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Can I patent a recipe – or eat cardboard?

By Roy Rosser

The first question I am often asked. The second – not so much. My answer to both is, however, the same. In principle “Yes” – but why would you even try to?

The US Patent Office (USPTO) has a stack of patented inventions classified as “Food or Edible Material: Processes, Composition, and Products”, (Class 426). So recipes can – and are patented– but, before calling your patent attorney, there are few laws you may want to consider, both patent and common sense. 

To be patentable in the US, an invention must be both novel and unobvious.  

Cookbooks date back to at least the founding of the Roman Empire, so there is a great deal of what patent practitioners call “prior art”, i.e., publications that may describe your invention, or something close enough to it, to make your invention “not novel”.   No matter how unique and flavorful your “lamb/lobster stew with quince and pomegranates” seems to you, odds are there is already a published a recipe for it, simply because there are so many published recipes. The publication may have been in a book, a magazine or a newspaper, in any country in the world and in any language, because legal novelty in the US is considered globally. 

Even if your recipe does turn out to be “novel”, there is a further, more challenging, hurdle of being “unobvious”. “Unobvious” means that although no-one has published your exact recipe, if there are published recipes that could be combined together to produce, or suggest how to produce, all the steps of your recipe, you won’t get a patent.

In addition to these formidable legal obstacles, there are further, practical questions.  

Finally, how will you know if anyone is infringing your patent?   No chef is likely to tell you how they prepare their dishes, so you’ll need some tricky detective work to find infringers. When you do find and notify them of your patent, as required by law, they may simply stop using your recipe, and avoid paying you anything. No restaurant lives by any single dish.

So why does the US Patent Office have Class 426? The answer appears to be in the second question: “Can you eat cardboard?” 

Browsing Class 426 patents, it is quickly apparent that they mostly cover industrial scale cooking, and tend to fall into the categories of ingredient substitution, food preservation, automated production or storage and packaging. As a hypothetical example, a Class 426 patent may cover the ingredients and methods used in producing large quantities (100,000’s) of “cookies” without using any actual sugar, eggs, milk or flour, but, thanks to substitute ingredients, the “cookies” will have an unrefrigerated shelf life of at least six months, and still look appealing and have an enjoyable, “fresh” taste, at least to children.

 “Eating cardboard” is, however, not merely a metaphor to describe some of the less successful Class 426 inventions. 

Issued US patent 6,936,291 makes the point that “cellulose-based films” include paper and cardboard. The inventors admit that “cellulose-based films” are conventionally “not desired components of comestibles” (Lawyer Speak for (LSF): “people don’t like cardboard as food”) and that they have “low organoleptic acceptance” ((LSF): “people don’t like the taste, color or odor of cardboard”.  

The title of their patent, however, is “Method of Producing Edible Cellulosic Films” ((LSF): “How to make cardboard that people will eat”). 

Check out the patent for yourself (http://bit.ly/HqTjuU). That way, when “a high organoleptic acceptance comestible made of a cellulose-based film” appears at your local supermarket, you can impress the checkout clerk by telling them how it’s made – or not.

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By Susanne Somersalo, Ph.D; Esq.

Aside patent protection, a trademark may be a good alternative or addition to protect your product or service. Because a federal trademark registration is valid as long as it is used and the renewal fees are paid, a trademark may be an excellent tool to extend protection beyond the limited lifetime of a patent. The first patent issued on April 13^th 1880 to George Eastman for dry plates for use in photography expired 17 years later. However, the trademark Kodak® and the yellow and black –trade dress distinguished patented Kodak-products for over hundred years later.

Federal trademark registration is a relatively simple, fast and inexpensive process. A trademark can be registered if it is capable of distinguishing the source of the goods or services. In practice, this means that the mark needs to be unique to the extent that it is not confusingly similar to another existing mark. A trademark may be similar or even same as another existing mark as long as the products and services are so different that consumers would not become confused. 

