Photo Credit: Shanice Bedassie

Photo Credit: Shanice Bedassie

By James Major, Esq., and Shanice Bedassie

Last month, HITLAB hosted Dale C. Hogue, Sr., of Grey Gold Advisors, LLC, who spoke on the topic of “Capturing Innovation in a Research Partnership.”  Dale started his fascinating presentation by presenting a continuous wheel of Invent-Document-Protect-Commercialize, which seemed reminiscent of HITLAB’s Ideate-Create-Evaluate approach.  Then, Dale moved on to patent eligibility.

Patent eligibility, Dale explained, turns on whether a putative invention is the sort of thing that can be patented.  Dale said that by statute, processes, machines, manufactures, and compositions of matter are all patentable subject matter.  However, there are judicially created exceptions to the statute, namely, abstract ideas, laws of nature, natural phenomena, mental processes, mathematical algorithms, and scientific principles.  But, as Dale demonstrated, drawing a line between the statute and the exceptions is not an easy task because:

i)    converting a decimal number into a binary number is an abstract idea, but curing rubber using a mathematical formula isn’t;
ii)    a method of hedging risk in commodity trading is an abstract idea, but a digital halftoning process isn’t;
iii)    the BRCA1 gene is a law of nature, but a cDNA of the BRCA1 gene isn’t; and
iv)    mixing nitrogen-fixing species of bacteria isn’t patentable, but a genetically-modified bacteria is.

These decisions seem to be almost random, but Dale adroitly pointed out that it is presence or absence of “the hand of man” (or woman!) that seems to be the deciding factor.

Dale then moved onto the requirements of novelty and non-obviousness, despite a former U.S. Commissioner of Patents’ notorious quote that “[e]verything that can be invented has been invented”!  Novelty, as the name suggests, requires an invention to be new and these days that’s based on a “first inventor to file” system.  But “how new”?  That’s where obviousness comes in.  Surprisingly, there’s no real test for obviousness, which seems odd because, as Dale suggested, obviousness rejections are very common.  Dale then turned to recordation and said that any patent must record a “written description,” an “enabled” invention, and the “best mode” of the invention.  Finally, a patent must end with the claims, which define the actual invention.

While determining patent eligibility, novelty, and non-obviousness may be a complex endeavor, taking your innovation to the next level requires meticulous documentation and usually a U.S. Patent Attorney.  Indeed, Hogue said, the earlier you obtain a lawyer, the better your chances to patent your idea.  The “conversation is continual” between inventor and attorney, as the slightest change to your invention can start the dialog between the two of you all over again.  Proper documentation is key to advancing your invention.

Towards the end of a vibrant presentation with much audience participation, Dale quoted three principles from his forthcoming book.  Ask yourself:

i)    what is the problem to be solved;
ii)    what is the solution; and
iii)    how does the invention solve the problem?

The evening ended with wine and cheese.  Patently pleasant!

For more information on HITLAB’s Seminar Series, visit our webpage or write Elizabeth Pietrangelo


DISCLAIMER: The discussion above is provided for academic purposes to foster further debate on legal and other issues. Although the discussion may constitute ATTORNEY ADVERTISING in New York, the information contained in the discussion does not constitute, nor should it be construed as, legal advice; and under no circumstances should the discussion be construed to represent the opinions of James R. Major, Major IP Law PLLC, or any of its clients.