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Is it Patentable?
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   Is it possible to patent just an idea?
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   Author  Topic: Is it possible to patent just an idea?  (Read 2322 times)
Isaac
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Re: Is it possible to patent just an idea?
« Reply #10 on: Feb 7th, 2006, 12:53pm »
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I think the quibble is basically semantic.   In my mind a "mere idea" is a conception which is too vaguely held by the conceiver to be either built by one of ordinary skill in the art without inventive input, or to be distinguishable over the prior art, or to be distinguishable from a scientific principle.  
 
So by my definition a "mere idea" is not patentable, but it's also clear that whether some conception is a mere idea depends on the talent of the conceiver.   I don't think my definition is particularly helpful.  It's pretty much a legal conclusion rather than a tool useful for screening between mere ideas and patentable inventions.  
 
Most commentators who talk about ideas not being patentable usually qualify their statement by talking about "mere" or "naked" ideas.    That way when Jim gives his examples of patentable ideas, they can say, but that isn't a "mere idea."
 
Seems reminiscent of the our past discussion on the expression/idea dichotomy with respect to copyright.
« Last Edit: Feb 7th, 2006, 12:54pm by Isaac » IP Logged

Isaac
JimIvey
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Re: Is it possible to patent just an idea?
« Reply #11 on: Feb 7th, 2006, 1:26pm »
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Agreed, it's a semantic quibble.  I'm just trying to answer someone's question when they ask whether an idea, without more, is patentable.  Since a lay person is using "idea" in their question, I'm assuming it's not a legal conclusion.
 
To have a hidden legal definition of what an "idea" is generally doesn't help a potential inventor decide how to proceed.   However, I do understand that we practitioners have categorized the law in our heads using a vocabulary that explains things to ourselves -- but we have to be able to talk to lay people, translating as necessary, for our expertice to have any relevance.
 
I usually interpret that kind of question as asking whether a working prototype is required, and that's the question I answer.  And, of course, the answer is, "Sort of."  You don't have to actually have a working prototype, but you have to give someone sufficient instruction that they could make a functional prototype (yes, that's simplified, but essentially right).  If a lay person hears that "mere ideas are not patentable", they may go away defeated, knowing that they can't fund development of a prototype.  However, they might have sufficient understanding (or might be able to acquire sufficient understanding in a library) to cobble together some effective patent rights.
 
So, I'd argue that the important meaning of "idea" here is that intended by the original poster and poster of the follow up question.  If there's another word that captures their intended meaning better, we should offer it up as a rephrasing of the question.  
 
Personally, I'm reluctant to usurp "idea" from the public vernacular of what they get that eventually leads to a patent.  I suppose we could say "ideas" are not patentable but "epiphanies" are.  But I don't think that's an accurate statement of the law.  I suppose it all comes down to whether invention=idea or invention=idea+prototype.  I think the answer is somewhere in between.
 
For what it's worth, my posts here seem to parallel my approach in practice.  When a client says they have an idea, I don't say that's not enough; I tend to ask how they would tell someone to implement it or how it's distinct from other things I'm aware of (e.g., potential prior art).  In short, an idea is patentable if you can tell someone how to implement it and it's sufficiently specific to be novel and non-obvious.  
 
In short, I don't think there's any Section 101 objection to "an idea" -- only Sections 102, 103, and 112.  If you take care of Sections 102, 103, and 112, Section 101 tends to take care of itself.
 
Regards.
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Isaac
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Re: Is it possible to patent just an idea?
« Reply #12 on: Feb 7th, 2006, 2:02pm »
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About the only place where I disagree with you Jim is on your statement that 101 cannot be relevant.  
 
I agree that it for most questions of the type the OP asked, there is no need to haul tug on 35 USC 101, but generally the questions are not about attempts to patent ground breaking, start a whole new field technology.  
 
As an example, I believe those broad claims Morse tried to get on communicating at a distance using electricalmagnetism are an example of Morse trying to patent the underlying idea and being stopped by a 101 argument.   Maybe, 35 USC 112 could have been used...
 
But If I'm dragging up Samuel Morse, it's clear I'd really better be digging into the Office Action on my desk or I'll never get home tonight.
« Last Edit: Feb 7th, 2006, 2:03pm by Isaac » IP Logged

Isaac
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Re: Is it possible to patent just an idea?
« Reply #13 on: Feb 7th, 2006, 2:38pm »
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on Feb 7th, 2006, 2:02pm, Isaac wrote:
About the only place where I disagree with you Jim is on your statement that 101 cannot be relevant.

I didn't mean to say that 101 can't be relevant, just that it usually isn't.  If a lay person asks whether an idea is patentable, I interpret that as a Section 112 question rather than a Section 101 question -- I just think Section 112 is much more likely to be relevant than Section 101.
 
I'll drop the topic there or risk this becoming an entrenched, obscure, one-on-one discussion like the one about the involvement of the open source community.
 
Regards.
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James D. Ivey
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Varun_Chhonkar
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Re: Is it possible to patent just an idea?
« Reply #14 on: Feb 7th, 2006, 10:23pm »
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In principle idea cannot be patented. Any idea to be patentable must first be reduced to practice. In other words, you must conceptualize your idea into tangible form so that it can be practiced by others. As per your listed question, there is an idea but in manner that it cannot be performed or cannot be reduced in any form which can be utilized in any industry. Then in that case you cannot patent your idea. Actually idea is not patentable; it is the technical function/feature of your idea which is patentable. That is why while writing patent specification you have comply with enablement requirement and best mode requirements.  
 
However, presently your idea may look like an abstract theory but may be down the line after 3-4 years it is possible to practice it. So every idea can be subject to patent application subject to that its practical application can be well established in addition to novelty and non-obvious.  
 
Varun Chhonkar
Patent Specialist
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Varun Chhonkar
Patent Specialist
Mumbai, India
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