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(Message started by: John Smith on Dec 13th, 2005, 8:08pm)

Title: Is it possible to patent just an idea?
Post by John Smith on Dec 13th, 2005, 8:08pm
Is it possible to patent an idea such as say a spaceship that goes to space but not actually being able to make or produce it?

Title: Re: Is it possible to patent just an idea?
Post by Wiscagent on Dec 13th, 2005, 9:02pm
Your idea is not novel, so it is not patentable.

On October 4, 1957 the USSR launched Sputnik I into orbit.

Is your name John Smith or Rip Van Winkle?

Title: Re: Is it possible to patent just an idea?
Post by JimIvey on Dec 14th, 2005, 10:02am
Let's assume for the sake of argument ("aguendo" in lawyer-speak) that your idea is sufficiently specific to be novel and non-obvious -- e.g., a specific type of spaceship that's novel and non-obvious.

Getting past that hurdle, the answer is:  Yes, it's possible, sort of.

You don't actually have to be able to make and use the thing yourself.  But, you do have to be able to describe your idea in sufficient detail that an ordinary spaceship builder (seems like a bit of an oxymoron to me, but I'll continue) can make and use the spaceship from your description.

If you can't make that description, no patent.  Well, in theory, no patent.  Patent examiners generally aren't rocket scientists (literally, anyway).  So, they may not be able to determine whether you've met that standard.  So, you may end up with a patent that can be successfully challenged in court.

If you want enforceable patent rights, make sure you can describe the idea sufficiently.


P.S.  Actually, now that I think about it, I bet some patent examiners actually are rocket scientists.  At least, the level of ordinary skill doesn't seem to come up much in my applications.

Title: Re: Is it possible to patent just an idea?
Post by Wiscagent on Dec 14th, 2005, 11:02am
Jim is correct, as usual.  He focused on the requirements of 35 USC 112.

And pardon my “Rip Van Winkle” sarcasm.  The point I was trying to make is that “spaceship that goes to space” is not novel.  The novelty requirement to which I referred is found in section 102 of 35 USC.

Additionally section 101 of the patent code excludes “abstract ideas, laws of nature and natural phenomena.” from being patented. [MPEP 2106]  Arguably, a “spaceship that goes to space” isn’t even a statutory invention; it is just an abstract idea.

Richard Tanzer

Title: Re: Is it possible to patent just an idea?
Post by RyanJH on Feb 6th, 2006, 4:02pm
So if I had a concept with pictures and an indepth explination on what my idea is. However, I don't know what exact materials are used but talked to a software designer that said it can technically be made. Can I get a patent?

Title: Re: Is it possible to patent just an idea?
Post by JimIvey on Feb 6th, 2006, 4:42pm
It all depends on whether you give enough details that an ordinary software developer can make and use your invention from your description.  If she can, you're in luck.  If not, no patentable rights.  

Notice I didn't say "no patent."  Patent examiners aren't always particularly tough on that issue, so it's possible that you'd end up with a patent that would not withstand challenge in court.

Unfortunately, the time you'll most likely know if you've described enough would be too late to add more description.  So, it's usually best to err on the side of over-describing rather than under-describing.

I'd suggest talking to the software engineer some more and seeing if you can identify some of the building blocks that would be needed for your idea (all of them, if you can).  If you can show those known things at boxes on a block diagram and explain the rest, you're in pretty good shape.


Title: Re: Is it possible to patent just an idea?
Post by Wiscagent on Feb 6th, 2006, 4:53pm
Jim's responses answer your question; but here's a slightly different slant.

I'll paraphrase the relevent section of the US patent law:

  The application shall contain a written description of
  the invention, and of the manner and process of
  making and using it ... as to enable any person skilled
  in the technology, to make an use the invention.

                             [See 35 USC 112 paragraph 1]

You wrote "I don't know what exact materials are used but talked to a software designer that said it can technically be made."

I'm not sure what you mean by "materials."  But if you mean actual physical parts and pieces, I doubt that a software engineer would be a "person skilled in the technology."

Richard Tanzer

Title: Re: Is it possible to patent just an idea?
Post by RyanJH on Feb 6th, 2006, 4:57pm
It's a software/hardware type thing. It's a software that can be used in cell phones and PDA's and SmartPhones, etc. When I sent the software company my idea they said they would be able to make it. When I was talking about not knowing what materials to use, yes I was talking about not knowing the parts needed. Like, I know what they are to an extent, I don't know how to put it together and make it and stuff like that.

Title: Re: Is it possible to patent just an idea?
Post by eric stasik on Feb 7th, 2006, 1:31am
John Smith asked "is it possible to patent an idea?"

