Can I Patent My Idea?

February 14, 2011, 06:08 PM

In a prior post I included a link to a recent U.S. Supreme Court decision confirming the patentability of certain business methods and processes. The ruling in that case actually affirmed the lower court holding that the subject business method was not, in fact, patentable. The Court held the business method in question a process by which buyers and sellers of commodities in the energy market could protect, or hedge, against the risk of price changes was merely an abstract idea that was not subject to patent protection. While stating clearly that other business methods and processes could be patentable, the Supreme Court left open the question of the exact standard for determining their patentability. So, an abstract idea is not patentable. But when does such an idea reach the point where it crosses the line from mere abstraction to something that can be patented? The first requirement is that the idea be susceptible of development into one of the defined categories of things that can be patented — what is referred to as patentable subject matter. These are statutorily defined in the U.S. as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement of any of these. Clarification of exactly what fits within each of these categories of patentable subject matter is available from many sources including, for example, the recent Supreme Court decision already noted as the most important recent guidance on the process category. But it suffices to say here that most products of the human intellect would likely have some chance of fitting into one of these categories. If it can also pass the test of being new and useful (which is not as easy as it might sound), an idea could develop into a patentable invention. If all of these hurdles are overcome, the final determinant of whether an idea has matured to the point of being patent-protectable is the statutory requirement that a valid patent application must contain three things: (1) a full, clear and concise description of the invention; (2) a full, clear and concise description of the manner and process of making and using the invention, which is exact enough in its terms to enable a person skilled in the art to which the invention pertains to make and use the invention; and (3) the best mode contemplated by the inventor of carrying out the invention. If an idea for a new and useful process, machine, article of manufacture or new substance resulting from a combination of two or more different ingredients (i.e., a new composition of matter) has reached the point where it can be described in this level of detail, it is at the point where a valid U.S. patent application can be filed on it. –Robert E. Smartschan