How do you determine that your invention is patentable? 

I was chatting with a small business CEO this week who had created a product and asked me, “Does this qualify for a patent and if so, how would I go about getting one?”  That is a very good question, and it is time that I devote a column to this topic again. 

Our SCORE chapter has a mentor that helps CEOs with this type of question, but for this column I will share the expertise and writing of one of SCORE’s content contributors.  Deborah Sweeney, General Manager and Vice President, Small Business Services at Deluxe Corporation is an advocate for protecting personal and professional assets for business owners and entrepreneurs.  She summarizes this topic as follows.

What Is a Patent?

The United States Patent and Trademark Office (USPTO) defines a patent for an invention as “the grant of a property right to the inventor.”

A patent helps protect the mechanisms, principles, and components of an invention. The term for a small business patent starts on the date its application is filed with the USPTO. Generally, this lasts for 20 years. Patents tend to be filed less frequently than trademarks and copyrights within small businesses. However, this is still a necessary form of intellectual property protection for inventions.

How do you determine that your invention is patentable? 

A patentable invention is defined accordingly by the USPTO: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

The USPTO further breaks down the four requirements of a patentable invention.

  • “A” patent: This is singular. Only one patent may be granted for each invention.
  • Useful: The invention must have a specific, substantial, and credible utility.
  • Process, machine, manufacture, composition of matter: This is a description of the subject matter, and categories, eligible for patenting.
  • Whoever invents or discovers: The inventor is the only person who may obtain the patent.

Three types of small business patents include:

  1. Utility patents are among the most commonly filed small business patents with the USPTO. This type of patent may be a useful process, machine, article of manufacture, composition of matter, or new or useful improvement. These are four categories of statutory subject matter and may be defined accordingly.
    1. Process: This is an act, or series of acts or steps, typically from an industrial or technical process.
    2. Machine: The USPTO defines machine as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Essentially, this is the literal meaning of inventing a machine.
    3. Manufacture: These are articles made by the invention. They may be produced from raw or prepared materials and through either hand labor or by machinery.
    4. Composition of matter: This is the chemical makeup of the invention. It may be composed of two or more substances and all composite articles. This may be gases, fluids, powders, or solids.
    5. A fifth category may also apply to the word “useful.” The invention must be able to operate and have a useful purpose. For example, a new search engine is a type of software that may qualify as a utility patent.
  2. Design patents are granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
    1. How does this small business patent differ from a utility patent? A utility patent will protect the use of an article. Design patents protect the appearance of an article, but not its structural or functional features. Famous design patents include the Statue of Liberty and the original curvy Coca-Cola bottle. A recent example of a design patent are emojis, protecting the look and appearance of the digital icons.
  3. Plant patents may be granted to anyone that has invented, discovered, or asexually reproduced a distinct, new variety of plant. Here are a few examples: Cultivated sports. Mutants (this is only applicable if the mutant is discovered in a cultivated area), Cultivated hybrids. And Newly found seedlings.

Applying for a patent

As you prepare to apply for a patent, keep in mind the following:

  • What is your application strategy? You may choose to file as yourself (Pro Se) or work with a patent attorney or agent.
  • Will you file a provisional or nonprovisional application? This may be contingent on the type of small business patent you are filing.
  • Do you have enough money set aside for fees? There are several fees associated with filing a patent, including application fees, search fees, examination fees, and issues fees.
  • How soon do you need the patent? You may consider expedited examination options to file for and receive patent approval sooner.
  • Do I have everything I need for my application? Your patent application materials may require an oath or declaration, drawings, and additional written documents. Make sure you understand each required part necessary for obtaining your patent and include it with your application.
  • Will I mail my application or submit it online? Double-check everything prior to making this last step to ensure your application is complete. Remember that once your application has been filed with the USPTO, you will not be able to add new items to it.

Patent approval and next steps

If your patent is approved, congratulations! You will receive notice of approval and a patent grant that is mailed to you.

After receiving your small business patent, make sure to maintain the patent over the years. Pay any maintenance fees on time to ensure it does not expire and check the status as needed for this valuable piece of intellectual property.

About the Author(s)

Dean Swanson

Dean is a Certified SCORE Mentor and former SCORE Chapter Chair, District Director, and Regional Vice President for the North West Region, and has developed and managed many businesses. The Rochester Post Bulletin publishes his weekly article on a topic geared toward the small business community. The articles here are printed in their entirety.

Certified SCORE Mentor for the Southeast Minnesota Chapter
Small Business Patents