State of Innovation

Patents and Innovation Economics

Ask the Patent Attorney: All I Did Was Combine a Number of Known Things Together, Can I Obtain a Patent for My Invention?

            I hear variations of this question all the time.  In fact, the more education the inventor has the more likely they will ask a question like this.  Let’s start with some basics.  First, conservation of matter (matter and energy) means that no one creates something from nothing.  In addition, if you applied for a patent suggesting you had a “totally new” item in your invention you would receive a rejection from the Patent Office (USPTO).  Assume your “totally” new item was called “XYZYG”.  Since the examiner at the USPTO would not know what “XYZYG” is, they would reject your patent application as “indefinite” under 35 USC 112, second paragraph.  This part of the statute states:

 The specification shall conclude with one or more claims particularly pointing out and distinctly claim­ing the subject matter which the applicant regards as his invention. 35 USC 112, second paragraph


The examiner at the USPTO would state that your item “XYZYG” fails to particularly point out the subject matter you regard to be your invention.

            So does this mean that an invention which is a combination of know elements is patentable?  No.  The law requires that an invention be novel and nonobvious.  However, for most people that is not very helpful.  I ask my clients – have you used technology to solve a real problem?  If the answer is yes and no one else solved the same problem in the same way, then you probably have a patentable invention.


May 20, 2009 - Posted by | -How to, Patents

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