The following article appears in the journal JOM, 46 (10) (1994), p. 63. JOM is a publication of The Minerals, Metals & Materials Society

Is Your Idea Protectable?—Yes And No

While it has been stated in statutes and judicial opinions that ideas cannot be protected, this conclusion is somewhat of an overstatement. There are numerous ways in which ideas can be protected by intellectual property and related rights. There are, however, limits on how much protection will be afforded an idea. The key factors to consider are the nature and specificity of the particular idea and the nature of intellectual property being considered. As will be apparent from what follows, the general statement negating protection for ideas is not literally correct.

With respect to U.S. patents, one need not provide a working model or proof that one has actually made a prototype and successfully tested an invention in order to obtain a patent. The fact that the term "idea" might be interpreted as relating to something that exists merely in one's mind or on paper does not preclude one from obtaining a patent. If, however, the term "idea" is understood to mean a very general concept lacking sufficient specificity to fall within the statutory classes of patentable subject matter, it is not patentable.

The statutory classes of patentable subject matter include methods, apparatus, products, compositions of matter, designs, and plants. An idea that lacks sufficient detail to satisfy the statutory disclosure and claim requirements is not patentable. Sometimes this type of idea takes the form of merely a statement of a goal—without any disclosed means for accomplishing the desired objective. For example, if one were to state "I would like to get a patent on a swimming pool that would clean itself," without additional details there is no technology to disclose and claim in a patent application. This idea would not be patentable.

On the other hand, if an individual had detailed drawings and a description of a hydraulically operated robot that would traverse the swimming pool bottom and pick up debris under the influence of fluid flow as well as brush or otherwise clean the bottom, this type of idea, even though it had never be tried, could be patentable.

Design patents protect the overall ornamental appearance of an article. Designs can be protected by a design patent even though they are in the idea phase, because they do not need to have physical existence apart from drawings in order to be patentable.

Traditionally, one type of idea that has been deemed unpatentable is something that is merely a way of doing business. For example, even if no one had previously thought of the concept, if a grocery store owner decided to distribute discount coupons having different values on certain days of the week and redeem them for the indicated discounts, such a promotion would generally be considered merely a way of doing business and would not be patentable. While the coupon might be copyrighted, this would only prevent copying of the coupon and would not prevent a competitor from using the idea with a different coupon.

In recent years, in connection with computer software subject matter, there have been a number of patents issued for computerized systems for processing financial, accounting, or investment information. The broader claims in these types of patents usually refer merely to various stages of handling and processing the information by computer. As recently as 15 to 20 years ago, most intellectual property lawyers would have said that such inventions were merely a way of doing business and not patentable. Today, however, the U.S. Patent and Trademark Office routinely issues such patents, and courts have found them to be valid. As a result, one must realize that what is a patentable idea may vary with time as the law changes.

Another way to protect an idea is through the trade secret route. This generally requires that the information have a degree of novelty, be kept in confidence, and that it be the sort of information that, in the hands of a competitor, could be employed advantageously in its business. Such trade secrets can have a physical reality or may be merely paper concepts.

Although the statute states the general concept that ideas cannot be copyrighted, a copyright can be obtained for the tangible expression of one's ideas, as well as for certain derivative works created from them. For example, one may have an idea for a movie script expressed in a written outline or treatment, and such a work may be protected by copyright. The right of the copyright owner is to prevent others from copying all or a meaningful portion of the copyrighted work.

One must not confuse protection of a literary work through copyright with the rights obtained by a patent. For example, if one were to write a book about mountain climbing, one could prevent a third party from unlawfully copying from the book, but the copyright would not provide a basis for keeping another from employing the book's techniques in climbing a mountain.

Yet another way to protect an idea is to enter into a confidentiality agreement that, by contract, would prohibit the other party to the agreement from disclosing or using the information to be disclosed under the agreement. Obviously, some or all of this information could be considered to be ideas. Under this arrangement, rather than having a government grant (such as in a patent) or other rights under federal law (such as in a copyright), the rights are governed by state contract law.

In summary, the statement that one cannot protect an idea is not always true. While some ideas are not protectable, others can be protected. In order to make an accurate evaluation, it is important that one not be imprisoned by the term "idea." Rather, one should review the facts carefully in the context of the foregoing guidelines and make a case-by-case determination regarding protectability. Also, in some instances, more than one type of protection may be available for an idea.