Basically, an idea needs to fulfil three requirements before a patent can be granted. The idea must be in a field in which patent protection is possible. In addition, the idea has to be new, as well as inventive, i.e. not-obvious. All of the three conditions will be explained below in more detail.
2.1 Patentability
Not all ideas can be protected by patents. Essentially, only those ideas are patentable that fall within a technical field. Moreover, the German Patent Law and the European Patent Convention explicitly exclude some areas from patent protection.
This area includes, among other things, plant or animal varieties, as well as in essence biological processes for the production of plants or animals. Excluded are furthermore, methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.
Further areas are excluded by the German Patent Law and the European Patent Convention, if the subject matter relates to the area “as such”. This includes discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, as well as programs for computers and representations of information.
The wording “as such” does not generally exclude inventions in this area. For example, if an idea affects a scientific theory, which is applied tech-nically in a certain machine or in a procedure, the idea can by all means be patentable. A similar problem also exists for programs used in data processing units. If the program is based on technical considerations or a technical problem is solved by the program, it is not any longer a program for data processing units “as such” and it falls in principle in a patentable area.
The decision to determine whether the idea belongs to a patentable area can nowadays be very difficult, since methods and products become more and more dependent upon data processing. Because considerable economical advantages may be associated with the patent, it is worthwhile to have this question clarified by our Patent Attorneys. They can not only clarify whether the idea is in general patentable; they are also able to show alternatives on how the idea can be protected.
2.2 Novelty
To gain protection by a patent the idea needs also to be novel. The novelty, required by the patent law, is an absolute novelty with regards to all publications made worldwide – despite of their language – and all disclosures made before the day of the patent application. That includes also publications and disclosures made by the inventor.
In general, it is advisable to get an overview of the relevant state of the art before a patent application is filed. Such a patent search should be always conducted by a Patent Attorney.
However, the inventor can also do a first search to get a first overview. By using the internet, it is often possible to gain information about the companies working in this area. Patent offices are mainly using published patent applications and patents to determine the patentability of an idea. Therefore, a search in patent databases might be useful. The German Patent and Trademark Office (http://depatisnet.dpma.de) and the European Patent Office (http://worldwide.espacenet.com) offer access to such databases free of charge. A search can be performed by typing in keywords to find documents which may already describe the idea or similar approaches.
Afterwards the search results must be compared to the own idea. If none of the found documents shows all the features of the idea, the idea can be considered at least as novel with respect to the results of the search. In doubtful cases a Patent Attorneys should do the comparison. Based on the experience, the Patent Attorney is better able to asses if a remaining difference between the idea and the search result is relevant to the patent law and thus is able to determine, whether there is a possibility to get the patent granted.
Afterwards the search results must be compared to the own idea. If none of the found documents shows all the features of the idea, the idea can be considered at least as novel with respect to the results of the search. In doubtful cases a Patent Attorneys should do the comparison. Based on the experience, the Patent Attorney is better able to asses if a remaining difference between the idea and the search result is relevant to the patent law and thus is able to determine, whether there is a possibility to get the patent granted.
2.3 Inventive Step
However, the novelty of an idea on its own is not sufficient. The idea must also be inventive. This third and most difficult obstacle can only be solved, if it was not obvious at the day of the application to a person skilled in the relevant technical field to alter the current state of the art, such that the new idea would evolve. The Patent Offices have created various methods and criteria to assess this question. By using these methods and criteria, a Patent Attorney can determine if the new idea will be likely regarded as inventive by the Patent Office with regards to the publications found in the patent search.