Here is an excerpt from my soon to be released book on Software patents:

This is a question many people ask. Linus Torvalds (driving force behind the Linux kernel), denounced the EU Directive on Computer-Implemented Inventions in  Nov. 2004 complaining,

"It's not even just about software patents. Patents on ideas are wrong, whether in software or in business. You should patent some concrete machinery, not a way of doing things."

Mr. Torvalds might be surprised to learn that the U.S. Supreme Court largely agrees with him. In fact, for the past 150 years the U.S. Supreme Court has stubbornly and consistently held that ideas and fundamental principles of nature cannot be patented.

6.1      Patents on Ideas are Wrong

In 1854, in the case of Le Roy v. Tatham, the Court said:

"A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right."

In 1862, in the midst of American civil war, in the case of O'Reilly v. Morse, the U.S. Supreme Court denied the inventor of the telegraph, Samuel Morse a patent on the use of “electro magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.”"

Electricity and magnetism are fundamental principles of nature and cannot be patented, but that was not what Morse was trying to claim. His claim was directed towards a specific use of electricity and magnetism.
The Court’s ruling was very simple. Morse was indeed entitled to a patent on the use of electromagnetism, as developed by him but not however developed by anyone. In other words, he could not claim patent rights on things not yet invented and not described in his application. Disallowing the claim, the Court revealed their sanguinary discomfort over the impact such a broad patent might cause:

"If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet, if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee."

In effect, Samuel Morse was trying to patent an idea, but the Court only awarded him with a patent covering his invention.

In 1874, in Rubber-Tip Pencil Co. v. Howard (20 Wall. 498, 507), the Court said more succinctly:

"[a]n idea of itself is not patentable."

In 1939, the Court clarified in Mackay Co. v. Radio Corp. (306 U.S. 86 94) that:

"[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be."  

Later, in 1948, in Funk Bros. Seed Co. v. Kalo Co., (333 U.S. 127, 130) the Court emphasized that:

"[h]e who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end."

There are not obscure legal footnotes, but oft-cited, well-settled law in the United States. If anything can be said with clarity, it can be said that ideas and fundamental principles of nature cannot be patented in the United States (or anywhere else.)

In short, no, it is not possible to patent an idea.

/Eric Stasik

Title: Re: Is it possible to patent just an idea?
Post by JimIvey on Feb 7th, 2006, 10:25am

on 02/07/06 at 01:31:32, eric stasik wrote:
In short, no, it is not possible to patent an idea.

It's good to hear from Mr. Stasik again; it's been a while.

However, I'll have to respectfully disagree.  I think it all comes down to what "an idea" is.  I believe the word, "idea", covers anything from the very abstract (e.g., "time travel", "a machine that soars like a bird") to the very specific (e.g., specific approaches to lossless audio compression).  I still maintain that, if the idea can be expressed in sufficiently specific terms so as to enable one of ordinary skill in the relevant technology/ies to implement the idea and can be captured in a claim that is novel and non-obvious, the idea is patentable -- to the extent captured in such a claim.

However, to progress in this type of discourse, we need to nail down a definition of what "an idea" is.  Some say "merely an idea" in an effort to clarify the topic -- I think adding "merely" falls short.  I think Mr. Stasik's quote evidences something more specific than "an idea":

on 02/07/06 at 01:31:32, eric stasik wrote:
"A principle, in the abstract, is a fundamental truth; an original cause; a motive; ... ."

But I respectfully submit that "idea" is insufficient to eliminate patentable things.  

An "idea" I had years ago was probably a good example of a specific idea:  why not use the divided difference algorithm used in pixelating straight lines to "shear" a two-dimensional bit-mapped image?  I have no idea whether I was the first to think of that, or the last, but that idea, expressed in those terms, was probably patentable at some point (limited only by novelty and non-obviousness concerns, not that it came to me as "an idea").

However, I do agree that, if an idea is too abstract to be expressed in sufficient detail that an ordinary artisan can implement the idea, such an idea is not patentable.


Title: Re: Is it possible to patent just an idea?
Post by Isaac on Feb 7th, 2006, 12:53pm
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.

Title: Re: Is it possible to patent just an idea?
Post by JimIvey on Feb 7th, 2006, 1:26pm
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.


Title: Re: Is it possible to patent just an idea?
Post by Isaac on Feb 7th, 2006, 2:02pm
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.

Title: Re: Is it possible to patent just an idea?
Post by JimIvey on Feb 7th, 2006, 2:38pm

on 02/07/06 at 14:02:34, 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.


Title: Re: Is it possible to patent just an idea?
Post by Varun_Chhonkar on Feb 7th, 2006, 10:23pm
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
Mumbai, India  

Title: Re: Is it possible to patent just an idea?
Post by eric stasik on Feb 8th, 2006, 3:41am
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

Title: Re: Is it possible to patent just an idea?
Post by amol ghadge on Apr 5th, 2006, 3:10am
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,
Innovolve P & T Attorneys

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