious or not. At one point, the term obvious sometimes confuses people because often inventions are obvious to inventors. But in my experience, inventors have a different mindset, they have a different way of looking at the world. And so the patent office actually, when they phrase that, they say obvious to one of ordinary skill in the art, they're making it really clear that we're not talking about is this obvious to an inventor? They're saying, is this obvious to one of ordinary skill in the art? And what they mean is, if you've invented a new mouse for computers, is this obvious to the engineers that produce mice, that design mice? Right? Is it obvious to the people who their job is to be in that technology? They're not inventors, but they're skilled in that technology. What I've noticed is that inventors think out of the box. They combine things together that no one takes to combine. They take all technology, they put it together in ways. These are the sorts of things that are non obvious and new. And that's one of the reasons why we just have more and more patents all the time. Because the more things that we create, the more things we have to combine it together in new ways.

Jason, we got a couple of questions submitted ahead of time. So one of them is about, I think they're referring to trademarks here, but they just said marks in general, so I'm assuming they're main trademarks. Is a foreign person, a person not from the U.S. allowed to own a U.S. trademark and or be assigned one?

They are, yeah. I don't know of any restrictions on that. I know that there are restrictions on owning corporations, certain kinds of corporations, but there are lots of people outside the United States that own United States trademarks.

Wonderful. Okay, great. That's great. And then what are some things that you can do to help your attorney so that it doesn't cost as much to do the search, so that you don't come back and find out it wasn't useful or it wasn't patentable in any way? And because you just failed to find some things. So what are things?

So two things that you can do. One is have a conversation with your attorney first before you pull the trigger on the search. Talk to them on the phone and say, here's my idea, this is what I think. Do you think this is a good candidate for a patent? Is this something that you think is worth searching and you want to have a really candid conversation with your attorney and you want to make sure that you feel like you can have a candid conversation with your attorney? Everybody's different and some people are just order takers. Right? And if your attorney is just an order taker, then they're just used to just searching whatever is put in front of them. That may be great. In a large corporation where you want operations to run really smoothly and without having to have lots of extra conversations, that would be great. Right? But when you're talking about entrepreneurialism, small and medium sized businesses where they don't have the infrastructure to pre filter inventions, then you want to have a conversation about whether it's a good candidate. And then you also want to do your own research first. I definitely recommend looking to see if you can buy the product somewhere. Now, I wouldn't go call people and say, hey, do you have anything that does this, that and the other. Right? Because that's disclosing the invention. You want to keep it secret, but looking online to see if you can find it, going through catalogs of where they sell, that sort of thing. You want to, you want to look around and see if is someone really doing this or not? And just because no one's selling it doesn't mean someone hasn't filed a patent on it. There's lots of people that file patents and then they fail somehow to get the product to market, or they get it to market and they don't do well with it. Right. And so it never reaches you. But you should definitely be doing your own searching first. You can also search the patent office records if you want to. You can do it@USPTO.gov, google has a good patent search tool. There's other patent search tools out there. Now, you're not going to be able to do as good of a job as a patent attorney looking for patents or even understanding what's okay and what's not okay. But you know, to whatever level you're comfortable doing your own search, looking to see, is this new? You should definitely do that because if you can find it in half an hour, the chances are I could have found it in two or three minutes. And why do you want to pay me to do something you could have done yourself?

Great. Thank you, Jason, for that. The other one, I just want to mention this to people because you may or may not know, but Tom and I have 37 patents and there was 38. We only have one that didn't issue out of all that. And so that statistic. Yeah, only one.

That's a huge success rate. Thank you.

Thank you. But here's the key, because you said it when you were talking just now, so that statistic, what did you say, 93% get rejected or something like that?

Yeah. So 93% get rejected at least once. I think the overall allowance rate at the patent office is immediate. The low 60s, like 60%.

Yeah, that's what I've heard, too.

So if you would have had 38 filed, if you were average, then probably 12 of those. No, more like 15 of those wouldn't have been allowed.

Yeah. And what we found was that the difference is because we had all of these and Tom works really closely with whatever attorney, and we've had multiple attorneys file them over the years and works really closely with them when we're filing them, making a decision to file or not to file. So there's more inventions than that that we shelved and never filed, of course, or kept a trade secret instead. Right. So that happens. That's the starting point, is that communication that you mentioned is actually key to our issuance rate. And that one single one, because we had done it as work for another client, we offer up a package to our clients in which they pay a one time fee. We provide all the initial communication to our attorney and we provide it for as long as they need it through the patent and trademark process. So if they need to call us four years from now because there was objection, they can we just do that at once. Because we learned that this communication ongoing was where it falls apart. And no one from that company ever contacted us to talk to us about it or any of that. And so that's why it did an issue. They got it rejected and they gave up too quickly.

Wait, they never even contacted you after it was rejected?

No, because we had done the work for another company and the attorney that they never.

Oh, so the attorney contacted them but didn't know that they could contact you.

For support and they didn't. So because of that, when we found out, we were like why was it rejected? We finally found out why and we were like, oh well, they were wrong about how they communicated that. So if you had first shared it with us and shown us the claims, we could have realize that you were wrong to begin with. Secondly, you can always have that struck after as you negotiate and get it issued. So we found that I think our rejection rate might not be quite as high as that as 93%. That seems really high. But I think probably like at least 75% were rejected once. So yeah, that's pretty standard. So anyway, my point is that the communication with your attorney from day one or pre day one as you put it, is really critically important to getting that patent actually issued and making it meaningful because that's what's important to us.

Yeah, I agree.

So I don't have any other questions and there's not anyone on the call today and they're missing out because they could have been asking you great questions here, but they will know to join next time. Thank you so much for joining us on an office hours with Jason.

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