September 2008

Mr. James Hill (a patent attorney with the Chicago law firm Wildman Harrold) addressed two important questions many inventors ask - Is my invention patentable? Should I invest in a patent? The United States grants patents only for inventions that benefit our society. What is an invention? An invention is a means to a useful end. It is a machine, manufactured article, composition of matter, or method that has 3 aspects (SOR): structure, operation (function), and result. Deterministic relationships between those aspects integrate (combine) parts into a whole that is more than the sum of its individual parts. Parts of an invention work together to produce a useful result. A mere aggregate however is just the sum of its parts - an assembly of structures or method steps that do not cooperate to produce a useful result, something a tornado might put together (like a straw through a telephone pole). An aggregate is not patentable because it is not more useful than its independent (old) parts. An invention benefits our society only if it is different from all other inventions known to our society.
  • An invention is likely patentable if at least one of its SOR aspects differs from known inventions: (new Structure, old Operation, old Result), (old S, new O, old R), (old S, old O, new and conditional R), (new S, new O, old R), (new S, old O, new R), (old S, new O, new R), or (new S, new O, new R). For example, farmers once used a plow that produced furrows of uneven depth, because it had only one disk. A patentable invention improved that plow by merely adding a second disk. The two disks cooperated to plow furrows of uniform depth, greatly increasing crop yield.
  • The difference must be so big that a typical person of ordinary skill in the technology would not have thought of your invention on your invention date. You must be creative. Our society benefits both from a pioneering invention (a new kind of invention, like the first wheel, airplane, or television) and from an incremental invention (a varied state of a previous invention, like a better mouse trap). But our society already inherently knows an invention that is obvious to a typical person of ordinary skill in the technology, even if no one has explicitly described or built that particular invention. The Supreme Court addresses this patentability requirement of nonobviousness in cases like Graham v. John Deere Co. or KSR International Co. v. Teleflex Inc. et al in order to protect our society. The U.S. grants patents only for inventions that add to, not subtract from, what society already knows.
Getting and maintaining a patent costs a significant amount of money. Should an individual inventor with average finances bet the farm on an unproven invention? No. It may be a good idea to file a relatively inexpensive provisional patent application if you think your invention looks good on paper. But before you invest a lot of time and money in a nonprovisional patent application:
  • build a prototype of your invention to make sure your invention works
  • test market your invention to learn whether projected sales will be high enough to satisfy you
  • find out whether excluding a competitor from your market will financially benefit you
  • or, persuade a person or company to buy or license your invention and to pay the patenting costs.
Thank you Mr. Hill for making the long drive from Chicago to share your helpful insights with us!