What is the biggest challenge in creating a patentable idea?

What is the biggest challenge in creating a patentable idea?

The biggest challenges depend on the inventor/applicant and the industry that they work in so there is no one major challenge. This is my list of the biggest challenges built up from my experience in my years of practice:

  1. Converting an idea/concept into one or more working prototypes;
  2. Choosing the right time to file a patent: If too early, then funding may not be available. Also, if too early, the scope of the patent may be too broad or not supported by the prototype examples. Filing too late is also problematic because others may have filed or published before you and that can stop you getting a valid patent;
  3. Keeping the invention secret before filing a patent application: some jurisdictions still have no grace periods and disclosing your invention before filing a patent will prevent you from getting a valid patent there. Also, grace period provisions vary widely;
  4. Not properly researching the prior art base (what was published and used before your patent) to see if your invention is novel and inventive. If your invention is not novel and inventive, you cannot get a valid patent. Also, the way the specification is drafted should be done taking into account the prior art base;
  5. Finding the funds to get a decent patent specification professionally prepared. Self-filed specifications are, in my experience, more often than not a waste of time and effort.
  6. Finding something patentable in your invention: Software-based inventions and business inventions are difficult to patent in the current climate. Other things that people struggle with are scientific discoveries/theories that, while brilliantly conceived, are not in themselves capable of patent protection. For example, E=mc2 is a scientific theory that gave rise to nuclear power and nuclear weapons (that themselves were potentially patentable), but the underlying concept itself was not patentable;
  7. Giving up at the first hurdle: Patents are examined, and examiners often find issues with the patent application. Sometimes these are minor. Other times, they seem major but can be overcome. Don’t give up too early! and
  8. Patents can create rights that can be used to monopolise a particular technology for a limited time. It used to be that people could file on bare ideas/concepts before prototyping. With the advent of the best mode and support requirements, those days are largely over. Some inventors do not realise this.
  9. Listening to people who say that patenting and keeping your invention secret is a waste of time and protecting the secrecy of your invention is a waste of time. Patenting is one of the most important tools available to businesses to be able to get back something for the time and effort spent developing a product. Without it, you are effectively giving away your invention to your competition. You also have no bargaining power in negotiations that you might have with competitors or investors without a patent to put on the table.

Patents can play an important role in the commercialisation of an invention to market, but I have seen marginal inventions wildly succeed commercially, and fantastic inventions fail dismally. This was not due to the patenting or the merit of the invention but due to the way these were commercialised. Patenting is only one step in that journey and commercialisation is often very hard work. Inventors often do not understand that the challenge in making money from an invention is part of a much bigger picture than merely patenting something.

Mark Warburton About the author

The Intellectual Property Guru. His determination to protect innovation stems from a family legacy in which his grandfather, a genius inventor, had his innovations stolen and patented by someone he trusted, which led to his grandfather dying a pauper on a park bench. Mark is an international award winning lawyer and patent attorney and 3-time published author. His prowess in the court room sees him winning cases that others thought were unwinnable. Mark’s passion for protecting intellectual property shines through in his pro-bono legal mentoring, proactive legal workshops and 1-2-1 work with clients.