We are often asked what is the difference between the marking ™ and ®. TM can be used in connection with a mark even if the mark is not registered. It is a notice to others of common law trademark usage. Once the mark is registered with the United States Patent and Trademark Office (USPTO) the mark may be marked with ®. Actually, once the mark is registered, it is a good practice to make sure that the mark is always followed by the R in the circle, so as to avoid the mark becoming generic.   Sad examples of how a trademark lost its capacity to protect owner’s goods and services are marks such as Cellophane, Dry Ice or Escalator. They all were once registered trademarks, but the owners failed to make sure the names were used only in connection with the products of the owner.

Trademarks, similarly as patents, are geographically limited to the country where the mark was issued. A federal trademark registration in the United States thus gives protection in the United States. If you have your product or service in commerce outside the United States, you may want to consider filing a trademark in the countries you use the mark. An international treaty called Madrid Protocol, provides a chance to claim priority of the trademark application filed in the United States and file a single international application that can be entered in any chosen countries that a members of the Madrid Protocol. The advantage of the Madrid Protocol is that the international filing can be done through the U.S. Patent and Trademark Office. Trademark protection in countries that are not yet members of the Madrid Protocol would require separate trademark filing in each of those countries.

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By Harry Du

By all means, rejections are disheartening.  We attorneys understand.  You spent weeks, maybe months or years, to perfect your invention. You sought the help of a patent professional to file an application, sometime with a hefty fee. You waited anxious for three years. And then, one morning, you get the message from the US Patent and Trademark Office that your application has been rejected. To make matters worse, you labored with the patent attorney to reply to the rejection, only finding out three months later that another rejection, this time with the horrible name FINAL rejection, was handed down.  What to do? How to face a rejection? The message I want to convey here is that there are almost always ways to deal with a rejection, even a final rejection. What is more, the main goal here is to understand that rejections, even the so-called final ones, are not necessarily all bad.

First, it is not at all uncommon to get a rejection. More than 75%, and in some technical areas almost 90%, of the patent applications are initially rejected. Why is the rate of rejection so high? To understand this you must understand the patent examination process. In a nutshell, inventors (and their lawyers) desire to get patents for monopoly protection for the invention. So the inventors want the patent to be as broad as possible. Examiners, on the other hand, represent the public to protect their rights against unfair monopolies. Thus, examiners want to make the patents as narrow as possible. Therefore, the inventors, with the aid of their lawyers, tend to write broad claims to get better coverage. Examiners push back by issuing a rejection. The goal of the examiner is to urge the inventor to narrow the claims, thus giving the public more space in intellectual property.  A rejection does not mean the invention is bad or worthless, it means that what the inventor asked for is more than the examiner is willing to give.

So it is not necessarily all bad to get a rejection—and the reverse is also true, it is not always so great to get a first time allowance. Maybe the allowance only suggests your claims are so narrow and the protection of the patent, even you get it, is not adequate.  When facing a rejection, Don’t panic, try to work with the patent attorney to understand the examiner’s argument and the references cited.  In most cases, counterarguments can be made and claims can be narrowed to rebut the rejection. Even a final rejection does not mean the end of an application. There are multiple approaches to deal with a final rejection, which is in some way a misnomer because it only partially limits the way you can reply to the rejection. In addition to arguing back, you can file for a RCE – Request for Continued Examination, file an appeal to the Board of Patent Interference and Appeal, or file a continuation patent application. These methods either move the case out of the examiner’s hands, or remove the “final” status and begin a new round of examination, giving you fresh chances to patent your invention.  The detailed strategies to deal with rejections, especially the final one, deserve several blog posts. However, it is always important to remember that there is almost always a way out.

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If you are a first time innovator who has an idea, such as a consumer product, a question frequently asked is “Do I need a patent”?

To some individuals starting out, the investment in a patent can seem substantial. Perhaps you have an idea for a new consumer product, but are not sure if the project will be a success, and so you are reluctant to spend the money for a patent.

