We’ve heard how important it is for a business to protect its intellectual property, but how do you know when an invention can be patented?
There are several requirements that must be satisfied before something can be patented by the U.S. Patent and Trademark Office: the invention must be new, useful and nonobvious; the invention must be fully disclosed in a patent application; and the invention must be eligible or in a statutory category that can be protected with a patent.
While these requirements may seem simple enough on the face of it, there are subtleties and complications hiding below the surface. Let’s look at each requirement.
Patent Eligibility
If you are claiming a process, method, machine, article of manufacture or composition of matter, your invention is eligible for patent protection. These statutory classifications may be understood as:
– A “process” or “method” is defined as an act or a series of acts or steps or a technique that must be accomplished in some specific way to obtain an end result. For example, in the cannabis industry, a manner of harvesting cannabis plants, such as during a specific range of temperatures, may be patentable subject matter.
– A “machine” is considered to be a concrete object that consists of parts or devices and that operates to accomplish one or more objectives. In new industries, such as cannabis, everything has to be reinvented to harvest, process or manufacture cannabis products due to, for example, the sticky, resinous quality of the raw plant materials. Inventing machinery to successfully handle this or other conditions may be patentable.
– An “article of manufacture” is an end result produced from raw or prepared materials by giving the materials “new forms, qualities, properties or combinations” whether by hand labor or by machinery. For example, in many cases cannabis edibles and other consumables that result from specific manufacturing processes are protectable under the law in virtue of “how they are put together.”
– A “composition of matter” is an end result that combines two or more substances either by chemical union or mechanical mixture to create “a composite entity that possesses properties which belong to none of the ingredients in their separate states.” Food products, or the results of chemical processes and formulation methods to create finished goods or quasi-pharmaceutical products, are protectable under patent law.
While these categories are the basic statutory categories of invention, there are also a few other domains of creation that can, under the right circumstances, be patented, such as living plants, software and non-functional designs.
Plant patents are a widely overlooked opportunity to obtain legal protection for marijuana plants and cultivars, as is “plant variety protection” (PVP), a non-patent form of protection. It is especially important to protect carefully bred strains, to avoid injection into the public domain.
Software and information technology are just beginning to make their debut in the cannabis industry to operate equipment and control processes. At this stage, it is easy to overlook opportunities to patent software and information technology in the cannabis industry, but in all industries, more than half of the patents that are issued are for software patents.
And finally, non-functional design patents are widely overlooked by creative product designers as a way to protect ornamental designs associated with, for instance, paraphernalia and cannabis consumption equipment. Carvings, embossing or debossing and overall shape designs that have no function in and of themselves, can, if they qualify for originality, be protected under patent law with design patents. In many cases, graphic user interfaces (GUIs) may also be protected with a design patent. For example, Nike uses design patent protection to prevent competitors from copying its shoe designs. Apple and Samsung use these patents to protect the “look and feel” of their iconic smartphone interfaces. Design patents are the fastest growing field in the technology industry.
Historically, virtually everything has been viewed as protectable under patent law, and Congress intended to “include everything under the sun that is made by man.” The allowance of patents is intended to fuel innovation and invention, to drive industry and the economy, and to advance civilization.
What cannot be patented are: a) laws of nature; b) natural phenomena; or c) abstract ideas to include mental processes and pure mathematical algorithms.
— Lindsay Moore, Ph.D.
Novelty
An invention must be new and “novel” to able to be protected under patent law. To be novel means the invention must be different from anything that is embodied in any single previous invention considered to be the “prior art.” Further, it must be different than its prior art, not infringing an existing invention, and the invention must be the first to be filed for patent protection. Under U.S. patent law, whoever is first to file — irrespective of who is the first to invent — receives the rights to a respective invention if a patent is issued.
If the invention has already been disclosed by the inventor to the public anywhere in the world by publication, use or the sale of its products in the marketplace, the inventor has only 365 days from the earliest disclosure to file for patent protection. If one year has passed, it is too late to file to protect the invention, which is now considered to be in the public domain and can no longer be protected. Regrettably, many inventions fall into the public domain, particularly in early stage businesses that are not aware of the one-year requirements of patent law.
Usefulness
Patent law states that all inventions must be useful and have a specific, substantial and credible utility in the world, and their usefulness must be clear, such that one skilled in the art would find the utility to be notable.
