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Is it Patentable?
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   Is it possible to patent just an idea?
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eric stasik
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Re: Is it possible to patent just an idea?
« Reply #15 on: Feb 8th, 2006, 3:41am »
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Mr. Ivey is spot on when he says - for the layperson - this appears to be an issue of semantics. Strictly speaking ideas are not patentable, only inventions can be patented.  
 
For example, a Russian scientist recently put forth the idea of mining H3 from the lunar surface and using this on Earth as a source of energy. It might be a new idea and it might be a non-obvious idea, but until he describes how to to do, it's not an invention.
 
For U.S. practioners, an invention has to satisfy at least the requirements of 35USC§101, §102, §103, and §112. These requirements are somewhat redundant and overlapping and I think it is hard to look at them conceptually as separate.
 
For example §101 extends patent protection to "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.." this overlaps with §102a) which says that a person shall be entitled to a patent unless "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent."
 
A rejection under §102a) is in effect also saying that the invention is not "new" and because only "new" processes, etc. under §101 can be patented there is no invention.  
 
This was the case in Parker v. Flook where the only novel feature of the method was a mathematical formula describing a law of nature. The SCOTUS decided the case on the basis of 35USC101. The Court noted, with some understatement, that "The line between a patentable “process” and an unpatentable “principle” does not always shimmer with clarity." In short, the Court determined that Flook's "Method for updating an alarm limit" was not patentablue under §101 because the only novel feature was an algorithm describing a law of nature (a newly discovered law of nature, but a law of nature nonetheless). By defining all laws of nature as prior art, the Court reasoned that there was nothing patentable in the claim as a whole. Once informed that all laws of nature (even newly discovered ones) are to be considered as prior art, an Examiner could have just as well rejected the claim under §102a).  
 
When it comes to ideas, the same overlap occurs. Unless the provisions of §112 are met, there is no "process, machine, manufacture, or composition of matter" on which to issue a patent. In other words, ideas are not patentable under §101, but the rejection is most likely to be on the basis of §112.
 
That being said, I well understand the concerns of the open source community on the issue of ideas being patentable. The concern is that if a method can be patented, then this is tantamount to patenting an idea because it covers all the possible implementations of the method. If "one-click" can be the subject of a patent, then any software inplementation of "one-click" is an infringement of the patent even though the inventor might only have described one particular way.  
 
If is a fair, if not entirely valid, concern. Patent practitioners understand the nuances of the patent statute, but the layperson has a bit more trouble. Remarkable failures that the USPTO made in the 1990s (The Compton Multi-Media patent, the Energizer bunny patent, etc.) only serve to perpetuate the myth that ideas can be patented. Despite the fact that both of these patents were rejected after re-examination, there are a great many people - particularly software developers - who still refer to these "patents."  
 
/Eric Stasik
 
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eric stasik
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amol ghadge
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Re: Is it possible to patent just an idea?
« Reply #16 on: Apr 5th, 2006, 3:10am »
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hello innovators
 
I partially agree with the views expressed by MR. Varun Chhonkar, wherein he has stated that Ideas can be patented.  
 
We need to understand the root cause of IPR protection, innovators want to protect or sale the feasible workable concepts into the market and would like to enjoy rights over the same.  
 
However Infringement suits entertained at the Federal circuits are concerning very specific enablement being infringed and not on altogether different idea being infringed, while writing claims unless the idea is fully grown in the mind (the feasibility of which being already tested and realised in the mind of inventor) broader and finer patent protection becomes diffucult.
 
In a typical subject of innovation problems are pretty well identified, except the disruptive innovation, areas to generate ideas is preidentified, if one obtain patent only for the said idea, will find himself in the soup when other innovators will make the most of it, as patenting is nothing but disclosing your idea to public. so beaware.
 
 
Amol Ghadge  
IPR consulting Engg,  
amol_insdoc@yahoo.com
Innovolve P & T Attorneys www.innovolve.co.in
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