Your New Invention May not be Patentable

This post is the second of three key issues that every new inventor should consider.

The reality is that your new invention idea:

  1. May not really be new
  2. May not be patentable
  3. May not be commercially valuable

For this post, let’s focus on the fact that your new invention may not be patentable.

Your New Invention May not be Patentable

Let’s assume that you have already done an exhaustive retail and web search for your product as recommended in last week’s post. Now you feel good as you haven’t seen it anywhere else, at least on websites and retail stores, right?

Remember the sinking of the HMS Titanic? The ‘unsinkable’ ship wasn’t doomed by the small iceberg projecting above the water, but by the massively larger berg underwater that sliced open the sides of the ship.

Much like icebergs, only a tiny fraction of the over 9,000,000 US patents issued to date, have ever been successfully commercialized in retail stores, the rest are “underwater” and out of sight. If one or more of those patents is quite similar to your invention, your application for a new US patent will not be allowed.

In fact, whether or not it is patented, any currently existing product (or “prior art” in USPTO lingo) anywhere in the world can prevent your patent from issuing.

Many new inventors do a quick text string search on the Patent Office website – USPTO.gov. When they don’t find what seems to be an exact match, they proclaim “there is nothing out there like my product!”

Not so fast!

A quick search tells you nothing of value, you must dig deeper. For example, I have two US patents for my thin, flexible wallets. It was not easy getting the patents allowed as there were then (back in 2002) many patents for wallets and billfolds. There are vastly more now.

I just did a search on USPTO.gov for the text strings billfold and wallet with the following number of “hits:”

  • wallet – 10,291
  • billfold – 292

These are patents where the wallet or billfold text string appears anywhere in the patent and, as such, grossly overstates the number of truly similar patents. If we only search patents that have the above words in the title, it becomes a smaller list:

  • wallet – 553
  • billfold – 38

Of the above roughly 600 patents, probably only about 10% (or 60) will genuinely be wallets or billfold you should consider as competitive prior art.

But you are not done yet! What about patents that cover similar prior art but don’t use the words wallet or billfold in the title. What about “card holder” or “bill fold?” As you dig deeper still, you will discover patents for items similar to yours that may not be described as billfolds or wallets, but are still relevant.

But, let’s be optimistic. Let’s assume your search produced nothing that works in quite the same way as your invention does. Shouldn’t you now have excellent prospects for getting a patent? Maybe.

Now you should spend a bit of money – $250 – and have Patent Search International do a professional detailed search for your invention.

They will find things you did not find – they have much better search tools than you do. But PSI will also give you a patentability opinion based upon their search results. And “opinion” it is, as no one can know for certain whether or not a strong patent is obtainable for your product.

In the end, it is your call as to whether you believe your invention is sufficiently unique wherein you can likely obtain a strong patent for your product. Obtaining a very narrow or “weak” patent is really worse than obtaining no patent at all. Why? Because you will spend probably $5,000 plus to prosecute and obtain your weak patent only later to discover that others can produce similar products that don’t infringe on your patent. Not good.

Hopefully your patent investigations have revealed you can likely obtain a strong US patent for your invention.

Your next Sherlock Holmes investigation is whether or not your product is commercially valuable/viable.

Stay Tuned for Your New Invention May Not be Commercially Valuable.

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About ideaworth

Ideaworth is a blog on a variety of invention topics to help inventors to avoid pitfalls and to find resources to help them in their quests for success. Alan Beckley's first invention, the Wonder Wallet is a DRTV hit, selling on television, HSN and available in Walmart and other major retailers.
This entry was posted in Invention, Patent resources, Patent Search, Patent Search International, Patents. Bookmark the permalink.

3 Responses to Your New Invention May not be Patentable

  1. Stuart Fox says:

    Thanks for an interesting post Allan – adding to the wallet / billfold dilemma, a searcher needs to consider words and spelling that may be used in another country – e.g. closet / wardrobe, faucet / tap and color / colour – they will render a different number of hits. Other languages create additional challenges and all these lead to the benefit of a classification search ….. + consideration of a professional search. Searching is somewhat enigmatic – one is looking for something you hope not to find though there may be a benefit if you do.

    Also – meeting with many inventors its evident that few appreciate that its generally not possible to patent the objective of an invention – for example a folding chair – the objective here being a chair which occupies less space when not being used – rather, it may be possible (subject to meeting other requirements) to patent the particular manner in which a chair may be made to fold.

    Another situation: a patent search of folding chairs, in that instance on Espacenet (the European patent Office website) a while ago, turned up patents for folding prams – after all a folding pram maybe similar to a folding chair to which wheels have been added + the reverse – a search of folding pram patents may reveal a folding chair mechanism where wheels have not been included – even though it may be useful and or commercially viable it is generally not considered an inventive / patentable step to join or include, (say for two-in-one or more advantage) known components for convenience sake. Of course an inventor may argue / appeal an adverse decision.

    On the other hand where two or more things are joined together and result in additional benefits – i.e. more than two-in-one convenience – then it may be patentable. A general guide here is that it should result in something that is greater than the sum of its parts.

    Stuart Fox
    Inventors Association of Australia

  2. ideaworth says:

    Thanks, Stuart. Good to hear from you. All good comments about the many nuances of conducting patent searched. I chose not to discuss Boolean searches with class codes and then looking at related patents for more in depth searching as my posts tend to break the blog rules of already being too lengthy!

    • Stuart Fox says:

      Agreed – which endorses the value of a professional search as you recommended. There are so many myths and misunderstandings in this field.

      Stuart Fox

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