This requirement is fairly easy to meet, so long as the invention is not considered to be trivial. While “everything made by man” may be patentable, to be considered for patent protection an invention must be worthwhile and important.
Nonobviousness
An invention cannot be protected if it would be obvious to one ordinarily skilled in the art or field of invention. To be “nonobvious,” an invention must show true ingenuity.
Further, an invention would be considered obvious if it could be shown to be made of a number of previously existing inventions, so it can be hard to judge whether an invention is obvious or nonobvious, making this a difficult requirement to meet.
Some tests of obviousness are:
– Is the invention anticipated by the prior art, or does it just appear to be a follow-on with some minor difference? If so, the invention is probably obvious. For example, merely adding cannabis to an existing recipe probably doesn’t qualify as patentable subject matter. It would be obvious to deliver cannabis in an edible recipe.
– Does the invention fulfill a long-felt need or overcome a previously difficult problem that seemed unsolvable? If so, the invention is probably nonobvious. The fulfillment of a need and the solving of insuperable problems are both strong indicators of patentability.
– Have others failed to envision the invention, or were experts in the field skeptical that the invention would work if it were tried? If so, the invention may be nonobvious. Envisioning an invention that others couldn’t conceive of or doubted is a likely indicator of patentable subject matter.
Nonobviousness is the most difficult requirement to fulfill. It means there is no obvious combination of prior art inventions that when put together would be the invention you wish to patent. If there is no such combination of prior art inventions, then it is very likely nonobvious patentable subject matter.
Adequate Description
The last requirement is the drafting of a well-written patent application. That document must fully disclose the invention, that it is a meaningful advancement to industry and society, that it is new and novel relative to the prior art, and that it is nonobvious and deserving of patent protection.
To be a complete and adequate patent filing, the application must also include a full written description of an example that makes the invention clear (often referred to as its “best mode”) and the detail of a “preferred way” of carrying out the invention, such that those skilled in the art would be able to make, use or understand the invention, without further experimentation. Further, there must also be a set of patent claims that set the metes and bounds of the invention, that are broad, but not too broad, and specific enough to claim every aspect of the invention.
The Value of a Patent
Each of the above requirements must be satisfied for an invention to be patentable. While it might seem burdensome, it is really not so difficult once a company learns the basics.
In fact, it is likely that there are many inventions rolling around in the minds of cannabis executives and their employees. Once an organization begins to stimulate innovation and capture patentable subject matter, invention becomes a part of the company culture, leading to important new discoveries and the development of monetizable intellectual property portfolios that benefit the company, its employees and its investors.
Since the turn of the 21st century, patents and trademarks have become the most valuable assets in almost every business in every industry — 60% to 85% of the value of the companies in the S&P 500 Index consists of patent and trademark portfolios. During the 20th century, with the rise of industry and manufacturing, the wealth of companies was measured by the value of “plant, property and equipment.” Now, the wealth of businesses has become all forms of intellectual property — patents, trademarks, copyrights and trade secrets, and that is true for even non-technological enterprises.
More than 3 million patent applications were filed worldwide during 2016. In the U.S., more than one patent a minute is filed every hour of every day of the year at the U.S. Patent and Trademark Office. Across all industries, that is roughly 600,000 patents a year, and it has been going on at this rate for several years.
Very few patent applications have been filed to protect the many new inventions and strains that have appeared in the cannabis industry. To date, only 600 to 700 patent applications have been filed for cannabis industry inventions, and the majority of those were filed by pharmaceutical companies seizing cannabis opportunities. While those filings are noteworthy, they underperform the innate inventiveness of the cannabis industry.
Given the relative low cost of patents — and a recognition of how strategic and monetizable patents can be — every cannabis business should be considering every invention and each new process, technique, method or strain of marijuana for potential protection.
The odds are that more of those inventions are patentable than not patentable.
Lindsay Moore, Ph.D. is the CEO of KLM, Inc., a strategic planning firm located in Boulder, Colorado. She is a former adjunct professor of law at George Washington University Law School and was recently named to the IAM Strategy 300, an annual listing of the world’s leading intellectual property strategists, for the ninth year in a row. She can be reached at lmoore@klminc.com.