Most
patent applications are directed to improvement inventions, i.e., improvements
of known devices or methods. In fact, a truly pioneering invention, i.e.,
an invention which is the first of its kind is typically less than 1% of all
patent applications filed. Even some of the most famous inventions in
history were rarely true pioneering inventions. Take for example, Thomas
Edison and his famous invention the “light bulb.” In fact, there were many
light bulbs patented before Thomas Edison filed his own patent application for
a light bulb. So clearly, in view of the
prior art, Thomas Edison couldn’t have gotten a patent on “a light bulb”
because light bulbs were already known. As a side note, for those who love history,
Thomas Edison patent application was entitled “Electric lamp” and was granted
by the US Patent and Trademark Office on Jan. 27, 1880 from US patent
application no. 223,898.
So,
what was the improvement that made his invention patentable and him world
famous and fabulously rich? The answer
is that Thomas Edison found out that using wolfram in the light bulb filament
improved significantly the incandescence of his light bulb. So, although, they were many well-known light
bulbs out there, none was using a wolfram filament. This difference together
with the fact that the use of wolfram provided an unexpectedly improved light
bulb made his invention patentable and Thomas Edison one of the greatest
inventors of all time.
Great
inventors, like Thomas Edison have a knack for taking something that someone
else has already invented and making it better.
In
my career, as a patent attorney, I am
asked frequently whether combining known elements in a new configuration can
result in a patentable invention. The answer is yes, provided that the
combination is new and includes an inventive step (often stated as being
non-obvious). Of course, what is new and non-obvious is not easy to
determine and is always based on a case by case determination based on many legal
principles and court decisions.
However,
as an inventor you need not be concerned with the nuances of patent law. If you
believe that your invention has never been done before then you should seek
patent protection.
During
patent prosecution (which is the back and forth communications with the patent
office for determining the patentability of your invention), more often than
not, the main issue is whether the invention is nonobvious. This is a rather
difficult question to answer with certainty for any invention.
In
fact, no one can give you a guarantee that any particular invention will be
nonobvious. There is no way for getting
a definitive answer without filing a patent application for your invention and
engaging with the Examiner (with the patent attorney representing you) about
the uniqueness and merits of your invention in light of the prior art that is
cited against your invention by the Examiner.
Georgios Georgellis
European Patent Attorney