Patently difficult

Your Eureka moment, the one where a big lightbulb goes ‘ting’ above your head, can quickly lead to thoughts of how to protect your newfound IP. But what does it take to get over the line? What sees a patent granted to one invention but not to another? There are some concepts I’d like to introduce to you.

The rules of patent examination are, to put it mildly, mind bending; the people at the sharp end of the process who get to make the call on whether your new thingamajig deserves a patent are smart cookies indeed. Patent examiners are typically science, engineering or technology whiz kids, often with postgraduate qualifications in specialist fields you probably haven’t heard of. To top it off, they then need to complete two years worth of training in the various patent laws and treaties that comprise the world’s patenting systems. Such expertise is truly warranted when it comes to assessing someone’s invention, as the whole point of protecting IP is that it’s fair, and there are dire consequences (at least financially) if someone receives unfair treatment. To make it even more complicated, the rules are different depending on whether you’re seeking protection domestically or on the world stage.

Indeed, there are quite a lot of rules that are applied to assessing a patent application (or ‘specification’ as they’re properly known) before a proposed invention can be awarded a patent. To try to explain the rules and processes in a brief article like this would be folly. So here goes.

Placing a plastic sheet over a clothes line during a rainstorm is a pretty nifty idea, but it’s not likely to earn you a patent. It would lack what a patent examiner calls an ‘inventive step’ because to someone with knowledge of clothes line technology such a solution would be obvious.

Sure, that one’s obvious to me too. But when you consider the myriad complex technologies out there with which our best and brightest are wont to tinker, ‘obvious’ gets a whole lot … well … less obvious.

A patent examiner must therefore assume the role of a ‘person skilled in the art’, the ‘art’ being the technology in which the inventor is working. Only when she’s standing in the shoes of such an imaginary expert does she explore the question of obviousness. A new type of scramjet engine might seem like a landmark breakthrough to me, but would it be so revolutionary if I were a practising rocket scientist? If it does appear to be obvious in any way – ‘well I could have done that’ – there are grounds for rejection on the basis that the invention lacks an inventive step.

Another key concept is that of ‘novelty’. It should go without saying that if the features of the claimed invention have been described before – anywhere, any time – then the invention is not actually new. In this case an objection may raised on the basis of novelty. The thing is, as anyone who’s struggled with googling knows, the search for what is possibly an extremely obscure needle in a large haystack is not for the feint hearted. You have to know not only where to look but what to look for. The tools at the patent examiner’s disposal for exploring the mires of what they call ‘prior art’ are extensive and seemingly endless, and according to experienced examiners the search itself is considered more of an art than a science.

That said, it might be that the inventor has imagined the assembly or use of an existing set of features or materials in a new way. If that’s the case, and the new arrangement would not have been obvious to our imaginary skilled person, it might pass muster after all. Novelty and inventive step are linked in rather curious ways.

There is also a kind of backwards race to the date the invention was first raised. It’s not enough to ask ‘Is the invention [not] novel or inventive?’ but ‘Would it have been considered novel or inventive at the time protection was first sought?’ It might be that even though the invention doesn’t seem new today, at the time the inventor first lodged the specification (which could have been several years ago), it was. This issue arises more often than you might think because these days technology moves so fast.

The concepts of novelty and inventive step are two of the most important in patent examination, but there are many, many more considerations an examiner needs to take into account. The form of the specification itself – the way it is worded – is crucial too. A specification must have both a clear description of the invention (clear enough to enable the person skilled in the art to build it) and also a set of claims that outline the protection being sought to a degree that is not too wide a scope. Any mismatch or inconsistency in the form of the description or claims will lead to the need for clarification, if not outright rejection.

A patent examiner’s job isn’t simply to sit there and find fault with your invention, by the way. In fact, their standpoint is very much one of giving the benefit of the doubt to the inventor. Their reporting system provides for multiple rounds of clarification and amendment, which is intended to give you the best shot of successfully gaining a patent. In effect they’re on your side.

The complexity I’ve only hinted at here is the reason we invented patent attorneys, of course. They’re kind of the middlemen in all of this, tasked with turning your invention into a specification that has the best chance of hitting the mark, then helping you to overcome any objections the IP gatekeepers might make. But as with any negotiation in which you need a middleman, it pays to learn a bit about the process so everyone knows what’s going on.