Registered Patent Agent - Robert M. Hunter on Patents

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	Robert M. Hunter, Ph.D. Registered Patent Agent WebPatent.com

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INVENTION EVALUATION

by Robert M. Hunter, Registered Patent Agent

Evaluation is an important activity in the process of securing patent protection. The results of some evaluations inform decision-makers determining whether to file for a patent in particular jurisdictions. The results of others provide important information about how and when to prepare patent applications.

The preparation of three types of evaluation documents is supported. Each document contains information about a particular, named invention and (when completed) contains a preliminary conclusion with respect to the subject of the evaluation. A U.S. Patentability Evaluation is used to gather the information that is needed to determine whether the invention is patentable (i.e., useful, novel, and non-obvious) under U.S. law. A PCT Patentability Evaluation is used to extract the information needed to determine whether the invention appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability as those terms are used in an International Preliminary Examination Report. (Because an international patent does not issue from an international patent application, an invention's satisfaction of the stated critera does not guarantee that the invention will be patentable under a particular national law.) An Inventorship Evaluation is used to collect information from each alleged inventor that is needed to determine whether this person qualifies as an inventor of the invention under U.S. law.

U.S. Patentability Evaluation

Determining whether an invention is patentable under U.S. law can be a complex endeavor. This is true because critera for patentability under U.S. patent law have evolved over 200+ years during which time laws have been replaced, supplemented and amended. Also, the courts have interpreted and reinterpreted those laws. Preparation of the evaluation is supported by dividing it into a number of discrete steps or elements, with each element addressing a single, (hopefully clear) patentability question or rule. Each rule is explained in the files listed below:

What is the date the invention was completed?

What is (or will be) the filing date of the U.S. patent application?

Is the invention a process, a machine, a manufacture, a composition of matter, or an improvement thereof?

Is the invention illegal or contrary to public policy or the public good?

Is the invention a scientific or mathematical theory?

Is the invention a property or phenomenon of nature?

Is the invention a method of conducting business?

Is the invention a human treatment method?

Does the invention have at least one believable use?

Is the invention useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon?

Was the invention known by or made available to the public in any way anywhere in the world before the U.S. filing date?

Was the invention claimed in a patent that issued anywhere more than one year prior to the U.S. filing date?

Was the invention described in a printed publication anywhere more than one year prior to the U.S. filing date?

Was the invention used in public in the U.S. by the inventor(s) or anyone else more than one year prior to the U.S. filing date?

Was the invention sold or offered for sale in the U.S. more than one year prior to the U.S. filing date?

Was the invention publicly used by another or accessible to the public in the U.S. prior to the date of invention?

If a sale or public use did occur, did it meet the "experimental exception" in that the user was required to report how well the invention functioned?

Was "how to make" and "how to use" the invention publicly known in the U.S. prior to the date of invention?

Was the invention described in a written or printed publication anywhere prior to the date of invention?

Was a non-U.S. patent or inventor's certificate on the invention (based on a non-U.S. application filed more than a year before the filing date of the current U.S. patent application) issued to the current inventor(s) before the U.S. filing date?

Was the invention described in a published U.S. patent application by a different "inventive entity" that was filed in the U.S. prior to the date of invention?

Was the invention described in a U.S. patent granted on an application by a different "inventive entity" that was filed in the U.S. prior to the date of invention?

Was the invention described in a patent granted on a "parent" PCT (international) application by another who filed a "child" national application in the U.S. prior to the date of invention?

Was the invention abandoned (e.g., dedicated to the public or not diligently developed) by its inventor(s)?

Did someone else think of the invention before the current inventor did and then communicate it to the current inventor?

Was the invention diligently completed in the U.S. by another (who has not abandoned, suppressed, or concealed it) prior to the date of invention?

On the date of invention, would the invention have been "obvious" to a person having ordinary skill in the art to which the invention pertains?

If the invention is a process that is otherwise obvious, is the claimed invention (1) a genetic engineering process, (2) a cell fusion process or (3) a process of using a product produced by one or both of such process(es) and does the process use or result in a composition of matter that is novel and nonobvious?

If the invention is obvious in view of subject matter invented by another, was the subject matter and the invention owned by the same entity or subject to an obligation of assignment to the same entity on the date of invention?

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PCT Patentability Evaluation

An evaluation of whether an invention appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability as those terms are defined under the rules of the Patent Cooperation Treaty (PCT). This evaluation is termed a "PCT Patentability Evaluation" even though satisfaction of PCT rules does not mean that an invention will or will not be patentable under any national law or regional patent convention. Preparation of the evaluation is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single, (hopefully clear) patentability question or rule. Each rule is explained in the pages listed below:

What is (or will be) the filing date of the PCT patent application?

Can the invention be made or used (in the technological sense) in any kind of industry?

Is the invention illegal or contrary to public policy or the public good?

Is the invention a scientific or mathematical theory?

Is the invention a plant or animal variety or an essentially biological process for the production of plants or animals?

Is the invention a method of doing business?

Is the invention a method for treatment of the human or animal body by surgery or therapy or a diagnostic method?

Is the invention a mere presentation of information?

Is the invention a computer program?

Was the invention known by or made available to the public in any way anywhere in the world before the PCT filing date?"

Was the invention described in a written disclosure made available to the public anywhere in the world prior to the PCT filing date?

Was the date that the invention was made available to the public by means of an oral disclosure, use, exhibition or other non-written means indicated in a written disclosure which was made available to the public on or after the PCT filing date?

Was the invention disclosed in an application or patent that was published on or after the PCT filing date but filed before that date or was it disclosed in such an application or patent that claimed priority in an application that was filed before that date?

On the PCT filing date, would the invention have been obvious to a person having ordinary skill in the art to which the invention pertains?

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U.S. Inventorship Evaluation

An evaluation of who is likely to be deemed an inventor of an invention under U.S. law is termed a "U.S. Inventorship Evaluation." Each person who might fit the legal definition of inventor should prepare an inventorship evaluation, because errors in inventorship in a U.S. patent application are cumbersome to correct, and errors with deceptive intention can destroy the validity of an issued patent. Preparation of the evaluation is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single, (hopefully clear) inventorship question or rule. Each rule is explained in the files listed below:

To which inventor does this inventorship evaluation apply?

Is the invention to be patented in the United States?

Did you contribute to the conception of the claimed invention?

Did you adopt ideas, suggestions or materials from others?

If you did adopt ideas, suggestions or materials of others, did you none the less maintain intellectual domination of the work of making the invention?

Did you have a contact with or were you aware of the work of another who has made a contribution to conception of a claimed invention (i.e., at least one of the inventions claimed)?

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Commercial Potential Evaluation

It is appropriate to evaluate inventions for commercial potential soon after they are conceived, particularly if development of inventions is being carried out for the purpose of building wealth. The factors listed below and described in the associated document web should be considered before significant investment in an invention occurs. Basis of New Industry
Customer's Need
Need Recognized
Early Adoption
Different Applications
Market Size
Market Growth
Market Share
Barriers to Entry
Product Champions
Degree of Interest
Networks in Place
Difficulty to Understand
How Different
How Much Better
Difficulty to Prove Better
Difficulty to Protect
Duration of Protection
When Obsolete
Combination with Other Inventions
Reputation of Inventor
Inventor Understands Marketplace
Inventors' Track Record
Inventors' Willingness to Assist
Inventors' Still Inventing

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