PATENT

The driving policy behind the Patent laws is to promote the free flow of technology and stimulate invention. It serves the public interest to have all technology published so that others can learn from it and improve upon it. However, free publication would deprive inventors of the commercial fruit of their effort. Instead, in consideration for publication, inventors are given a monopoly incentive during which they reap the benefit of their effort. Specifically, the US government grants a patent holder the right to exclude others from making, using and/or selling the patented item for a set period of time (see below). The patent itself is published for all to read. In the words of Abraham Lincoln, the Patent laws have “added the fuel of interest to the fire of genius”.

A patent application should be filed prior to any outside disclosure, and must be filed within a year of disclosure or the invention goes into the public domain and any rights are lost.

Utility patents applied for on or after June 8, 1995 generally have a duration of 20 years from the filing date of the patent application, Design patents 14 years from issuance.

There are three different types of patents:

1. Utility Patents for any new and useful process (including software), machine, manufacture, compositions of matter, or any new and useful improvement of one of these can receive a utility patent. See, 35 U.S.C. 101.¹
2. Plant Patents for any asexually reproduced and new variety of plant.
3. Design Patents for new, original, and ornamental designs for articles of manufacture. A Design patent can be obtained for a broad range of manufactured articles, including furniture, jewelry, clothing, industrial articles and even computer icons displayed on a computer screen. Design patents cover anything having a manufactured aesthetic.

For purposes of patent protection, an invention must possess the following characteristics:

1. Novelty and non-obviousness, meaning it is not “anticipated by” (identical to) any technology already disclosed in dated prior art documents, and it must be different enough such that it is not an obvious variation.² On the other hand, so long as it is not obvious, even minor improvements can be patented. Generally, the Patent Office does not impose a high standard and small improvements can be patented so long as the cost justifies the patent.
2. Sufficient completeness.³
3. Not have already been in the public domain for more than a year.⁴

35 U.S.C. section 102(a) erects the following “statutory bar” to filing of patent applications:⁵

“A person shall be entitled to a patent unless.the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” 35 U.S.C. 102(b) provides a one year grace period for certain disclosures. This is why it is best to file a patent application before any outside disclosure.

This forfeiture clause can be triggered by numerous events, including a mere offer for sale or solicitation. Similar laws exist in most other countries, and these are even more restrictive because they do not afford the one year grace period as given in the U.S. The underlying policy is two-fold: 1) if the public already has access, then there is no further gain and the public can only lose by giving away a monopoly; 2) the inventor should be penalized if not sufficiently diligent in filing a patent application.

A patent grants the holder the right to exclude others from making, selling or using the claimed invention.

1. The right to exclude others is not the right to make, sell or use for one’s self. This is an important distinction because the inventor of a patented technology is capable of infringing any more basic patents that came before.
2. Patent rights only extend to the claimed invention. Most patents have a very detailed description, but it is the patent claims (numbered 1-? that define the scope of what is actually protected by the patent. In order for a device to infringe a patent, the device must embody every feature recited in any one claim. Therefore, a device will not infringe a patent unless at least one claim can be read substantially word for word onto the infringing device.

Utility and plant patents give a monopoly term of twenty years from the application’s filing date.⁶ Design patents last only fourteen years from issuance of the patent. (This item essentially duplicates item 4 above, Patent Duration. Consider deleting this one or that one.)

A U.S. patent will protect against infringement by methods or devices made, used and/or sold by others in the U.S. Thus, for example, infringing devices made in a foreign country and imported or sold in the United States would still be considered an infringement. Otherwise, U.S. patents give only national patent rights and give no protection if the invention is copied and made, used or sold entirely outside the U.S. To prevent this, corresponding foreign patent applications must be obtained. Foreign applications must be filed within one (1) year of the U.S.A. filing date in order to claim priority based on the U.S. patent. Foreign patents are generally much more expensive to apply for, obtain and maintain than domestic ones.

When an invention is substantially complete a patentability search is recommended to determine the likelihood of the invention satisfying the novelty and non-obviousness prerequisites. Patent applications undergo a stringent examination process to insure compliance with the non-obviousness standard. The only way to ensure that a patent application is warranted is to conduct a thorough patentability search in advance of filing. This anticipates any problems at the patent office before spending application fees, and can also help to avoid any potential infringement problems from third party patents. An ounce of self-help is often worthwhile inasmuch as Google® Patents provides a robust and easy patent search engine.

Provided that the search does not uncover any insurmountable obstacles to the patent, the next step is to file a patent application.

There are two approaches to the patent application process. The first approach involves filing a traditional (formal) patent application complete with a detailed description, formal patent drawings, multiple claims, and a full filing fee. Approximately 2-4 years after filing, a traditional application is assigned to an Examiner who will do their own prior art search and evaluate patentability. The second approach (and the better one in most cases) is to file a “provisional” patent application. Filing a provisional application allows you to get an early filing date and yet defer some of the up-front costs of the formal patent application. A provisional application is a slightly less formal (but equally exhaustive) version of the formal application that serves as a “place holder,” preserving all patent rights for up to one full year. Hand-drawings, photos or sketches can be used, and so the cost for a provisional application is lower and the time to completion is shorter. The provisional application avoids the above-described statutory bar, and allows you to freely discuss, secure capital for, fully commercialize, and advertise a “patent pending”. On or before the one-year filing anniversary, the provisional application must be converted to a full formal application, and such conversion can include any product updates. Please be mindful that there are many subsequent post-filing steps involved in securing and keeping an issued U.S. patent, which can span 2-7 years. The total cost depends largely on the complexity of the invention, and on average a patent costs $10-15K spread over 3-5 years.

Any corresponding foreign patent applications should be filed within one (1) year of the earliest U.S. patent filing date (whether provisional or traditional) in order to claim priority based on the U.S. patent. A U.S. patent will protect against infringement by methods or devices made, used and/or sold by others within the U.S. Thus, infringing devices made in a foreign country and imported or sold in the United States would be considered an infringement. However, U.S. patents give no protection if the invention is copied and made, used or sold entirely outside the U.S.

To establish literal patent infringement, every limitation set forth in at least one claim must be found in an accused product exactly. See Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1259 (Fed.Cir. 1989). In making this determination, courts follow a two step process: (1) the claims must be properly construed to determine their scope and (2) it must then be determined whether the properly interpreted claims encompass the accused structure. Uniroyal, Inc. v. Rudkin Wiley Corp., 837 F.2d 1044, 1054 (Fed.Cir.), cert. denied, 109 S.Ct. 75 (1988). Litigating these and incidental issues can cost anywhere from a few thousand to tens of millions of dollars, and take between one and ten years. Of course, this depends on the forum, the law firm handling the case and number of assigned attorneys, the complexity of the technology and number of witnesses and experts.