The decision to start any business has to be based on careful thinking and analysis. However, if the decision is made to move forward then a patent may be a useful business tool. In addition, going through the patent process may give the inventor valuable insights.

For example, the patent process usually starts with a search. The purpose of the search is to identify patents filed by other innovators which teach the same the same or similar idea. Finding similar patents is important because a) another patent may be filed that will block your idea from going to the market place and b) another patent may too close to your idea and may block you from getting a patent.

So before going forward with the patent application, it is important to answer the two questions, will I run afoul of someone else’s patent and is my idea patentable? Negative answers to these questions may stop the project in its tracks. But even if the search results are negative and you are disappointed, it is better to know from the start than spend years creating a business only to find out you are violating someone else’s patent.

What if the search results are positive? Should I get a patent?

If the search results are positive, congratulations! In all likelihood you have an original idea.

To patent or not depends on several factors. First, how do you plan to benefit from your patent? Second, what is the product life cycle, i.e., how long will the product be on the market? How will you be able to find potential infringers? The following paragraphs are of course generalizations and you should check with a patent attorney or agent before coming to any particular conclusions.

Many inventors want to license their idea to a third party manufacturer, i.e., grant the manufacturer the right to use their invention in return for royalties. In this case, having a patent is absolutely essential, because without the patent, there is no legal right to convey the invention to the manufacturer. If your plan is to license the invention, having a patent is the way to do it.

If you plan to have the invention made and sell the product yourself, a patent is also a good idea, especially if you have limited resources. Large companies have well developed business and distribution networks and can afford to produce large amounts of product quickly. Having a patent gives you some protection from a company with more resources.

Patents may not be as good an idea if the project life cycle is short. If you think the product will only be on the market for a couple of years then a utility patent may not issue in this time frame while selling your product. There may not be an opportunity to enforce the patent during a short life cycle.   If the product is simple, a design patent may be the best type of protection, since they issue from the patent office in less than a year.

Finally your invention must be of the type where finding potential infringers is possible. For example, if you are a dentist and have a new method of filling cavities, it may be difficult to find other dentists that are using your method, because few people would be able to observe the dentist and how he does his work. It is important to be able to identify the use of your invention.

There are many factors, in addition to these that may play into the decision about filing a patent. As always, the decision to file a patent application should be made in consultation with an experienced professional patent attorney or agent.

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Patent Reform

by Susanne Somersalo, Esq., Ph.D.

President Obama signed the new patent law (America Invents Act, 2011) on September 16, 2011. The reform is the largest since 1952, and perhaps the largest since 1836, when the United States moved from patent registration system to patent examination system.

The Congress has debated the need for reform the Patent Act for a long time: five Congresses have discussed the legislative amendments.  In adopting the new law the goals set by the Congress were to encourage innovation and create new jobs, improve patent quality, and speed up the granting of patents, to improve the patent holder’s security to preserve his rights and to offer alternatives to expensive court proceedings.

First to file system

The United States has been the last major jurisdiction to maintain the  system where the first inventor is entitled to a patent. Everywhere else in the world the first applicant is entitled to a patent. The current U.S -system, which ensures a patent to the first inventor, is known for lengthy and costly interference procedures.

The patent reform will harmonize the United States patent laws with the rest of the world. The change from first-to-invent to first-to-file system sounds like a huge change.  However, this change may not change much current practices Large firms and universities have probably long time ago shaped their innovation policies to comply with universal first to file –system.  Globalization is today’s trend, and therefore large companies rarely file in United States only. Individual inventors and small enterprises are the groups that most likely would file their patent applications in the U.S. alone. However, small enterprises and independent inventors have never been the group who initiated interference procedures, mainly because of the high costs.

The new law does not, however, quite unreservedly give the first applicant the right to the patent. Congress was obviously concerned that there may be malicious individuals and companies who are trying to steal the inventions of others, hurrying to apply for a patent for an invention which is actually not theirs. In this case there is a procedure for determining the real inventor. Thus, the U.S. actually will adopt a first-inventor- to- file-system.

