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Identifying an invention
What is an invention?
Inventions are technical innovations, and can be contrasted to artistic creations that are protected through copyright and a new look in a product that is protected through design rights.
An invention is something that solves a technical problem. This could be a new product, apparatus, computer software, chemical compound, material composition, method or process, or even a new use of a known product. There are some exclusions from patentability though, as explained below.
To be considered an “invention” according to the law, and hence to be patentable, the innovation must be novel (new), inventive (not obvious ), and capable of being made or used in any kind of industry, including agriculture.
An important consequence of the requirement for novelty is that you should keep your invention confidential before filing a patent application – any prior public disclosure may prove fatal to your chances of obtaining patent protection.
What is novelty?
For an idea to be novel, that idea must not have been known to the public, in any form, anywhere in the world, before a patent application is filed. In fact, the restriction is stricter than this because it does not matter whether the public knows of the idea, it just needs the idea to have been available to the public irrespective of whether anyone actually found the idea. While there are some exceptions to this rule in some countries, the rule applies in most countries around the world. Hence, if you want us to patent your invention, it is key that you do not disclose your idea publicly before we file a patent application, otherwise the idea we describe in your patent application will lack novelty. We can help by advising on how to ensure any necessary disclosures are considered confidential.
There is a good reason for insisting on novelty. The purpose of the patent system is to encourage innovation: this is done by granting an otherwise undesirable monopoly for the invention as a reward for describing the invention to the public and adding to our collective knowledge. If an idea is already known, however, there is no gain to the public and so a monopoly will not be awarded.
Novelty is an objective test – if every feature of a claimed invention was previously disclosed in a single public disclosure, then the idea is not novel. Previous disclosures are often referred to as “prior art”. Most prior art we face are other patent applications.
Although the test is objective, disagreements over the novelty of a claimed invention are common. These usually arise from disagreements over what features are actually disclosed by a prior art document, for example whether a feature is implicitly disclosed even if it is not described explicitly.
What is inventive step?
Inventive step is sometimes referred to as obviousness – put simply, for an idea to have the required inventive step, it cannot be an obvious development of what was known by the public previously.
To assess inventive step, the novel feature(s) of an invention must be identified. Then, for there to be an inventive step, the novel features must not be considered to be trivial improvements and must be considered to provide a useful technical effect. This can be thought of as ensuring that the invention is ‘clever’ and adds something useful to the field of technology. This reinforces the patent system’s encouragement of innovation by granting a monopoly to parties that disclose their inventions to the public, with the inventive step requirement ensuring that the innovation is worthy of a monopoly.
Compared to novelty, assessing inventive step is far less objective. Inventive step is generally assessed by asking: “given the prior art, would the claimed invention be obvious to a person skilled in the art?” The person skilled in the art (also known as the skilled person) is a fictional character in the relevant field of technology, who is good at their job but has no inventive capacity (i.e. imagination). The skilled person can unimaginatively combine features from different prior art documents, but not in a way that requires any creative spark or excessive experimenting.
Different jurisdictions implement different tests to determine what is obvious to the skilled person. These tests apply a series of steps to determine inventive step in as objective a way as possible. The European Patent Office has developed a useful tool that anyone can use for assessing inventive step. The European Patent Office’s “problem and solution” approach requires us to identify a technical problem in the most similar prior art document that is solved by the claimed invention. If we can argue that the claimed invention provides a technical solution to such a technical problem, and that the technical solution is not to be found in any other prior art document, then the European Patent Office is likely to agree we have inventive step.
What is excluded from patentability?
Patent law around the world, including that implemented by the European Patent Office, often provides non-exhaustive lists of things that are not considered to be inventions and so are excluded from patentability. These include:
However, the exclusions apply only to the extent that the invention relates solely to that excluded subject matter. This means that we can argue for inventions which include both excluded and non-excluded elements if the non-excluded features are patentable themselves (i.e. novel, inventive and capable of industrial application).
For example, an abstract mathematical method would be excluded from patentability. However, we could obtain patent protection by drafting a patent application to a method of enhancing digital images by software processing that implemented the mathematical method.
As another example, a computer program would not be excluded if the program provides a technical effect such as the better physical operation of the computer (e.g. reduced power consumption), or makes the computer operate in a new way. Also, drafting a patent application to cover a technical effect outside the computer is usually successful, for example a computer program that causes a robot to operate in a new and inventive way.
There are other things that while considered an invention, are excluded from patentability. For example, inventions that are considered contrary to morality or public policy, such as anti-personnel mines, are also excluded from patentability. Also, plant and animal varieties are excluded from patentability, as too are essentially biological processes for the production of plants or animals (but not microbiological processes). A further exclusion relates to methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods (although not cosmetic surgery or therapy).
How we identify inventions
We often help clients review their work to identify ideas that might be worthy of patent protection. Years of experience gives our attorneys an instinctive feel for what makes a strong invention.
We can offer specific help with assessing what is new, for example by performing searches for prior art and reviewing the documents found. We can also help with assessing what is inventive, by considering how we would justify inventive step using the European Patent Office’s problem and solution approach and other inventiveness tests applied around the world.
We also frequently advise clients working in areas close to the exclusions from patentability. This could include working with computer software and with business methods, on how best to present their inventions in patent applications, and how to tailor those applications for different countries that apply the rules more or less vigorously.
