November_EDFA_Digital

edfas.org ELECTRONIC DEVICE FAILURE ANALYSIS | VOLUME 19 NO. 4 50 INVENTOR'S CORNER A VERMONT FARMER WALKS INTO A BAR ... Dave Vallett, FASM, PeakSource Analytical dvallett@peaksourcevt.com N o, seriously! An old Vermont farmer walks into a bar and meets a Texas rancher. They quickly hit it off and eventually get around to discussing their respective agricultural operations. The rancher, being a Texan, proudly boasts that his acreage is so vast that it takes him an entire day to drive its perimeter. The wily Vermonter quips in return, “Yup. I know just what you mean…had a truck like that oncemyself.” The joke—one ofmy favorites—works because the punch line is so totally unexpected. Creativity, certainly not unique to Vermonters (not- withstanding Samuel Hopkins of Pittsford, Vt., holder of the first-ever U.S. patent, US X1, in 1790), is also the art of fashioning something unexpected—going in a differ- ent direction, twisting things around, or turning them upside down. It’s also the essence of a good patent. In this column, after reviewing basic U.S. patent eligibility requirements, we’ll focus on themost critical one, novelty (i.e., creativity), and howyou can leverage it to become an inventor or improve your future patent ideas. While an original idea is the foremost prerequisite for a patent, alone it is insufficient to be granted the exclusive right to its use. In fact, the U.S. Patent and Trademark Officehas five eligibility requirements: novelty, utility, non- obviousness, suitable subject matter, and no prior public disclosure. The first three are themost significant and are typically statedmore succinctly together as “new, useful, and nonobvious.” (Apparently the other antonyms for obvious are things you wouldn’t want your patent known as, like “ambiguous,” “obscure,” or “unclear”…although if you’ve ever actually read through an entire patent, you may think those descriptions are perfectly apt.) Utility or usefulness is themost straightforward of the three. A patent must “provide some identifiable benefit” and be “capable of use.” That is to say, it must solve a problemand itmust work, or at least theoretically be able to work, in that it follows the laws of physics, mathemat- ics, and so on. Therefore, your idea needs to provide value to some industry or endeavor, and while you don’t have to have already built it or demonstrated its function, it must at least be operable. After all, if it won’t work, it’s not very useful. As it turns out, the “nonobvious” requirement is actu- ally far fromobvious. A patent applicationmust show that the ideawouldnot be obvious to “one having ordinary skill in the art.” This concept is actually best understood in the words of Thomas Jefferson from an 1813 letter to Isaac McPherson on the nature of ideas: “ … amachine of which wewere possessed, might be applied by everyman to any use of which it is susceptible, and that this right ought not to be taken fromhimand given to amonopolist.” In other words, let’s say our Vermont farmer puts a longer handle on a hammer and uses it to persuade his dodgy truck’s starter solenoid to engage (not that I have ever done this …). Jefferson would assert that the hammer’s inven- tor (themonopolist) shouldn’t be legally able to stop him. He went on to explain that a change in purpose, material, or form does not entitle a prospective patentee to claim the exclusive right to a different application of a known invention, altering it slightly, making only changes that would be obvious to anyone familiar with such articles. Inmodern practice, however, legal determinations can be quite subjective and receive much debate in patent law. What constitutes “ordinary skill”? Who possesses such skill? What is the scope of that art? Other than follow- ing the above general guidelines, and making sure your patent idea passes the “duh” test among your colleagues, obviousness is best left topatent examiners andattorneys. So, we return to novelty, the creative nugget of every suc- cessful patent. How can the failure analyst, researcher, or instrument developer find innovation and “advance the state of his or her art”? “A PATENT MUST ‘PROVIDE SOME IDENTIFIABLE BENEFIT’ AND BE ‘CAPABLE OF USE.’”