United States has a pretty unique system where an inventor is entitled to patent even after disclosing the invention, if the disclose took place within one year from filing. Most of the other major countries have a requirement of absolute novelty, meaning that the inventor cannot get a patent if he disclosed his invention before filing. The new law is not going to change this one year period before filing.

Post grant proceedings

A major change in the new Act are the post grant procedures. The new law ensures two procedures to challenge an already issued patent.  The first possibility is a Post Grant Review, in which anyone can submit a claim of unpatentability within nine months after the grant of the patent. The argument at may be based on anything which could result in invalidation of the patent.  One can use publications, statements, declarations, expert opinions, etc. as support of the claim.

The other option is to file an inter partes -review process any time after the nine months period for post grant review expired. At this point, the opposition can be based only on lack of novelty or on obviousness and only published articles can be used as support.

These new opposition procedures are similar to opposition procedures exist in Europe and Asia, and  international companies are already accustomed to these procedures. Yet, this change in the law seems to be the change, which inventors are most concerned about.  In the United States inventors are not quite comfortable with the idea that even if the Patent Office has examined and application and issued a patent, it may still be challenged by third parties. Although re-examination has been possible under the old law, a significant difference to the new system is a fairly low standard to file post grant review.  Under the old law, the standard for reexamination was that the challenging party had to show that there was a substantially new question of patentability. According to the new law, it is enough to show that it is likely that at least one claim is not patentable. This could be a considerably lower standard than the previously used, although we will have to wait to see how this standard is applied.

The new procedures may affect particularly computer and the software industry. These industries typically include input from independent inventors and small enterprises, while life-science industries usually involve expensive experiments that can be conducted only in larger facilities. There is possibility that larger companies may begin to file post grant procedures against patents of individual entrepreneurs. The new post grant procedures explicitly spell out an option to settle, and this may be a way for larger companies to get licenses. On the other hand this may also be an opportunity for inventors to get their products to the markets.

Improvements in the quality of patents

The new law is intended to improve patent quality. Because the post grant procedures ensure an easy way to get an issued patent into review, it is assumed that any poor quality patent would be challenged. Another way to improve patent quality is that inventors are now expected to file better quality patents in fear of loosing their rights in post grant procedures. On the other hand, the new law may also result in inventors hurrying to file in order to  an early filing date, which might not be the way to improve patent quality.

Another possible reason for improvement in the quality of patents is that under the new law The Patent Office received the power to set it’s own fees. This change is intended to ensure that the Patent Office may hire more examiners and establish three new offices. This change is intended to expedite the current intolerably prolonged patent examination and thereby improve the patent quality.

Timeline

The new law will become in place gradually. The first step was increasing fees. All the fees increased by 15% at the end of September. The change to first –to-file will take place in beginning of 2013.

It will remain to be seen what the new law brings along. There are several ambiguous parts in the law, because there are new terms that are not explained. Hopefully the Federal Rules will bring clarity to part of these ambiguities.  Regardless of how the rules are written, there will also be new issues to be tried in the courts. It will take easily ten or twenty years before we have case law to address all these issue.  Thus, we need to be patient.

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FOREIGN FILING LICENSE –WHAT IS THAT?

by Susanne Somersalo, Esq., Ph.D.

When an inventor intends to file a patent application in a foreign country before he files the application in his own country, he may need to have a foreign filing license. For a citizen of the United States a foreign filing license would be required when the inventor plans to file his first patent application as a national application in some other country than in the United States, for example in Canada or in European Union countries. Importantly however, filing an international patent application (PCT-application) as a first application does not require a foreign filing license as long as the United States is named as one of the dedicated countries in the application.

Basically by requiring a foreign filing license in situation described above the government reserves a right to monitor national interests in inventions made by a US citizen. A situation where the inventor may not be able to get a foreign filing license would be for example where the invention is related to national security.

