Every attorney practicing patent law or a patent agency has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.
Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys and agencies, such as InventHelp, know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation.
When filing for a patent, is it important to appreciate that there has to be a single focal feature in every patent which represents an advance in the field to which the invention relates. There can be other features as well, but these other features have to be characterized as embellishments. The focal feature appears in Claim 1. Embellishments appear in dependent claims. If there is more than one valuable feature, then there has to be a patent application, eventually, filed for each principal feature. Lastly, this focal feature has to be not only novel but also unobvious in view of all the prior art.
It is the job of the patent agent/attorney or the patent agency, like InventHelp patent agency, to review the advances that have been made by the inventor and to subtract from those advances features which are either already known in the prior art (even if not previously known to the inventor), and those features which are “obvious” in view of the prior art. This last criterion is an issue which bedevils patent law everywhere, with no prospect of it ever disappearing.
It is not every innovation that will support the grant of a patent. A patent may only be granted for a feature that would not normally be perceived as an available option by an ordinary, skilled workman who is knowledgeable in the art. In May of 2007, the United States added the stipulation that the ordinary, skilled workman must be assumed to have ordinary standards of creativity. Therefore, to be patentable, a feature must have an aspect of creativity which is beyond what would be expected of an ordinary, skilled workman. Furthermore, this workman, who is assumed to be free of exceptional imagination, is nevertheless assumed to be fully aware of all of the prior art. This has been summarized in the past as a: “Who would have thought….?” test. Unfortunately, this is the law in the United States, and substantially, this is the law around the world.