Patents
What Can Be Protected With A Patent?
Types Of Patent Investigations
Deadlines For Filing A Patent Application
Recordkeeping Related To Inventions
A patent is a grant of rights from the government. The owner of a patent is granted the exclusive right to prevent others from making, using, selling or offering to sell the invention covered by the patent. The patent owner has these rights for the life of the patent, which is 20 years from the date the patent is applied for in the U.S. After the patent expires, anyone is free to use the invention.
What Can Be Protected With A Patent?
Patents can be obtained on "inventions." Inventions include any new and useful machine, process, article of manufacture, composition of matter (such as a new chemical composition), and improvements on any of these things. Virtually anything that is new and made by man is subject matter eligible for patent protection.
Certain things have been held not to qualify for patent protection. For example, most "works of authorship" which are protected by copyright, are not patentable. Also, trademarks, which are words or symbols that identify the origin of goods and services, cannot be protected by patents. Other things that would not qualify for patent protection are abstract ideas, pure mathematical manipulations of numbers and laws or products of nature.
Computer software was originally considered not patentable. However, in recent years the law has changed so that software inventions are often patentable.
There are three types of patents granted by the U.S. Patent Office, http://www.uspto.gov: utility patents, design patents and plant patents.
The most common type of patent is a "utility" patent. A utility patent covers what an invention is or how it functions. A utility patent is effective from the date it is issued and lasts for 20 years from the date it was applied for.
A design patent covers the ornamental features of a manufactured item. Design patents cover only how something looks, not how it works. A design patent lasts for 14 years from the date it is issued.
Plant patents cover asexually reproduced plants. Fruit trees and other flowering plants are the most common subjects for plant patents.
Types of Patent Investigations
There are usually two reasons patent investigations are requested. The first is to find out if a new invention is patentable. The second type of patent investigation is done to avoid infringement problems by finding out if something that you plan to make is covered by an effective patent owned by someone else.
Patent searches are useful for determining if an invention is patentable. Usually before incurring the expense of preparing and filing a patent application, a patentability search is conducted. The search results are analyzed to determine the likelihood that the invention is patentable.
However, many technical people know "the state of the art" and often recognize that an invention is a significant advance without conducting a patent search. In these cases, a patent application will often be prepared and submitted to the Patent Office without conducting a patentability search. A large volume of anticipated sales of an invention may also justify filing for patent protection without a pre-filing search.
Deadlines For Filing A Patent Application
In the U.S. a patent application must be filed within one year of the date the invention is first publicly disclosed or offered for sale. If the patent application is not filed within this one year period, the patent rights are forever dedicated to the public. For this reason, keeping track of disclosures and sales offers is very important.
To obtain a valid patent in many places outside the U.S., a patent application must be filed before any public disclosure of the invention. To preserve the opportunity to obtain foreign patents, a patent application should be filed in the U.S. Patent Office before making any public disclosures. Thus if foreign protection is to be considered, patent applications must be filed much earlier than if only U.S. rights are desired.
Recordkeeping Related To Inventions
When two people invent the same thing and both file for patents in the U.S., the patent will be awarded to the "first inventor." This is unlike other countries who grant the patent to the first person to file a patent application.
The rules for deciding who is the first inventor are complex. However, a good rule of thumb is that the first person to make or do something that proves the principles of the invention is the first inventor. This usually involves making the first prototype of the invention. Care should be exercised to document the making of a first prototype, by keeping records and taking pictures, as well as having the documentation witnessed, signed and dated by trusted individuals not involved in making the invention.
An inventor who was not actually the first to make the invention may win the right to the patent only by proving a) that he or she came up with the idea for the invention first and b) that he or she was continuously "diligent" from the date of coming up with the idea until actually making the invention.
Proving conception of the idea and diligence requires documentation of what was done that is corroborated by persons who are not inventors. This is usually accomplished by keeping a daily record in which the inventor records what he or she did on that day related to the invention. This record is witnessed each day by at least one non-inventor who can vouch that the inventor did what is recorded in the log.
Keeping the required documentation is burdensome, but may prove worthwhile in the event of a dispute over patent rights.
Patent infringement occurs when someone without authorization, makes, uses, sells or offers to sell something covered by the claims of someone else's unexpired patent. It is a common misconception that if you have obtained a patent on your invention, you cannot infringe someone else's patent. The Patent Office does not screen for infringement when it considers patent applications, it only looks to see if the invention claimed is novel over the prior art. Of course, a patented (or unpatented) device cannot infringe a patent on something that was invented after the accused device is already being sold. Any patent that would cover the "prior art" is invalid. Possible infringement should be a particular concern when designing a product similar to one known or believed to be patented by someone else. In such cases, it is wise to conduct a "right to make" patent search.
U.S. patents are usually not effective to stop someone overseas from doing things that would constitute an infringement if done in the U.S. However, a U.S. patent can be used to stop the importation of such products into the U.S. As a result, a U.S. patent may be used to protect against foreign and domestic competitors.
Patent infringement may result in the award of damages. The damages may be tripled if the infringement is "willful." Willful infringement may occur if a person knows about a patent and does not take steps to avoid infringement. Further, someone who does not infringe, but causes or induces someone else to infringe may also be held liable for infringement. Because the penalties for patent infringement may be substantial, prompt legal advice should be obtained whenever a potential infringement situation arises.
Many businesses only think about protecting their patents, trademarks, copyrights or trade secrets after they have encountered a problem. It is much less costly to have a plan for protection of your valuable "intellectual property" so that problems can be avoided.
One approach to avoiding problems is to have an "intellectual property audit" conducted. An intellectual property audit involves having an attorney experienced in intellectual property review the business activities and the protection you currently have. Such reviews usually uncover areas in which protection can be improved at a very low cost. Just like an annual physical checkup by a doctor, an annual review of intellectual property protection can avoid serious problems later.
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