The Million Dollar Question: Is Your Invention Actually Patentable?

When Thomas Edison unveiled the first commercially viable lightbulb in 1879, he shocked the world by turning night into day with the flip of a switch. But before Edison could transform the way we illuminate our lives, he had to determine if his groundbreaking invention met the legal requirements for patent protection. Like Edison, all inventors must grapple with the million dollar question: is my invention actually patentable subject matter?

According to a 2022 report by the USPTO, over 600,000 utility patent applications are filed annually. But the cold, hard truth is that the majority of those applications will be rejected due to the invention failing to meet patentability standards under 35 U.S.C. § 101. So how can you improve the odds that your invention will pass the patentable subject matter test?

At its core, 35 U.S.C. § 101 requires that a patentable invention must fall into one of the four eligible categories: processes, machines, manufactures, or compositions of matter. Abstract ideas, laws of nature, and natural phenomena are not patentable. Seems simple enough, right? Unfortunately, determining whether an invention crosses the threshold into patent-eligibility is rarely straightforward in practice.

Determining Factors

According to patent experts at Global Patent Solutions LLC (GPS), every invention is unique, so there is no one-size-fits-all approach. But GPS recommends assessing these key factors to evaluate patentable subject matter for any invention:

• Does the invention provide a technical solution to a problem using particular machines or devices? The use of specific technology helps demonstrate patent eligibility.
• Is there a tangible real-world effect or result from implementing the invention? Impact on something concrete improves patentability chances.
• Does the invention apply a law of nature or abstract idea in a transformative way? Applications of formulas, algorithms, and other abstractions may be patentable if sufficiently integrated.
• Would a Patent Examiner recognize this as technology instead of just an abstract concept? Consider how to emphasize the technical aspects of the invention.
• Are the claims worded to require the use of a particular machine or article of manufacture? Careful claim drafting can assist with eligibility.

Conclusion

Of course, predicting whether any individual invention will pass the patentable subject matter test is not an exact science. But by understanding the considerations and proactively addressing patent eligibility issues, inventors and patent practitioners can take steps to protect inventions with the strongest patent shield possible. A good patent search will help you answer the question in the title of this article, and it will also help in drafting a patent application that is both more likely to be approved and will produce a more valuable patent once it is approved.

The next time you ask yourself “is this invention patentable?” be sure to seek guidance from experts like GPS to give your idea the best shot at being deemed eligible subject matter. With the right strategy, you can turn your visionary idea into a patented reality like Edison’s lightbulb. But the only way to know for sure is to try – will your invention light up the world?

Next up in the series: Does the invention meet the utility requirement for patentability?