Foreign filing license may become an issue also in situations where one of the inventors is a foreign national not living in the United States. As an example we can envision a situation where a research group in the United States collaborates with a research group in China. The Chinese research group consists of citizens of China and the U.S. research group consists of citizens of the United States. The Chinese inventors may prefer filing a patent application in China and the US researchers may prefer filing a patent application in the United States. Provided that both the Chinese and the US citizens contributed to the invention, the names of both the Chinese and the US inventors would need to appear in the applications in China as well as in the US. However, in order to be able to file the first application in China, the US inventors would need to have a foreign filing license from the U.S. Patent and Trademark Office. On the other hand, in order to file the first application in the United States the Chinese inventors would need to have a foreign filing license from the government of China.

Provided that the invention is not such that the U.S. government would regard it to include matters important for national security, the US inventors can get a foreign filing license relatively easily and fast. Receiving a foreign filing license in China may be more complicated and therefore in the above described situation it may be easier for the U.S. inventors to get the license from the USPTO and then file an application in China. Within one year of the filing date in China, the inventors can file a US application claiming priority of the Chinese application.

Situations where a foreign filing license would be required do not occur often, but every now and then they are relevant. In order to handle such situations correctly hiring an experience patent attorney is crucial.

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Getting Patent Protection in China

-         Contributed by Harry Du

With the rapid development of the Chinese economy and the enormous manufacturing capacities, it is becoming more and more important to get intellectual property protection in China. Although generally criticized for its prevalent IP violations, China actually has been on an improving track in the past ten years. In particular, more and more companies consider it essential to get a patent for their product in China, either to protect its manufacturing base or a vast market, or both.

Before sending a patent application into the People’s Republic of China (PRC) Intellectual Property Office, China’s central authority for patent examination and issuance, it would be beneficial to understand the general patent categories and the basic application process in China.

Under the PRC Patent Law, there are three major types of protections that may be granted to an invention: patent, utility model, and appearance design. 

A patent in China is similar to a utility patent in the U.S. It is a robust monopoly granted to an invention after some rigorous examination process. Same as its U.S. counterpart, a PRC patent provides 20 years of protection from the date of filing the application. The overall examination process for a patent application includes five stages: acceptance of application, initial examination, publication, substantive examination, and issuance. The substantive examination process, as expected, is the most rigorous and time-consuming step. Overall, from the date of filing to the date of issuance, getting a full-fledged patent in China takes about 2.5 – 3.5 years.  As in the U.S., either a product or a method can be patented.  The fundamental requirements for granting a patent include: utility, novelty, and non-obviousness.

Utility models have no U.S. counterparts. In essence it is a small patent—a simplified version of patent with less protection and more limitations, but enjoying a simplified examination process. It is much easier to get—there is no substantive examination or publication and it usually takes only about 7-9 months overall.  In addition, the requirement of non-obviousness is lower for utility models than for patents.  However, a utility model only affords 10 years of protection from the time of filing.  Moreover, some important restrictions limit the coverage of utility model: (1) it does not cover methods; and (2) it only covers products with unique design or structures, or a combination of both.

Appearance design, as it is called in China, is essentially a counterpart of the U.S. design patent.  It protects the overall appearance of the product, not any underlying functionality or mechanism. Similar to utility model, it does not require substantive examination and the overall application process only takes about 5-7 months. The time for protection for design is 10 years from the date of filing.  The key for appearance design is unique appearance, not utility. However, the appearance must be replicable by industrial methods. Therefore, a genuine artistic work is, somewhat ironically, not eligible to get appearance design protection because of the difficulty to produce true replicates.

According to the PRC IPO, the number of patent applications in China has been rising constantly in the past few years.  For example, the numbers of applications for patents, utility models, and appearance designs in 2010 are 391177, 409836, and 421273, respectively, demonstrating a general increase of 20-30% for each category compared with just a year earlier, 2009.  

