Sanity Check: Is My Idea Patentable?

Sometimes Entrepreneurs demand to know whether their idea is patentable.  Frankly, yes or no answers do not exist for this deceptively simple question. 

First, obtaining a patent is a legal process fraught with uncertainty.  The most obvious consideration lies with how closely the prior art mirrors the idea.  The real question, though, is does the possible (not guaranteed) return on investment for the idea justify investing in a patent application despite the risk of not obtaining a patent.  

Furthermore, the success (or failure) of an application rests on forces beyond the control of the Patent Attorney.  For instance, the Patent Office might assign the application to an Examiner who won’t give an inch.  The Author had one Examiner admit that there “was nothing like [a particular invention] out there.”  But, the Examiner also refused to agree to any claim that described the idea.  In this case, the Author performed a legal sleight of hand that resulted in a patent anyway. 

In other situations, the Examiner might be dead wrong.  This author had another Examiner insist that a product of reaction found in the prior art could once again react (in the same way as the feed chemicals) to form the claimed chemical.  The Examiner’s assertion was chemically impossible.  Yet prevailing against her insistence would have cost tens of thousands of dollars.

That is not to say that such things will always happen.  Indeed, this Author has successfully prosecuted applications that the client insisted on pursuing despite warnings of the high risks of failure involved.  In these cases, the potential returns justified the expensive arguments that ultimately prevailed.  

Thus, there is no easy, reliable answer (or sanity check) as to whether most ideas are patentable.  And that is why Entrepreneurs rarely obtain a yes or no answer to that question.  

We at the Villhard Patent Group would welcome an opportunity to help frame the chances that you might prevail at the Patent Office.  You can obtain more information about us at www.villhardpatents.com or you can call us at 512-897-0399. 

“Arbitrary” Legal Thoughts: Picking a Trademark

One early hurdle that Entrepreneurs frequently think they sail over occurs when they settle on a trademark.  Then trouble frequently sets in.  

Besides potentially choosing a mark that infringes a preexisting mark (see our Trademark Search First, Then Brand article), a tendency exists for Entrepreneurs to pick weak terms for their marks.  

On that note, trademarks exist along a spectrum of strength.  On the weak end you will find generic and/or descriptive terms.  An extreme example is a hardware store named “The Hardware Store.”  Obviously, if we allowed anyone to register such phrases, commerce would grind to a halt as the first registrant for each type of business gained the right to stop everyone else from advertising using such descriptive phrases.  Similarly, words such as “best,” “prime,” and the like lend little to the strength/registrability of a mark in most situations.  

Potentially strong marks exist on the other end of the spectrum where the marks are fanciful or arbitrary.  A fanciful term can be described as one that would not ordinarily be associated with the goods with which it is used.  For instance, before Steve Jobs, few consumers would have associated the term “Apple” with computers.  

Similarly, arbitrary terms can be described as those that are made up.  “Google” springs to mind for use with search engines.  Except for the mathematical term “googol” the term google had not been heard of before the founding of the company by that name.  And as an arbitrary mark, Google is a strong mark (even before accounting for the large sums spent on branding that term).  

Accordingly, Entrepreneurs should strive to create arbitrary or fanciful marks for their goods and services and should avoid using descriptive and/or generic terms in (or at least as the heart of) their trademarks.

We at the Villhard Patent Group would enjoy the opportunity to discuss your proposed trademarks with you (along with your other IP related issues).  For more information about us, see www.villhardpatents.com or call us at (512) 897-0399.  Also, if you are an Entrepreneur, feel free to join us on the evening of the second Thursday every month for the Entrepreneur IP meetup.

New Entrepreneur Resource Available: The Entrepreneurs IP "Meetup "

The Entrepreneurs IP Blog announces the formation of a "Meetup.com" group for Entrepreneurs interested in Intellectual Property (IP).

This meetup will focus on IP as it related to Entrepreneurs.  Of course, we will be holding sessions addressing copyrights, trademarks, service marks, trade secrets, and patents.  We prefer casual meetings in the evenings so that those who have day jobs can attend and so that everyone can relax and have a bit of fun.  Our first meeting will be on Thursday February 11, 2016 at a location available only to members.  

If you own an entrepreneurial company, have a technology-based concept you wish to develop, and/or are Entrepreneur interested in IP, you should join the group and attend our meetups.  We also invite other Entrepreneur-based meetups, groups, organizations, etc. to join us and to spread the word about this new entrepreneurial resource.  

More information about this meetup can be found at http://www.meetup.com/Entrepreneurs-IP-Meetup/.  Or you can navigate to www.meetup.com and search for “Entrepreneurs IP” and it should come up in the results.  Note: that the meetup.com website takes a few days to propagate new meetups through their system and searching might not yield a “hit” for another day or two.  Please be patient.  

In the meantime, for more information about IP as it relates to Entrepreneurs feel free to visit www.villhardpatents or call The Villhard Patent Group at 512-897-0399.  We would welcome the opportunity to discuss your situation with you.