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May 25, 2003 at 08:00 PM
Recognizing What Is Patentable In An Insurance Product
By
Part Three of a Series
One television network used the idea that if you hadnt seen its programming before, its new to you in order to promote the summer reruns. That was an innovative approach to selling used stuff. In patents, however, ignorance of the past does not make an old idea new again. Patentability is bestowed on inventions that are publicly new to everybody. They also have to be useful and “not obvious.”
Usefulness is a fairly easy threshold to meet. An invention needs only to have some credible, “specific and substantial utility” to be patentable. In the field of software, it must produce a “useful, concrete and tangible result.” A software program that merely manipulates numbers does not have utility. However, if the resulting numbers can make a useful product, such as the price for an insurance offering or an illustrated benefit result, then the software meets the utility requirement.
“Not obvious” is a much more difficult threshold to meet. The full quote from the law is:
“A patent may not be obtainedif the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
The term “obvious” has been given specific meaning in the United States Patent and Trademark Office through various court cases. This meaning is subtly and significantly different from its common meaning. In everyday usage “obvious” means “what another skilled person might have done in a similar situation.” In the patent office, however, it means, “what another skilled person might have done if they relied only on what the prior art has taught or suggested.” If its not in the prior art, its not obvious.
To the patent office “prior art” is any written publication that was publicly available prior to the date an invention was made.
Misunderstanding this difference in meaning leads to missed opportunities in terms of what can and cannot be patented. Too often, inventors dismiss the patentability of their innovations because they figure “anyone could have done it.” Alternatively, inventors can be overconfident in the patentability of their innovations because they are not fully aware of everything previously published in their area. The solution to both problems is to do a thorough prior art search before a patent application is filed.
In his or her innovative, “ah ha” moment of invention, the path to an inventive solution may, indeed, be obvious to the inventor. There is absolutely no requirement that invention be difficult or take a long time. Its the rest of us who need to be impressed by the inventors ability to put together perhaps ordinary materials or methods in ways they have never been combined before to produce a surprising result. If you are an inventor and you can surprise yourself, all the better.
Thomas Frey of the DaVinci Institute sees innovation and invention as being composed of a series of failures capped ultimately by a final success. This implies that a characteristic of innovation is that it is a process that almost always involves early failure. This characteristic is completely at odds with the way companies in general, and especially insurance companies, are managed. Failure, especially repeated failure, is not normally tolerated. It can get to be rather expensive.
So, it could be said that you can recognize innovation by the failures that precede it and anticipate it by the level of determination in the inventor. Determination is critical in getting a patent because the process can take years.
