Should I get a patent?
Best practices in IP protection
A step-by-step guide
or view the flowchart
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
You've got a great invention...
But should you get a patent for it?
These are the key criteria by which to make a decision on patenting. Click on any one for details, or
Legal criteria
Business value criteria
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
You've got a great invention...
But should you get a patent for it?
These are the key criteria by which to make a decision on patenting. Click on any one for details.
Legal criteria
Business value criteria
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Novelty:
Is your invention new?
Legal criteria
Novelty
1. Is there prior art clearly describing your invention?
Conduct a “prior art” search. Prior art is a legal term for all information that is known and part of the public domain. Examples are patents, papers and any other information available to the public.
If you retrieve no results from these on-line resources, check books and websites as well.
Did you find prior art clearly describing your invention?
As a start, search these free on-line resources to find prior art: https://patents.google.com/ and https://worldwide.espacenet.com/. Perform a journal article search on PubMed using keywords. If you need help, try these government-issued step-by-step guides: US Patent Office 7-Step Patent Search Strategy Guide and the European Patent Office Inventor’s Handbook.
Sorry, your invention is non-patentable.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
Novelty:
Is your invention new?
Legal criteria
Novelty
2. Does the prior art you found describe all the enabling features of your invention?
Does any individual prior art disclosure describe all the enabling features of your invention—that is, all of the discrete, component parts of your invention that, in combination, allow your invention to function? Consult a patent agent if you are unsure since the analysis is not always clear-cut.
Analyze the prior art you found that relates to your invention, to determine if it precludes your invention being considered novel. Sometimes you find prior art that is clearly a show stopper, but not very often.
Did you find a single prior art disclosure that clearly describes all the enabling features of your invention?
Sorry, your invention is non-patentable.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Novelty:
Is your invention new?
Legal criteria
Novelty
3. Have you previously disclosed your invention yourself?
For example, did you disclose it in a publication or conference presentation, or in any other context where the audience was not bound by confidentiality?
Did you previously disclose your invention?
Novelty:
Is your invention new?
Legal criteria
Novelty
3. Have you previously disclosed your invention yourself?
For example, did you disclose it in a publication or conference presentation, or in any other context where the audience was not bound by confidentiality?
Did you previously disclose your invention?
Did you disclose your invention more than one year ago?
Novelty:
Is your invention new?
Legal criteria
Novelty
3. Have you previously disclosed your invention yourself?
Consult a patent agent for specifics.
Countries with a one-year grace period include Canada, U.S. and Brazil, and possibly others, but if a European patent application is filed, there is no such grace period available.
If the invention was disclosed less than a year ago, it is still possible to file in countries that allow a grace period for filing within a year of making a disclosure
Sorry, your invention is non-patentable.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Non-obviousness:
Does your invention represent a non-obvious change?
Legal criteria
Non-obviousness
Even if an invention represents a minor change over the prior art, it may still be non-obvious. For instance, you might check out some legal criteria that support a finding of non-obviousness, such as: Is there anything “surprising” resulting from the change you made? Does the closest prior art contain comments that would lead someone away from the change? Does your change meet a long felt but unsolved need?
Evaluating whether or not an invention is non-obvious can be subjective. If in doubt, consult a patent agent.
Non-obviousness applies to a change made to what has been used or described before, that a person having ordinary skill in the area of technology related to the invention would not find obvious to make.
Consider any inventions related to your own that you might have found in your prior art search.
Determine how yours differs from them. Does the difference represent a non-obvious change relative to what was previously known?
Does your invention represent a non-obvious change relative to what is already known?
Sorry, your invention is non-patentable.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Subject matter eligibility:
Is your invention, by its nature, something patentable?
Legal criteria
Subject matter eligibility
Is your invention a process, a machine, something manufactured, or a composition of matter? In other words, is it a thing, a product or an action?
Your invention is probably non-patentable.
But it is best to consult a patent agent.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Subject matter eligibility:
Is your invention, by its nature, something patentable?
Legal criteria
Subject matter eligibility
Is your invention a process, a machine, something manufactured, or a composition of matter? In other words, is it a thing, a product or an action?
Is the invention a business method, a multi-cellular organism, a data correlation, a natural phenomenon, a law of nature or a product that already exists in nature?
Your invention may be non-patentable.
Its patentability will vary depending upon the country in which you seek a patent.
Consult a patent agent. He or she may be able to help you define the invention in a way that would make it patentable and/or advise you on specific country requirements.
US requirements can be found at
https://www.uspto.gov/web/offices/pac/mpep/s2106.html
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Demonstrability:
Have you shown that your invention works?
Legal criteria
Demonstrability
Do you have data or other information showing that the invention works?