Nowadays, with the irreversible progression of globalization, it is essential to make long term plans regarding patent protection. China, as a critical component of the global product chain and market, is becoming more and more important. Please take it into consideration to get a patent in China, especially when it might help your business down the road.

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Is your Bowl Bash Legal?

You’ve invited the entire neighborhood over to watch the Giants beat the Patriots on your new 80 inch, LED, viewmongous TV.   Are you doing anything illegal?

Well, it depends.   “Super Bowl”, “Super Sunday”, “Giants” and “Patriots” are all trademarks of the NFL and their affiliates.   The broadcast of the game is copyrighted by them.   So does your party violate their rights – and should you be concerned?

The NFL does police its intellectual property diligently – as the Fall Creek Baptist Church in Indianapolis discovered in 2007. They were planning to hold a screening of the Super Bowl and to charge a nominal entry fee to cover costs.   However, when Rachel Margolies, an NFL lawyer discovered this – and that the church was planning to project the game onto a screen larger than 55 inches and to also show a film promoting Christian values at the same event, she immediately sent a “cease and desist” letter.   Oddly enough, this is a field in which size actually does matter - and 55 inches is the size. The relevant law - 17 USC 1.110 – aka - “Limitations on exclusive rights: exemption of certain performances and displays” states that showing broadcasts using an audiovisual device are exempt if “no such audiovisual device has a diagonal screen size greater than 55 inches”. After much bad press and ridicule as the “No Fun League”, the NFL backed down the following year. They issued a statement clarifying that the league had no objection to churches hosting Super Bowl parties as long as no admission is charged and the game is displayed on "a television of a type commonly used at home". They said nothing about coordination of other messages with the game or use of the term "Super Bowl."

Fortunately, you don’t have to be quite as careful as the Fall Creek Baptist Church, as this exemption also states that turning on a TV in your own house is not a "public performance" under copyright law.

So you're OK as long as you are not doing anything like setting up your TV outside, or charging admission to watch. You can, however, charge for drinks, as most sports bars will be doing on Super Bowl Sunday. 

From a business perspective, the important thing is not to use any of the copyright terms in any promotional material. “Get your wings here for Super Sunday” or “10% reduction on all beers for Giant’s fans” could get you in trouble.   “Get your wings here for the Big Game”   or “10% reduction on all beers for New York fans” will not.

Finally: Our prediction: Giants 34, Patriots 28. But remember, this is not legal advice, just the opinion of the author.

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Can I get a patent for my “idea?”

Clients sometimes ask us whether it is possible to get patent for his/her “idea.” The word is somewhat too vague to warrant a definitive answer. Our initial reply would probably be stereotypically lawyer-like: it depends. However, some further explanation may probably provide enough guidance.

When a client asks whether his/her “idea” can be patented, it usually falls into two kinds of situations. In the first category, the idea, though somewhat complete, is an abstract one that cannot be reflected in something concrete, such as a tangible device or a chemical compound. One fine example is a method to evaluate the ups and downs of the stock market. Can the client patent such an “idea?” The second kind of “idea” usually refers to a design or blueprint that is directed to something concrete, but the intended target of the “idea” is far from complete. For example, if the inventor has a detailed, fine scheme to build a remote-controlled paper clipper but the lack of funds made it impossible to buy some parts for now, can the inventor patent his “idea” for the device?

It is no surprise that which category does the “idea” belong to can affect its patentability – the likelihood it can get patent protection. For the first category of “abstract ideas,” the key is proper patent drafting that makes the “idea” fit into the subject matter requirement of patent law. If it is the latter category, the inventor needs to put more consideration into how detailed the “idea” currently is and how likely it will be materialized. This week’s blog post will discuss the first type of “abstract idea,” while the second category will be discussed next week.

