Patent attorney · Patent Worthiness

What can be patented?

Asad Shaikh AWS/NoSQL/Big Data Architect at Capital One

February 4th, 2015

So, I read several old posts on patents, but what I could not find a clear answer on was what can be patented.  In addition, is there a best practice approach for startups that is streamlined as this can be an involved, long, and expensive process.

I was wondering if a new idea that is similar to,, etc, but applied in a different industry can be patented.  The key is to create a market place for a different industry online to bring people together which otherwise would not have found each other using a software which does not exist at this time.

Also, if there are recommendations on attorneys that specifically work on patents with startups in the software space.

Brad Bertoglio Attorney and Senior Executive

February 4th, 2015

A patentable invention has to be new (i.e. nobody is doing the exact same thing), non-obvious (to a person having ordinary skill in the relevant field) and eligible subject matter.  Business methods and software inventions can potentially be eligible subject matter, but tricky to patent these days so you are right to engage a patent attorney that works in the software niche.  

So, one might think about things like: would it be non-obvious to apply this particular existing business model to the different industry?  Are there unique problems you are solving or challenges you are having to overcome to make it work?  Are you building any novel and non obvious technology solutions to implement the idea?  Oftentimes there are opportunities for building patent portfolios AROUND a business model, even if you can't directly patent the business model itself.  Happy to chat about your particular situation offline if helpful.

Brad Bertoglio Attorney and Senior Executive

February 5th, 2015

Gray and Rob make great points about thinking through why you want a patent before pursuing one.  If it's just going to hang on your wall, you can get some nice art that costs a lot less money and looks a lot nicer.  :-)

One thing to keep in mind re: figuring out the business first, though, is that a lot of those early "lean startup" activities (getting out and selling, talking to potential users and customers, etc.) can trigger legal bars that preclude later patenting.  And oftentimes it can be the early innovations that end up being core aspects of the business that one would later like to protect.

Fortunately, while the patent process CAN BE very expensive, there are startup-friendly solutions.  You can apply the "Lean Startup" methodology to the IP process and use things like MVPs (Minimum Viable Patents), liberal use of provisional applications (potentially with the entrepreneur using attorney-provided templates and guidelines to take the laboring oar and minimize spend), omnibus filings for multiple inventions, the Patent Cooperation Treaty internationally, etc.  All can help preserve optionality to build a patent portfolio with business value, while deferring the bulk of the costs until you actually get the business figured out.

Stephen PMP Project Management Professional

February 4th, 2015

This would be a utility patent, but likely not patentable.  But, um, has folks waiting for your call...

Good luck!

BTW, I work for the USPTO.

Rob G

February 4th, 2015

Asad, Why do you want a patent? Do you know how you might use one if you had one today? a plain old run of the mill patent is relatively easy albeit expensive to get. A strong patent or portfolio of patents is much harder and much more expensive to get. I have some myself from the very early days of what was later termed 'social networking' - i wish i had coined that term, it would have made pitching to investors so much easier. I'm happy to give you the lay-person's perspective on if, how, why, when, how much ($$), etc. off line. I suggest you take the time to talk through the calculus of why or why not to pursue patents with a few experienced lay people (patent holders) and an attorney or 2. Just go to the website and find some that look interesting and see if you can locate the inventor (talk to the inventor rather than their employer / assignee). Patents are a tool that can be used in a variety of ways so you will hear IP attorneys talk about 'patent strategy'. You can use patents to: defend 'your' market, in which case you must be prepared to take offensive action (file a lawsuit... and write large checks), as currency or ammunition in a countersuit (where someone sues you) or to add weight to your valuation when fundraising (assuming you have strong patents). So spend some time to think about WHY you want patents before you spend too much effort trying to determine IF you can get one.

Chris Aram Entrepreneur & Innovator

February 4th, 2015

Hi Asad,

My gut feeling is that you will not be able to patent an idea where the only novel feature is a change in the user-group.  I'm also doubtful that companies like elance have patent protection for their concept; however they may have some protection on the software they have designed to facilitate the process. 

A good start for you would be to look at the guidelines published by the Government in your country of interest. This is a link to the USGov website: 

Although it can be expensive, I would definitely recommend using a Patent Attorney if you are confident that you have some chance of success.  I've filed 2 rather complex patents, and I am in the process of filing a third; the best advice that my Attorney gave me, was to start with a very broad set of claims initially, so that you can then tailor them around the 'prior art' that is discovered in the examination process.

Although I would highly recommend my Attorney, he is based solely in the UK.  Best of luck!

Gray Kuglen Director of UX Design / Principal Consultant

February 4th, 2015

Asad thanks for your question. I'm going through a similar process. An attorney can answer your question but I would recommend a book since it's cheaper and filled with more information. But then again, you just got a free comment from Brad so... 

For the Startup Process, I've changed my stance from where I was 6 months ago, which now is to NOT focus so much on the patentability up front, and rather spend effort on defining and selling the business to make it profitable AND uniquely addressing a need in the market. From what's been shared with me, once you get further down the path with a solid business and stable technology start looking for ways and opportunities to protect and defend your offering.