If you are an inventor who is considering filing a utility patent, this article will be useful for you to maximize your chance of getting a patent, and minimise your chances of a refusal. Some of the factors that can affect your chances of getting a patent are:
- Subject matter – There are some categories of technology domains that are not so easily patentable as compared to others. They are considered to be grey areas.
For Example – Business methods, economic practices, methods that are performed in the human mind instead of a computer, methods of diagnosis and treatment, etc. This can be challenging to patent. Subject matter objections can also be overcome with certain strategies, but if your invention falls into these categories, it is a challenge.
- Inventive step – You will need to ask yourself how unconventional is your invention, how out of the box it is, and how much technological advancement has been contributed to a technical field? If the technical problem is given to an average person in the field of the invention, then will the solution that they come up with be similar to your solution? Even if your invention is ‘novel’ it cannot be considered an inventive step unless it has technical advancement. The lack of an inventive step is the most common reason why a patent is rejected.
- Enablement – By enablement, we mean whatever you claim in your patent as exclusive rights, those components, those steps have to be explained with examples and data, to a sufficient level of detail so that a person of average skill in the field of the invention can implement the steps of your invention and get the desired result without undue experimentation. Patent drafting/ prosecution is not just about taking the information provided by the inventor and putting it into a particular format, it is important to expand on certain elements of the invention and also describe its implementation.
- Best mode disclosure requirement– This is a requirement whereby the inventor is required to specify what is the best method or best mode of implementation known to the inventor at the time of filing the patent application for the invention. Failure to provide this information can lead to the refusal of a patent.
So the above are some technical factors that may result in the refusal of a patent grant. Now, let us discuss what can be done to overcome these challenges and improve your chances of getting a patent grant.
- .One way to accomplish this is to make some comparison between your invention and the closest known prior art. Then provide data based on your findings that indicate significant improvement. Bear in mind the ‘Improvement’ has to be a technological improvement and not purely economic importance. The improvement information should be on measurable and quantifiable parameters. Some measurements or parameters you could use could be speed, memory, accuracy, and so on. Furnishing this kind of data and comparison provides evidence of an inventive step.
- Provide sufficient detail on the implementation of your invention, with the help of drawings, examples, practical use cases, and experimental data. The information that will enable a person of ordinary skill in the art to implement your invention without undue experimentation.
At Metayage IP, we have developed best practices that have resulted in a positive outcome even in challenging cases where the subject matter falls into grey areas, which has resulted in a success rate of over 90%. We believe that both the inventor and patent prosecutor should focus on those factors that are in your control, to maximize your chances of success. If you have a valuable invention and need expert help in getting it patented, email us at ip@myipstrategy.com