Gerry J. Elman
Gerry J. Elman, Patent Application Attorney - Media, PA
Posted about 4 years ago.

What Deepak is discussing in paragraph 1 is a strategy in seeking to address the barrier to patentability arising from the "patent-eligible subject matter" requirement of sec. 101 of the patent law. He helpfully points out that it may not be sufficient just to convince the Examiners at the patent office, because a granted patent can nevertheless be challenged in court. And as I pointed out in my separate answer, there is a new procedure available starting today, wherein a granted "business method" patent may under certain circumstances be challenged at the patent office as well.

Then, in paragraph 2 of his answer, he reminds us of another hurdle to patentability. Even if the claim is written to define patent-eligible subject matter, the claimed invention must also be determined to satisfy section 103 of the patent law, namely that it would not have been obvious, at the time the invention was made, to a person having ordinary skill in the pertinent field, with access to all the prior art.

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Asker
Posted about 4 years ago.

Thank you both for your helpful insight. I do have the means and intention to hire an attorney if the time is right to file the patent, but as a small business, I'd like to figure out the patent-ability of my business idea because it does not seem to make sense to proceed with this time and expense of a patent if I really don't have a case at all for one. Unfortunately it doesn't clearly pass the hardware/machine test, but I believe that doesn't exclude me from getting a patent. My idea would allow customers to order a specific service anonymously for free through the software/app/website that they were only previously allowed to get by calling someone, going through a lengthy process, and often paying for it. While I'd probably try to emphasize the software portion and "digital logic circuitry" that Deepak said, the prior sentence doesn't seem to pass Derek's paragraph #2 on non-obviousness; however, my case for non-obviousness is that the idea has never been done online. The process is sometimes done, but my implementation of the idea would be a change in the industry from the way the process and business is done. Any help will be very appreciated. I do want it to be patentable but I don't want that to get in the way of seeing the truth of my case and don't want to be seduced incorrectly believe it will be. Do I just have a business idea or do I have a patentable business idea?

Gerry J. Elman
Gerry J. Elman, Patent Application Attorney - Media, PA
Posted about 4 years ago.

It would be nice if the answer could be a binary YES or NO. But these days, the results from the patent office are not clearly predictable, and for those matters that pass that hurdle, the further hurdles of an administrative agency trial and then three layers of potential court litigation (federal district court, Court of Appeals, and Supreme Court) mean that the question is a mystery wrapped up in an enigma.

Think of it as a matter best addressed by "fuzzy logic." Find one or more patent attorneys you can communicate with and feel you trust, disclose the invention confidentially, and have a discussion about strategies for drafting claims and the odds of succeeding at various levels of pushback. Get estimates of how much the work at each of the stages would be likely to cost. And estimate the value to your business of the rights provided by such a patent. Then make a business decision based on expected present value.