NOVEL
Your invention meets the novelty criterion.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
NON-OBVIOUS
Your invention meets the non-obviousness criterion.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
SUBJECT MATTER ELIGIBLE
Your invention meets the subject matter eligibility criterion.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
DEMONSTRABLE
Your invention meets the demonstrability criterion.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
It is best to collect data to show your invention works
before filing a patent, particularly for life science inventions.
HOWEVER, in certain instances it may be advisable to file early, even without demonstrative data, particularly if the invention comprises a unique combination of features well characterized in the literature (e.g., a unique fusion protein where each component is known) and there is a strategic reason to pursue early filing. See the Strategic criteria.
If you choose this route, tread with caution as a patent with inadequate data can later be invalidated in court.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Demonstrability:
Have you shown that your invention works?
Legal criteria
Demonstrability
Do you have data or other information showing that the invention works?
In your disclosure, can you describe your invention in such a way that a person of ordinary knowledge in your field (“person of ordinary skill in the art”) could reproduce it without undue experimentation?
Demonstrability:
Have you shown that your invention works?
Legal criteria
Demonstrability
Do you have data or other information showing that the invention works?
In your disclosure, can you describe your invention in such a way that a person of ordinary knowledge in your field (“person of ordinary skill in the art”) could reproduce it without undue experimentation?
Your invention is considered to be "enabled," which is required for patentability.
For detailed legal requirements in the US, consult:
https://www.uspto.gov/web/offices/pac/mpep/s2164.html
Demonstrability:
Have you shown that your invention works?
Legal criteria
Demonstrability
D
Can you demonstrate that you are in possession of the full scope of the invention?
For example, if your invention relates to a class of new drugs for use in treating a particular disease indication, you will need to provide numerous examples of compounds within the drug class, along with data for each.
To be "in possession" of an invention, you must be able to describe the invention and all its component parts in sufficient detail to show it has evolved beyond a vague idea, and instead is fully formed and complete. While laws vary from country to country, in the U.S. this is also known as the "written description requirement."
Consult the U.S. Patent Office Written Description Training Materials for further information and examples: https://www.uspto.gov/web/offices/pac/mpep/s2163.html
It is best to show possession
by meeting the written description requirement before filing a patent.
As well, in certain instances you may wish override this requirement and file anyway, for strategic reasons. See the Strategic criteria.
However, the written description requirement has been contentious in the past because not well defined in the Patent Act or by case law, and interpretations can vary across jurisdictions; for example, Canada focuses more on a utility legal concept to elucidate whether an invention is demonstrated. If in doubt, consult a patent agent.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
You may be able to patent your invention...
HOWEVER, it may be difficult to market or commercialize it if you cannot summarize its advantages in a simple and succinct "story" supported by enabling data.
You may still want to file for strategic reasons. See the Strategic criteria.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Enforcability:
Could you prove an infringement on your patent?
Business value criteria
Enforcability
Patents for certain inventions are easier to enforce than others. Patents for vendible products on the open market are easier to enforce than those for inventions that are concealed from view.
Which best describes your invention:
ENFORCABLE
If your invention is a product or composition of matter, the patent will be easier to enforce because a competitor’s product can be easily obtained from the free market and analyzed to determine if it infringes your patent.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
Your patent may be difficult to enforce.
If your invention is a process that would only be carried out in a lab or in a plant behind closed doors, then the process patent may be challenging to enforce.
However, if the process represents a significant, impactful new approach—if it is a "game-changer"—you still might opt to file a patent application. Consult a patent agent.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Freedom-to-operate:
Does your invention infringe any other patents?
Business value criteria
Freedom-to-operate
The business value of your invention depends in part on whether you can use the technology without infringing others’ patents. Even if an invention meets other legal patentability criteria (i.e., is novel, non-obvious, subject matter eligible, and demonstrated), the technology may still infringe patents owned by others.
Consult the Freedom-to-operate online tool to determine if there are any third-party patents implicated in your invention, and whether they are a barrier to commercialization.
Does your invention infringe a patent or patents that are barriers to commercialization?
You may not have freedom-to-operate
Who owns the blocking patent or patents?
Who owns the blocking patent or patents?
Who owns the blocking patent or patents?
Who owns the blocking patent or patents?
If a university, then consider licensing the patented component.
If a large corporation, consider designing a way around these patented components, as corporations are often less willing to license.
You may also have a strategic reason to file despite the existence of a blocking patent. See the Strategic criteria.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
FREEDOM-TO-OPERATE
Your invention meets the freedom-to-operate criterion.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more amenable to patent protection and easier to market for having it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
Your invention may be more difficult to patent
Is the invention a combination of various known features that provide no unitary benefit? While such an invention might be patentable, convincing an examiner of this may be difficult.
