Simple in a Complex World –

Today’s world is anything but simple, and there seems to be a bias against anything that hints of simplicity, as if anything simple is synonymous with antique, outdated, and backwards. In order to be correct, an answer to a problem must be complex.  In order to sell, a product must be complex.  (Look at the trend in cars to become computers on wheels.)  For a business to succeed, it must be high tech and complicated. The list goes on and on, but simple is often overlooked and ignored, like that T-shirt in your drawer that is simple and clean, but never worn.

Alas, sometimes simple is best. A simple invention that replaces the layers of complexity of another product, or the simple invention that becomes wildly popular. Like the Post-it® Note.  How did we ever live without them?  Taping paper to the wall was oh so messy and awkward.  Simple can also mean lower cost, higher reliability, easier to use, and lower maintenance.  Often a new simple invention is greeted by “Why didn’t I think of that?” But can simple be protected by a patent?  Perhaps.

Is Simple Patent Eligible?

Inventions can range from technologically complex to simple and even mundane. Yet there is a misconception that if an invention is simple, a patent cannot be obtained.  This is often far from the truth. If an invention is patent eligible, the decision on whether or not to patent often comes down to the scope of the prior art and the relevance of a business or marketing plan.

“Why didn’t I think of that?”

To be patent eligible, the invention must meet the requirements of U.S. federal statute 35 U.S.C. §101 that states “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”¹ The four patent eligible subject matter categories, as defined by 35 U.S.C. §101 are Process, Machine, Manufacture and Composition of Matter.  These categories may encompass both simple and complex inventions, and everything in between.  That does not mean, however, that patenting a simple invention is simple.  Sometimes the simplest of inventions are also the most difficult to patent because there is a great deal of prior art that gets in the way.

Patenting That Simple Invention

The simpler an invention is, the more likely it is that someone else has already come up with it. So a comprehensive patentability search in both the patent and non-patent literature is an important first step.  The results of that search will not only provide you with a file/don’t file decision, but they may also drive design changes to avoid what others may have already done, thus increasing the likelihood that the invention will receive a patent and also helping to avoid infringement.

There are several strategies that will increase the likelihood of receiving a patent for your simple invention in addition to a comprehensive patentability search. The first is to include multiple embodiments of your simple invention in your patent application.  This will allow you to direct your patent claims at another embodiment, should your first embodiment be rejected for prior art that is difficult to overcome.  Of course multiple embodiments may drive your drafting and patent preparation costs up a bit, but it may be a good insurance policy since you can’t add new matter to a patent application once it has been filed.  The second strategy is to build “retreat language” into your patent specification that describes in excruciating detail every last element of your simple invention in several different ways.  This retreat language will allow you to amend your claims in the face of a rejection using the retreat language that was placed in the specification.  Claim amendments to overcome references cited by the Examiner can only be made with proper support in the specification.  By adding as much retreat language as possible to the specification, you can amend your claims in many different ways to overcome a wide variety of references cited by the Examiner.

The Short Claim

Let’s face it, when patent office Examiners see a short claim, they interpret it as being broad in scope, and are more apt to reject the claim. There are several myths about short claims that have been around the patent field for many years.   The first is the “hand rule”. It basically says that a claim is too short and will get rejected if your hand can cover up its entire text.   The second myth is the “pencil rule”.  This myth says that patent examiners use pencils to measure the length of a claim.  If the claim is longer than a pencil, it will be allowed. If the claim is shorter than the pencil, it will be rejected.  As the month goes on, and the pencil becomes shorter from use, the examiner will begin to allow shorter and shorter claims as the examiner’s need to meet productivity goals increases toward the end of each month.   While these may purely be myths, it stands to reason that most simple inventions require not so simple claims with lots of words to make the claim narrower and thus patentable over the prior art.  Revolutionary, never before heard of inventions can sometimes get by with very short claims since there is little to no prior art to avoid.  For example, the patent for Teflon® has a two word claim….  “I claim… Polymerized tetrafluoroethylene.”² Very broad, as there was no prior art and the invention was not simple.

Some Examples of Simple Inventions

Simple inventions are all around us. Good ideas combined with good marketing and being in the right place at the right time often result in success in the marketplace.  Before you decide to patent your simple invention, just be sure it has not been done before and be clear on your business and marketing plan. Also, proper crafting of your patent application with embedded prosecution strategies in the specification will greatly increase your chances of being awarded a patent.

Here are a few well known simple inventions, many of which have rewarded their inventors handsomely:

The Zipper

United States Patent 1,219,881 – Separable Fastener

In 1913 Gideon Sundback, a Swedish-Americal electrical engineer, invented the “separable fastener”, today known as the Zipper, a term popularized by B.F. Goodrich Company when they used Sundback’s fastener on a new type of rubber boots.

The Slinky®

United States Patent 2,415,012 – Toy and Process of Use

Richard James, a mechanical engineer, accidentally “discovered” the slinky effect while creating a type of spring to cushion fragile equipment on a ship.

Legos

United States Patent 3,005,282 – Toy Building Brick

In 1961, The Lego® Group received a patent for what is arguably the most famous toy of the 20^th century.

The Koosh® Ball

United States Patent 4,756,529 – Generally Spherical Object With Floppy Filaments To Promote Sure Capture.

What can we say? It’s fun.

The Frisbee

United States Patent 3,359,678 – Flying Saucer

With origins going back to throwing Frisbie Pie Company tins at Yale University, Wham-O Manufacturing Company hit a home run with this simple product.

Breathe Right® Nasal Strips

United States Patent 5,476,091 – Dilator for anatomical outer wall tissues which is adhesively mounted

In 1991 Bruce Johnson tried mechanically taping his own nose to improve his breathing, especially at night. He found it worked, and spent time perfecting this simple invention and finding a manufacturer to produce and launch it.  One night on Monday Night Football, Jerry Rice was on camera wearing one, the announcers were asking what that was on his nose, and it took off.  GlaxoSmithKline later bought the business for $566M.

Post–it® Notes

United States Patent 3,691,140 – Acrylate Copolymer Microspheres

Invented by accident when an adhesive formulation went “bad,” 3M scientist Spencer Silver formulated the reusable adhesive and Arthur Fry came up with the idea of adding the adhesive to bookmarks.

1. See The Limited Monopoly, April 2013.
2. United States Patent 2,230,654

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  Copyright 2016 Robert Gunderman, Jr. and John Hammond.

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

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