Now more than ever, companies are seeking to differentiate themselves on the basis of cutting-edge technology or radically different approaches to age-old problems and new problems alike. As such, it has become increasingly unavoidable for the modern entrepreneur to avoid familiarizing themselves with basic intellectual property laws, even though it can be daunting to understand and navigate such a dense framework.
A major form of intellectual property protection is the registration of a patent. However, patents can take a long time to prosecute and cost a lot of money. Below is a list of questions you will want to ask yourself before pursuing a patent.
- Is it patentable subject matter? Patents protect a new or useful art, process, machine, manufacture, or composition of matter or an improvement to any of these patent-eligible intellectual properties.
- What is definitely not patentable subject matter? You cannot patent abstract ideas (e.g. investing in a particular type of company, or just having the idea of a machine/software that performs some function), physical phenomena/scientific theorems (e.g. laws of thermodynamics), or anything which is affixed in a particular medium (e.g. a novel, audiobook, sculpture, choreographed dance, software code) as that would fall under copyright protection.
- Can it be patented? Patentable subject matter must pass three tests to be patented:
- Is it new? For something to be new, it must (1) not have been disclosed to anyone else in (2) a manner which would enable a “person of skill in the art” (POSITA – e.g. an automobile engineer with respect to a new car part) to make and/or use the IP without the need for additional inventive steps. Canada has a grace period of 1 year on disclosure.
- Is it non-obvious? This test is simply to preclude products which anyone in the industry (a POSITA) already uses or would find obvious (e.g. “hacks” that are commonly used in a particular field).
- Is it useful? This test is simply to preclude products which do not work or have no useful function.
While most of the above is self-explanatory, there is some value in further exploring the distinction between an abstract idea and actually patentable subject matter.
The reason that abstract ideas are not allowed patent protection is a matter of policy. If someone could patent the idea of a “suction based cleaning device”, for example, the protection such a patent would grant would be far too broad. There could be several ways to invent such a device, and granting a patent on the abstract idea would stifle all alternative ways. This is why a patentable invention must achieve a goal in a very specific way. For example, both Dyson and Bissell have patents on technology which achieves the idea of a suction based cleaning device in two specific but different ways.
If you are in the process of inventing something, and are convinced that nobody else has had the idea, it may be best to protect the IP as a trade secret and avoid disclosure, as no statutory protection exists to prevent someone from taking your idea and trying to invent something that does the same thing independently.
To that end, it is important to keep in mind that patents, once granted, are published! This means that anyone can access the patent, and see how your invention works. You will be able to enforce your patent against anyone who is selling something which does the same thing your invention does in the same way. For example, if Dyson found that Bissell had used its patented “cyclone technology” in one of its vacuums, Dyson could seek remedies for patent infringement. However, if Bissell invented a different system which achieved the same level of suction and cleaning as Dyson’s cyclone technology in a different way, then they would be legally in the clear.