What is patentable?

Entrepreneur Flushes Thousands of Dollars Down Toilet!

I’ll call this entrepreneur Victor to 'protect his or her identity'. 'Victor' owns a social media company.

He paid thousands to prepare and file a provisional patent application, and a year later, he paid thousands more to file an international application. Then, at 30 months after the filing date of his provisional, he spent hundreds of thousands on translations and filing national stage applications around the world.

But Victor might as well have flushed those thousands of dollars. 

His “invention” was not “patent eligible subject matter” in many of the regions and countries where he filed patents. 

What does 'patent eligible' mean, and why is it one of the most important considerations when patenting for 90% of innovative companies out there?

It means Victor could NEVER patent his idea, because the idea was an abstract idea - not a patentable invention. 

Most companies are not inventing technological solutions to problems, like new compositions of matter, machines, and processes for producing some product. And even if they are, it doesn't mean that they should be filing a patent application.

In Victor's case... a patent was probably the wrong type of intellectual property to protect Victor's 'intangible property, or iP, anyway! 

Why?

Social media businesses often get little or no benefit from owning patents. The types of innovations that are worth the most in social media are usually not patent eligible subject matter. Even those technological solutions that might be patentable, those making a social media website or app faster or more manageable, can often be protected under trade secret law better than possible using patent law. 

Trade secrets are a type of intellectual property and often costs less than patents. Trade secrets never expire either.

Many people think that once a trade secret is 'reverse engineered' it enters the public domain automatically.

That's not true.

Two separate companies can possess the exact same trade secret, and both can protect their trade secret against misappropriation. (Indeed, they often don't even know that that other company is using the exact same trade secret.)

Only when the trade secret becomes known generally in the trade or industry does the owner lose all rights to protect it in the courts. According to one story I read, this happened to McDonalds, when it televised the making of its secret sauce, showing all of the steps and ingredients to make it. Maybe that is why it is now called 'special sauce' not secret sauce?

So, the first question Victor should ask is: "Do I really need a patent?" If not, he shouldn't waste his money.

Only then should Victor be asking if the idea is patent eligible subject matter.

And determining if an idea is patent eligible can be difficult. The law is still evolving, and discouraging someone from filing a patent on any idea, when the law is unsettled, could incur substantial liability for a patent attorney. 

So, the answer you get from competent patent counsel is never just a yes or a no. 

If the idea is a type of abstract idea for '...managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions)...," as many social media 'inventions' are, then the answer is might be an unequivocal yes, but it's usually not that simple. 

There are often patentable inventions lurking within the shadows of even the most unpatentable of abstract ideas.

It might take some time for you and your patent counsel to discover what's patentable, if anything.

But you shouldn't even go there if you can protect your iP adequately using trade secret law.

Always look at how you might prevent public disclosure, reasonably, by keeping your ideas secret BEFORE you even consider patenting an invention (and definitely BEFORE sharing your recipe).

If only Victor had known about the iPmasterclass options, he could have increased the value of his business, safely ... 

                      ...without throwing away hundreds of thousands on nothing of value to his business.