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I am considering at which point an electronic circuit-based product becomes patentable. If I were to simply design a new electronic circuit by implementing a single integrated circuit (IC) from a manufacturer, I would think that this cannot be patentable. I would also presume that the IC manufacturer has some kind of patent on their own IC. In this case, I would suppose that there is no patentable product and therefore you can sell this product without needing to worry about patent law.

But, what about when you combine two ICs that work together to do something than one of the ICs cannot do on its own? At this point, assuming it is novel, useful, nonobvious, and not previously patented, is this patentable? Do I need to begin searching to see if someone else has patented that combination of two ICs before I begin productising an invention? Fundamentally, I would like to understand if combining ICs in a certain way leads to something that is patentable, or is something more complex required?

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    Anecdotal: We once had a project at university that yielded something patentable -- but the patent was rejected, because somebody else already got a patent for inserting a push-button into an RFID antenna to manually and temporarily enable that RFID tag.
    – orithena
    Feb 6, 2023 at 16:43
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    The heuristic "You can patent literally anything if you have money, but you can only enforce on people with less money than you" will get the practical answer 99 times out of 100 Feb 6, 2023 at 18:42
  • While I don't know; I suspect the circuit board layout is patentable. Even making someone come up with the layout anew might be enough protection.
    – Joshua
    Feb 7, 2023 at 3:08
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    Some circuits which are not patentable are covered by integrated circuit layout design protection.
    – sjy
    Feb 8, 2023 at 11:24

5 Answers 5

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Electronic designs can be patented provided they meet the criteria for a patentable idea. But patenting a design using specific ICs is probably not a good idea as all someone has to do is redesign the same function using different ICs and they have worked around your patent.

The best approach is to patent your circuit function using "functional blocks" that are more generic so that the overall circuit's function, which is the novel idea, it patented and not the specific implementation.

Patents can be tricky to navigate. You might do well to consult a patent attorney who can advise you how best to protect your intellectual property.

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    The claims of a patent determine its scope of protection. A specific integrated circuit will never be called out in well drafted a claim but will frequently be mentioned in the specification as part of “enabling” the invention by teaching the best way you know to make it and use it. Be careful with the idea of function. Patent elements can be defined by function but are usually described by structure. As an example “means for amplification” defines by function while “amplifier” defined by structure. Feb 5, 2023 at 17:13
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I did a short course once from our in-house patent attorney, and he said that, under Australian law, patent was for solving a problem. So:

  1. I combine two circuits for the hell of it. Not patentable.

  2. I want to make automobiles go faster, which I achieve by combining the same two circuits. Patentable (subject to novelty and all that).

  3. I want to test for a particular cancer, which I achieve by combining the same two circuits. Patentable (solution to a totally different problem).

  4. I combine two circuits in the hope that someone will find an application, and I can extort royalties. Not patentable. (There was a case in Australia where the judge said that one party was inventing patents instead of patenting inventions).

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    Good way to frame this subject! Feb 6, 2023 at 11:48
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    Very different from U.S. law which, unlike most other places, is not problem/solution based. You combine two circuits for the hell of it and it picks up a signal from the international space station in a way that has not been done and is not obvious to do - that is an invention. Feb 7, 2023 at 2:04
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    @GeorgeWhite "... picks up a signal from the international space station in a way that has not been done"--that sounds like a solution to a problem to me (listening to international space station, new method of decoding radio signals, etc). Imagine that you patent that, and someone discovers that the combination of circuits does something entirely unrelated: maybe it kills Covid19 viruses, or extends the life of a battery. Is that excluded by your US patent? BTW, I found a list of sample US patents here, and each appears to solve some problem. Feb 7, 2023 at 2:49
  • @GeorgeWhite There is another chap called GeorgeWhite below, who argues that "The criteria for patentability are usefulness...". Usefulness seems pretty close to solving a problem to me. Maybe we should ask the other GeorgeWhite whether something can be useful if it doesn't solve any problems. Feb 7, 2023 at 2:53
  • An example. - in the US you can patent a game or thing that spins around in an interest way. No problem solved and probably not patentable in most of the rest of the world. Use as entertainment but no problem solved. In the US use is a very low bar and only prevents some things that violate laws of nature and things that are “abstract”. Feb 8, 2023 at 15:39
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The criteria for patentability are usefulness (not necessarily optimized or better than previous solutions), novel (not been done or described in a publication anywhere anytime in the past), and not obvious (to someone of ordinary skill in the art who knows about everything that has ever been done or published in the field ever in any language previously).

The number of off-the-shelf components it takes to make it is not directly relevant. If you are concerned that your new circuit might be patented by someone else you can have a freedom-to-operate search done

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    +1 for freedom-to-operate search Feb 7, 2023 at 22:18
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QuadmasterXLII made a comment that I think deserves to be promoted to an answer:

The heuristic "You can patent literally anything if you have money, but you can only enforce on people with less money than you" will get the practical answer 99 times out of 100

This is USA-centric, but so is most of the world these days.

The US patent office will accept any patent that uses the proper forms and is paid for.

The hard part starts when somebody tries to enforce a patent. This involves a lot of lawyers on both sides and quickly becomes very expensive for both parties. The deciding factor is often who runs out of money first.

Now everybody knows this, so if a big company threatens to sue a small company, the small company will usually fold immediately. This typically involves paying some sort of licence fee for the allegedly infringed patent.

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It would be rare that anything as similar as combining a small number of ICs would be patentable.

If the idea is "obvious" to someone skilled in the relevant technical field, given the current state of the art, then is may not be patented, even if it is novel and useful.

Unless you were doing something that conventional wisdom inaccurately led skilled practitioner's to believe couldn't be done, it is highly unlikely that something this straightforward could meet that test.

It also doesn't help that there are multiple elite patent law firms that are monitoring anything related to IC patents very carefully and are likely to proactively contest any new effort to patent something in their field, since IC manufacturers have big $$ at stake in that corner of patent law.

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    Sometimes the smallest circuits are the most clever ones. You did this thing in the obvious way with 5 chips. I found a clever way to do it with only 2. en.wikipedia.org/wiki/… . I have a cheap solar garden lamp which charges the battery via the part of the chip that's actually meant to protect it from static zaps, and this is the usual design for cheap solar garden lamps. Presumably someone came up with that idea, did not patent it, and every manufacturer copied it.
    – user253751
    Feb 7, 2023 at 8:47

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