The Meaning of New and Non-Obvious
For an invention to be patentable, it must be new and non-obvious. That is, it must have at least one feature that was not previously known or obvious in light of that which was previously known. These are the requirements that the invention is not anticipated (i.e., new) and inventive (i.e., not obvious). In some countries, the “inventive” is often referred to as having an “inventive step”.
An inventor’s own public disclosing of the invention may keep the invention from being patentable. While the United States has a grace period, it is a best practice not to disclose the invention publicly until a patent application is filed. Additionally, certain foreign countries do not have a grace period at all.
From there, the invention must fall into one of three categories, a invention directed to functional things which would be the subject of a utility patent, an invention directed to an ornamental non-functional device (not to say that the underlying device may not be functional), and an invention directed to a new plant variety (which we will not cover in this post). Once the particular type of category has been determined, then further steps can be undertaken to file a utility, a design or a plant patent application.
It has been our experience that too many times an inventor does not believe that his idea/innovation rises to an invention. This is often a misconception that is tied to an unrealistically high barrier for novelty and inventiveness. Far too many inventions are not pursued because they are seen by an inventor as not satisfying the threshold in their heads. And, inventors, by their nature, invent things and typically do not see the difficult in inventiveness nor do inventors understand the special gifts that they have – invention is not routine to most people.
That is, in many instances, an inventor has a misconception of what is necessary to be patentable subject matter. Most often, new inventions build upon prior inventions, and most typically are an improvement to an existing device, method, system, software, etc. And, we are here to say that these types of improvements are absolutely patentable subject matter. While the invention of the wheel is known, there are thousands of patents being granted on such aspects as tire construction, tread design, inflation methodology, among others. While the automotive engine is known, there are thousands of patents being granted on piston construction, engine management, valve train design, variable valve timing, combustion chambers design, among others. On the design patent side, while the cup is known, there are thousands of design patents on various ornamental designs of a cup. Similarly, there are thousands of design patent on various smartphone and desktop icons and graphical user interfaces. Moreover, there are thousands of design patents on children’s toy vehicles.
In sum, innovation, large and small, can be patentable subject matter. A small incremental improvement can have tremendous value, despite the small scope. For example, an improvement in electrical efficiency of a refrigerator that improves efficiency by 1% can have a dramatic effect on energy consumption when that savings is multiplied across the millions of refrigerators currently running in the US.
