Sunday, September 4, 2011

What Makes an Idea Likely to Click?

Often an entrepreneur concludes that their once-brilliant idea is unpatentable and they let it wither on the vine.  Yet a patent attorney (if they had been consulted) might have thought the idea would click at least to the extent that the likely claims would have had good breadth.  To understand such tragedies, remember that patentable ideas must relate to patent eligible subject matter and be useful, new, and non-obvious. 

Even seasoned patent attorneys cannot positively determine whether an idea is non-obvious.  Instead, they speak of the likely breadth of claims directed toward the idea. To begin their obviousness analysis, many attorneys look for a piece of the idea that to their knowledge no other approach has included (e.g., a handle for a widget when no other widgets have handles).  If the idea passes this test, the likely breadth of the claims increases.

Moreover, if the idea runs contrary to current approaches, the likely breadth increases.  Conventional approaches to an issue, in contrast, narrow the likely claim coverage.  Indeed, substituting one known approach for another lowers the likely claim breadth.  However, if the idea delivers benefits not foreseeable to those in the industry, then the likely breadth increases.  Repeated failure of competitors to implement the idea and their skepticism about it also point toward likely broader claims.  Likewise, praise from, or adoption of the idea by, industry points to broader claim coverage.  The foregoing discussion, of course, assumes that neither a public disclosure nor an offer for sale involving the idea destroyed its patentability prior to the entrepreneur’s patent application.

While the above list neither pretends to be exhaustive nor definitive, the author hopes that it provides some guidance for entrepreneurs as to what makes an idea click with a patent attorney.  But, as with any legal issue, professional guidance is advised.  For more information about patents and the patenting process, please contact us at or call us at (512) 897-0399.  

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