Patent lawyers almost always open a new engagement with the same question—”is this patentable?”—and most entrepreneurs, having no reason to think otherwise, accept that this is the right place to begin. However, the patentability question is the second question rather than the first, and asking it too early is responsible for a remarkable share of the narrow, expensive, ultimately worthless patents I am asked to evaluate years later.
The first question you should ask is the right one, and no conventional patent attorney knows to ask it: is the thing you have built and seek to patent an invention or an innovation?
These are not synonyms, even though the patent profession treats them as though they were, a conflation I have been complaining about for years.
An invention is a new and non-obvious improvement over products that already solve a previously identified customer need. In contrast, an innovation solves a need that was not previously met at all, irrespective of how novel its components are. Put simply, an invention solves an already-met need in a new way; an innovation solves a need nobody had solved before.
Consider a tire. A new tread design that helps the tire do what tires have always done—move a vehicle from one place to another—is an invention, and its patentability will properly be measured against every tire design that came before it. A tire engineered to carry a car a hundred miles after a nail punctures it is something else, because the need it addresses had not been met. (Yes, I am aware run-flat tires exist; the point survives the example.) The prior art that matters for the second tire is not the universe of tires, but the far smaller universe of things that let a punctured tire keep going.
So why does almost nobody ask the threshold question? Because there is no incentive to ask it. The profession recognizes no formal distinction between inventors and innovators, offers no different service to each, and is compensated for obtaining a patent rather than for working out which protection the client’s business actually requires. Asking your patent attorney to classify your concept is, to borrow a phrase I have used before, a bit like “putting the fox in charge of guarding the hen house.” She is not being negligent. She is doing the job she was paid to do.
The consequences of skipping the question are not academic. I have written previously about a medical device CEO who was told his product was unpatentable because earlier devices shared its features—a conclusion that would have been correct for an invention and was badly wrong for an innovation, given that his device produced a clinical result no existing device produced. Moreover, when an innovation is claimed against the wrong prior art, its claims get anchored inside a playing field the product was never competing on.
This is not to say that inventions do not deserve patents. To the contrary, a great many do, and an invention that genuinely improves on a crowded field can support a perfectly sound filing. The strategy simply looks different, and it should: narrower claims drawn around the improvement, a smaller budget, a faster path, and an honest expectation of what the patent will and will not stop. Trouble arrives when an innovation is handled with the invention playbook.
Fortunately, the invention or innovation question is a business question rather than a legal one, which means you are better positioned to answer it than any lawyer is. What customer need does your concept solve, and is anything in the market solving that need today? If the answer is yes, you most likely hold an invention. If it is no, you hold an innovation, and you should not permit anyone to measure it against products that were never addressing your customer’s problem. This is also much of why patent filing works differently for a startup.
In short, decide what you have before you decide how to protect it, because that single classification drives the prior art that matters, the scope you are entitled to ask for, the money you should spend, and occasionally whether you ought to file at all. Feel free to reach out if you would like to talk through which one you are holding.