You may have a strategic reason to file despite the absence of a unique enabling feature. See the Strategic criteria.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more difficult to patent and market for lacking it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more amenable to patent protection and easier to market for having it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
While such a feature is not a requirement for patentability, your invention will be more amenable to patent protection and easier to market for having it.
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more amenable to patent protection and easier to market for having it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
While such a feature is not a requirement for patentability, your invention will be more difficult to patent and market for lacking it. See also the Strategic criterion.
Do one or more of the considerations above apply to your invention?
Strategic considerations:
Should you pursue a patent despite barriers?
Strategic criterion
It is best if an invention is demonstrated, enforceable, free of blocking patents, and possesses a unique enabling feature. However, for strategic reasons, it may be advisable to “override” some of these requirements when your invention cannot meet them and pursue patent protection anyway.
1. CROSS-LICENSE: Could you cross-license the technology to gain freedom-to-operate?
A cross-license is an agreement in which two parties grant a license to each other for the exploitation of the patents each owns. Then it may be best to file a patent application even if there are blocking patents.
2. FILE EARLY: Are you operating in a particularly fast-moving and competitive technological field?
It may be advantageous to file a patent application early, and collect more data after filing.
3. BUNDLE: Are you building a bundle of patent rights around a key technology?
And is protecting your current invention key to building strong protection around that larger technology? If so, this may tip the balance in favour of patenting, even if other business criteria for patenting are not met.
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more difficult to patent and market for lacking it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
While such a feature is not a requirement for patentability, your invention will be more amenable to patent protection and easier to market for having it.
Unique enabling feature:
Does your invention have one?
Business value criteria
Unique enabling feature
Does your invention have a unitary feature that provides a distinct advantage over known technologies?
While such a feature is not a requirement for patentability, your invention will be more difficult to patent and market for lacking it.
Can the advantages of your invention be summarized in a simple and succinct “story” supported by enabling data?
While such a feature is not a requirement for patentability, your invention will be more difficult to patent and market for lacking it. See also the Strategic criterion.
You may choose to pursue a patent...
But do so with caution, if you are allowing strategic considerations to override legal requirements.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
Do not patent.
If you followed the patenting criteria step-by-step and encountered a "STOP" because your invention did not fulfill a legal or business requirement,
Consult a patent agent to make an informed decision.
AND if none of the strategic considerations listed under the Strategic criteria apply, you are not in a position where it is advisable to pursue a patent.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
PATENT!
If you explored the patenting criteria step-by-step without running into a "STOP," you are in a good position to pursue a patent for your invention.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
PATENT WITH CAUTION.
If you explored all the patentability criteria step-by-step without encountering a "STOP," you may choose to patent, but do so with caution as you have not met all the ideal considerations.
If you did encounter a "STOP" but are considering patenting strictly on strategic considerations, be all the more cautious.
Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Click on any criterion for details
Should I get a patent?
FLOWCHART
LEGAL CRITERIA
x
x
x
BUSINESS
CRITERIA
x
x
x
x
x
x
x
x
x
x
INVENTION
v
Yes
v
v
v
v
<.span>
v
Yes
No
No
No
Yes
Yes
No
No
No
No
No
v
v
v
v
v
v
v
v
v
v
v
v
v
v
v
v
x
x
x
x
x
x
Yes
x
x
x
x
Yes
x
x
Yes
Yes
PATENT
This tool was designed in collaboration with
Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Novelty
Subject matter eligibility
Demonstrability
Freedom-to-operate
RESOURCES
US requirements for "enablement": US PTO
US requirements for "possession" (written description): US PTO
US requirements: US Patent & Trademark Office (PTO)
Online tool: Do I have freedom to operate?
This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.
Novelty:
Is your invention new?
Legal criteria
Novelty
2. Is there prior art describing all the enabling features of your invention?
Are all your invention's enabling features described in a single prior art disclosure? Consult a patent agent if you are unsure since the analysis is not always clear-cut.
Conduct a prior art search on the enabling features of your invention—the discrete, component parts of your invention that, in combination, allow your invention to function.
Did you find a single prior art disclosure that clearly describes all the enabling features of your invention?
Novelty:
Is your invention new?
Legal criteria
Novelty
1. Is there prior art clearly describing your invention?
Conduct a “prior art” search. Prior art is a legal term for all information that is known and part of the public domain. Examples are patents, papers and any other information available to the public.
If you retrieve no results from these on-line resources, check books and websites as well.
Did you find prior art clearly describing your invention?
As a start, search these free on-line resources to find prior art: https://patents.google.com/ and https://worldwide.espacenet.com/. Perform a journal article search on PubMed using keywords. If you need help, try these government-issued step-by-step guides: US Patent Office 7-Step Patent Search Strategy Guide and the European Patent Office Inventor’s Handbook.