For “abstract ideas,” the main obstacle for a patent protection is the subject matter requirement of patent law. Under Section 101 of the United States Patent Act, only “new and useful process, machine, manufacture, or composition of matter” can be patented. An “abstract idea,” in most circumstances, can be considered in some way as a process. However, a pure abstract idea, such as a mathematical formula (E.g. Einstein’s E=mc2), on its own, cannot be patented. On the other hand, a process to calculate, for example, the fluctuation of the stock market, may be patented if the patent application is drafted in an appropriate manner. The federal courts, through the years, have wrestled with the boundaries of patenting an “abstract idea.” In the past few years, the U.S. Supreme Court and the Federal Circuit Court have provided some guidance that is helpful to such an inquiry. All the legalise aside, the most reassuring way to make an “abstract idea” patentable is to associate the idea with “machine or transformation”—as instructed by the Federal Circuit Court. Under this doctrine, an idea, or a process is patentable if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another. For most of the “abstract ideas,” the most straight forward approach is to draft a patent application that directly links the idea to a machine that carries out the idea. It should be noted, however, the “machine or transformation” approach is not the only way to make a process patentable. However, as indicated above, it is probably the most reassuring method. Moreover, to draft such a patent application requires experience and a keen understanding of the invention. It is probably wise to seek professional help to avoid unnecessary delays in getting a patent.

So what about the “ideas” that are directed to tangible devices or compounds but the intended projects are far from complete? For these “ideas,” the key is how concrete and detailed the design or plan is. The major legal obstacle here is the Enablement requirement imposed by Section 112 of the United States Patent Act. Section 112 states that the specification of a patent, the detailed descriptions for the invention, shall Enable “a person skilled in the art” to “make and use” the invention. Here, “art” can be generally understood as the field of technology of the invention. If the patent application does not satisfy the Enablement Requirement, a patent will not be issued.

To better understand the Enablement Requirement, it is essential to get a basic grasp of the underlying rationale of the patent system. Fundamentally speaking, the patent system is an exchange between the inventor and the public: the public, through the government, grants to the inventor or the owner of the invention a monopoly of limited time (currently it is 20 years) to make, use, and sell the invention, in exchange for the disclosure of the invention by the inventor. Naturally the Enablement Requirement comes into play. Without this, there is no guarantee that the disclosure in the patent is sufficient to warrant granting the patent monopoly. The Enablement Requirement is the statutory language to hold the inventor to his/her side of the bargain—a full and useful disclosure of the invention. It is designed to make sure that the public, again through the government, will not be shortchanged.

For an “idea” that is not fully materialized, the patent law does not prevent the holder of the “idea” to get a patent for it. You need not wait to have a prototype remote controlled paper-clipper to file a patent for it, as long as your disclosure enables a “person skilled in the art”—usually considered a general expert in the field, to make one. However, if the “idea” is so vague and amorphous that it will not teach “a person skilled in the art” to build a remote controlled paper-clipper, the government will not grant a patent. As you may realize now, it is impossible to draw a definitive line here without carefully reviewing the “idea.” Moreover, it is also essential to be able to parse the legal definition of “a person skilled in the art” as well as the technology demand to “make and use” the invention. Therefore, it would probably wise to at least briefly consult a patent law professional as some legal expertise is required here.

Sometime a client may ask an important and related question regarding patenting an unfinished design: when is the time of invention—the time of having the “idea,” or the time of finishing making the prototype? If this blog was written a month ago, the answer would have been very complex and confusing. However, as if hearing the voice of the troubled inventors, Congress passed the America Invents Act of 2011 on 9/9/2011 and President Obama has signed it into law on 9/16/2011. Under the revised framework, the U.S. adopts a “first-to-file” system that no longer focuses on the time of invention to determine who the rightful owner of the invention is. The new system emphasizes the time to file the application. If A conceives the “idea” earlier, or even makes the prototype earlier than B, A still loses if B files his patent application first. Therefore, the new patent laws encourage one to file a patent application for his invention as soon as possible. But what is to stop him from filing for something dreadfully premature? That will be the task of the Enablement Requirement, which remains intact under the new law.

– Contributed by Y. Harry Du

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