You Cannot Patent Ideas (Theoretically).

Bill NaifehPatents

The foundation of United States patent law is based on a quid pro quo between the patent applicant (or patentee) and the government.  The government grants a monopoly for the invention in exchange for a technology disclosure which should increase the public’s collective knowledge.  Once the patent expires, anyone is then free to practice the invention.  Furthermore, because the patent is “laid open” to the public, anyone is free to use the information contained in the patent to invent other inventions which further increases the public knowledge.

If there has been no increase in public knowledge, the patent is likely to be invalid.  In many patent cases, the underlying question is whether the increase in public knowledge was substantial enough to deserve a twenty year monopoly.  A patent that does not increase the public knowledge is likely to be called a “junk patent” and will probably be held to be invalid if litigated.

Contrary to popular opinion, one cannot patent an idea because an idea by itself does not provide a sufficient increase public knowledge.  You can only patent an invention and only if you describe the invention in enough detail to increase public knowledge.

For instance, in the 1960’s, Gene Roddenberry came up with the idea for matter transportation for his Star Trek series based on Einstein’s famous e=mc2 equation.  However, the idea by itself is not patentable.  In order to receive a patent, Mr. Roddenberry would be required to describe the invention in such a way as to allow others to make and use the invention.  He is not required to have actually produced a working model of the invention, but his specification would have to contain enough detail to teach others how to make and use the invention.  In other words, more is required than just the presentation of the idea.

Patents may be thought of as having two parts: (1) a specification which contains the patent holder’s contribution to the public knowledge, and (2) the claims which is the scope of the monopoly.  The claims are usually the result of a bargaining process with the United States Patent and Trademark Office (“USPTO”) during a process known as “patent prosecution.”

During patent prosecution, proposed claims are submitted by the patent applicant or patentee.  The proposed claims are examined by the USTPO and often rejected by the USPTO.  Upon rejection, the patentee proposes new claims or arguments.  This cycle repeats until both sides reach a compromise regarding the scope of the claims or the claims are ultimately abandoned or appealed.  Hopefully, junk patents are stopped by the USPTO.   However, sometimes they get through for reasons that may have very little to do with the patent itself.  So, while  ideas should not be patented, sometimes ideas are patented.

It is especially hard to distinguish software inventions from mere presentation of ideas.  Sometimes even experienced attorneys cannot tell when a disclosure is a presentation of an idea which provides no real increase in public knowledge and when the disclosure adds enough to the public knowledge to be patentable.  In my opinion, this is the crux of the patent software debate and one reason why Europe “officially” does not recognize software patents.

Of course, as attorneys we talk in terms of statutory language which includes terms such as enablement, written description, and best mode requirements.  In reality, though, the underlying question is the same:  Did the inventor increase public knowledge enough to deserve a 20 year monopoly on his invention?

Bill Naifeh is a patent attorney in Dallas, Texas.  He often works with clients on a part time “in-house”  basis to assist clients with the management of their patent portfolios and patent litigation strategies.  More information may be found at