It's Not Patentable - Or Is It?
Don’t be a Victim of a Common Misconception of Patentability
July 27, 2017
By: Morgan Heller II
Patentability of an innovation.
Unless you are a patent professional or have learned about patentability requirements through a job or some other experience, you are probably like most people – you really aren’t sure what makes an innovation patentable. And that’s not something to be ashamed of. It is certainly easy to see why most people don’t know much about patentability requirements.
Most everyone has heard of patents and has a high-level understanding that they represent rights that the patent owners have in the patented inventions. However, beyond that, most people don’t know exactly how the government determines whether or not it should grant a patent for a particular innovation. Even if someone knows that to be patentable an innovation needs to be novel and nonobvious, they likely don’t know what that really means from a legal perspective. These criteria for patentability, especially nonobviousness, are rife with esoteric legal rules and tests that would cause the eyes of most everyone that is not a patent practitioner to glaze over. The relative inaccessibility of patent law has led many people to either misconceive how patentability is determined or to avoid even trying to understand patentability requirements altogether.
One common misconception is that an innovation needs to be complex to be patentable; and this is understandable. For example, many people know that the likes of IBM, Apple, Microsoft, Google, etc., obtain patents for their “high-tech” devices and software. These devices and software are sophisticated and complex, so the underlying innovations and patents must be complex – right? For a large part, the answer is actually “no.”
While, overall, high-tech devices and software may indeed be deemed complex, in many cases the innovations the manufacturers are patenting are only small, incremental improvements, and, fundamentally, they aren’t complex at all once you peal back the complexities of the environment they operate in. Indeed, many of these improvements are often viewed as obvious in hindsight. Nevertheless, they are patentable.
A result of believing that innovations need to be complex to be patentable is that many innovators having relatively simple innovations do not attempt to seek patent protection. This can lead to a number of negative consequences, including not being able to stop a competitor from copying, losing market share, foregoing a negotiation bargaining chip, making attracting investors more difficult, and having to settle for a lower company valuation, among others.
Highly intelligent people, such as engineers and industry and academic researchers (collectively, “technologists”), are some of the worst offenders when it comes to miscomprehending what makes an innovation patentable. This may be due to a combination of not only not knowing how patentability is determined, but also because they live and breathe their technologies. When technologists work in their fields every day and their jobs are, literally, to solve complex problems, it is no surprise that they tend to view their innovations as routine and not rising to the level of patentability. This can be a problem for the organizations the technologists work for and requires that the organizations implement rigorous intellectual property (IP) management practices, including educating their technologists on patenting and the importance of not judging their own innovations in isolation. Some of the best IP management programs have technologists routinely submit innovation disclosures for independent assessment by a patent board or other group or person in charge of determining whether or not to seek patent protection.
One commentator uses the term “coefficient of shame” when explaining the importance of technologists recognizing that even the smallest innovation can be patentable. Because I have seen this coefficient of shame at work in my patent practice, I will briefly describe my understanding of its gist. However, I encourage you to read the original work cited in the footnote below.
The coefficient of shame, denoted “Cs” true to scientific/engineering style, is defined to range from 0 to 1. When a technologist has a Cs = 0, that technologist has no shame in reporting her innovations, even simple ones, as being of utmost value and importance – and not being shy about telling everyone. A technologist having a coefficient of shame of 0 and who follows recommended IP management practices will undoubtedly prepare an innovation disclosure for every innovation they make, regardless of its complexity. While someone having a coefficient of shame of 0 may present an occasional annoyance when overenthusiastically describing their every achievement, their behavior in submitting innovation disclosures routinely is exactly the right behavior from the organization’s perspective.
At the opposite end of the scale is Cs = 1. The commentator mentioned above describes a technologist with a coefficient of shame of 1 as having “infinite shame” – ostensibly embarrassed to tell anyone about her innovation unless she is convinced that the innovation is a game-changer. Since world-changing innovations are relatively rare, a technologist having a coefficient of shame of 1 will keep her innovations to herself and ignore any sort of innovation reporting procedures the organization may have. Clearly, having a high coefficient of shame is not good for the organization.
My experience indicates that most technologists naturally have a coefficient of shame somewhere between 0.7 and 1. This suggests that unless organizations are vigilant in having managers or other overseers continually monitor their technologists, it is likely that innovation from these technologies are going unreported to the IP managers. To help counteract this, organizations need to educate and train their technologists to lower their effective coefficients of shame to the point that the technologists are not reticent about submitting innovations disclosures even if they are not certain of its value or patentability.
The most important takeaway from all of this is that, regardless of whether you are part of an organization interested in patenting or are an independent inventor, you should not discount the possibility that an innovation, regardless of how simple it is, may be patentable. If you do not have access to an IP manager to help with assessing patentability of an innovation, a patent professional can help you perform that assessment.
 Joseph E. Gortych, in his book Consider a Spherical Patent – IP and Patenting in Technology Business, CRC Press, 2014, p. 180. I highly recommend this book, especially for anyone interested in gaining deeper knowledge of patents, IP strategy, and related issues. The book covers a wide array of topics and is written for easy comprehension by managers and executives in technology businesses, among others. The clever use of physics analogies in explaining many of the topics is not only entertaining but also gives the reader a non-legal perspective that can make the subject matter easier to understand for anyone having a basic knowledge of physics.