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[ii13]

Good morning all,
I am "scratching" my head a lot lately (and search the web of course) in order to understand how can i recognize a potential patent?
I am "sitting" in the center of many ideas all are brought to me in order to think what we can do with them, but one think i am not sure i am doing good enough is to read an idea and find out if it can be a patent

Can anyone help a little? maybe suggest a book or even a good seminar?

Thank you

i.

[Kaitlin]

The patent practitioners in the forum should have better suggestions than I, but here are some basic points for general background and context.  I'm not a patent-practitioner myself, so take what I say with a grain or two -- or even a fist-full -- of salt till the true patent people correct or confirm this, but in a mangled mix of lay terms and patent jargon, here's my version of "Patents 101":

The patent is a means to protect an invention (including processes and, I believe, certain methods). 
The invention has to be more than just an inchoate idea however; you have to actually have made a workable version of the invention ("reduced it to practice") before you can patent it.
The invention must be something new ("novel").
It must be something "useful" (unless you're going for a design patent, i.e mere ornamentation, but that's another animal).  It's got to be good for something.
It must be "non-obvious"--if someone who both is skilled in the art (knows this field of science) and also knows about other similar inventions that are already out there (prior art) would look at the invention and say, "so what?, anyone would know to do that!," then the gizmo might be one that's "obvious".
And the invention must not be of the sort that falls into certain statutory exclusions.

To make sure your invention is novel and non-obvious, a patent search must be done for "prior art" -- earlier inventions which have been either patented or described in scientific journals or other public literature which may be considered to have led up to or anticipated (or been the same as) your invention.  If your invention is among them, it's not novel.  If your invention is just the next logical step from those, then it's "obvious."  Knowing what the prior art is is crucial to determining patentability, so you want the search done by someone who knows what they're doing.  (Having this information also helps you craft the claims of the patent application so they cover only what's novel, useful, and non-obvious.)  And note that if someone else published or patented your invention first, it doesn't matter if you came up with your idea independently.  In patents, first in time is first in right.

Once you make your invention public, in the US you have just one year in which to file for a patent.  I believe that, in many other countries, making the invention public automatically bars you from patenting it, so if you think you've got something with international potential--keep it secret (and use non-disclosure agreements if you need to show it to outsiders, like investors, e.g.).

In the US it is possible to stop the clock on the one-year deadline (at least for a time) by filing a "provisional" patent application.  My understanding is that this involves gathering together all your notebooks on the invention, showing everything that will be needed to properly describe the invention (including notes on its reduction to practice?), and filing the lot with the PTO.  Then you and your attorney can take more time to sort it all out into proper claims in a regular application, which gets a priority date going back to when you filed the provisional application. 

Critical to protecting your invention with a patent are the claims.  The proper drafting of claims is a highly specialized art which, to be done right, requires both knowledge of the patent law and of the science involved.  The claims effectively are the patent.  (The drafting of the specification of the patent is also important, since that can influence how the claims are interpreted.) The claims describe what is protected.  Mess up a claim, and your patent, even if granted, may protect the wrong thing and be worthless to you.  This is a good reason, if you can afford it, to have the patent application drawn up by a patent attorney or patent agent. 

A decent website with patent basics is:
http://www.bitlaw.com/patent/requirements.html

Nolo press books are pretty good in translating law into lay terms.  The one on filing your own patents is shown at:
http://www.nolo.com/products/patent-it-yourself-PAT.html  (It has a section on determining whether or not your idea is patentable.)

[Ghoti]

To know if an idea is patentable you need to understand the requirements of patentability.

As an introduction, if you search wikipedia for 'patentability' under the heading 'requirements' it has links to wiki pages discussing 'novelty' and 'obviousness'. These are the first two elements that I would be trying to get a general understanding of.

You don't 'need' to do a search for prior art, but it is the best way to find out if your idea is new (ie novel). There are a number of free websites that will let you do patent searching eg Google patents. If you find a patent (or other literature) that describes your invention, then its not novel and you can't patent it. If you don't find a patent that describes your invention then either a) you need to search more or b) its new.

The frustration for beginners is understanding that no-one ever really knows if they are at a) or b).
At a point in time (usually defined by the amount of money spent on searching) you decided that you should stop searching and start patenting. If this is your first time searching, there will be a steep learning curve but in my humble opinion it is well worth the time investment.

[MYK]

You don't 'need' to do a search for prior art, but it is the best way to find out if your idea is new (ie novel). There are a number of free websites that will let you do patent searching eg Google patents. If you find a patent (or other literature) that describes your invention, then its not novel and you can't patent it. If you don't find a patent that describes your invention then either a) you need to search more or b) its new.

Use more than just Google.  Perhaps it's changed by now, but I was warned a couple of years ago that they haven't really scanned all U.S. patents, just a sampling.

Once you get a few close patents out of Google, you can use the classification codes to pull up similar patents from the USPTO website.  USPTO's search engine doesn't have full-text before 1976, but, IIRC, it will still pull up old patents based on classification code.

[Kaitlin]

You don't 'need' to do a search for prior art, but it is the best way to find out if your idea is new (ie novel).

Good catch.  I shouldn't have said a search "must be done" since it sounded like a statutory requirement.  But one WILL be done by the PTO during the application process and I believe it's highly advisable for applicants to do one/have one done to know as much as they can (or can afford) about where they stand on novelty (and obviousness, I would think) before investing further in the application process.  And I believe knowledge of the prior art is important in drafting the claim(s) of the patent, and a good patent attorney/patent agent will use that information to ensure the claim(s) are directed to the truly innovative aspects of the invention.)

[Kaitlin]

This on-going discussion thread on claims may be of interest to the OP.  It brings up some of the sorts of considerations that go into drafting claims in patent applications: http://www.intelproplaw.com/ip_forum/index.php?PHPSESSID=r2rkvm8dmc2r12oa5ltee7uuc5&topic=17872.0

[bartmans]

But one WILL be done by the PTO during the application process and I believe it's highly advisable for applicants to do one/have one done to know as much as they can (or can afford) about where they stand on novelty (and obviousness, I would think) before investing further in the application process.  And I believe knowledge of the prior art is important in drafting the claim(s) of the patent, and a good patent attorney/patent agent will use that information to ensure the claim(s) are directed to the truly innovative aspects of the invention.)

It is one of the benefits of (most of) the national European patent systems, the EPO and also the PCT system, that you will get a search and preliminary written opinion on your filed application during the priority year. With that, you can make a sound judgement about the chances of your claims being allowable. Further, since you are still in the priority year, you can amend and refile the application to be in a better position.
It is a pity that in the US the applicant is left in the dark by the PTO.