Sometimes the best ideas never make it to the patent office. In this episode of Innovation Café, Gary Shuster shares two inventions he once considered patenting but never did—thanks, in part, to questionable advice and shifting patent laws. His story offers practical tips on how to protect your ideas when patent law is a moving target.
1. The Foldable Pizza Box Hook
The Problem
- As a college student and later a young attorney, Gary noticed a classic dilemma: limited fridge space for oversized pizza boxes.
The Proposed Solution
- Picture a standard pizza box with collapsible hooks on the base. Flip them out, attach the box to a fridge shelf, and free up space so the box stays closed and horizontal.
What Happened?
- Gary pitched this idea to a patent attorney who dismissed it outright as ““not patentable.”
- With little experience in patent prosecution (and no second opinion), Gary took the lawyer’s word for it and never pursued protection.
Key Takeaway
- Physical product improvements—like a foldable pizza box—often fit squarely under conventional patent law. A quick “that’s not patentable” might be hasty or incorrect.
2. An Early Targeted Ad System
The Problem
- In the early days of internet advertising (before Google became a household name), Gary built a simple prototype to serve ads based on webpage content.
The Proposed Solution
- Using the HTTP “referer” header to identify the page that was asking for the graphic, the system checked if a user’s incoming link mentioned the word “cat.” If yes, the ad would show cat food; otherwise, it would default to dog food.
- This prototype foreshadowed later large-scale ad-targeting methods.
What Happened?
- Again, his patent lawyer insisted “It’s not patentable”—claiming it was more of a “business method” and outside patent eligibility.
- Soon after came State Street Bank, a case legalizing business-method patents for a time in the U.S. Under that precedent, Gary’s invention could well have been patentable.
- Alice v. CLS Bank later restricted business-method patents again, illustrating how patent law evolves over time.
Key Takeaways
- Patent Law Has Cycles
- Laws change, and what’s unpatentable one year may become viable the next—or vice versa.
- Verify Advice
- Even trusted attorneys can miss emerging legal trends. A second opinion or further research is often worthwhile.
Navigating a Moving Target: Patent Strategies
- File Provisionals First
- A provisional patent application can buy you 12 months to refine your invention or see if laws or precedents shift in your favor.
- Consider the PCT Route
- A Patent Cooperation Treaty (PCT) application extends your timeline further before you enter individual national phases, giving patent law time to settle.
- Avoid Overreliance on Snap Judgments
- If an attorney declares your invention “not patentable” without thorough explanation—or if case law in your field is evolving—seek a second opinion.
- Draft Broad & Narrow Claims
- Include claims that stand a better chance under current rules (narrow) and others that anticipate future legal changes (broader).
- Think Internationally
- Patent eligibility varies country by country. What’s ineligible in the U.S. might be patentable in Europe, Japan, or elsewhere.
Watch the Video for the Full Discussion
In the accompanying Innovation Café video, Gary provides a firsthand look at how these near-patents emerged—and how they got sidelined. If you’re an aspiring inventor facing changing IP laws, you’ll find valuable insights on what to ask your patent attorney and when to consider alternative routes.
Final Thoughts
Great inventions often surface at the edges of established rules. Patent laws, however, are anything but static—so ““not patentable” today may not be the same tomorrow. By future-proofing your filings, seeking multiple opinions, and staying up-to-date on shifting legal precedents, you can better protect your innovations for the long haul.