Patents

Patent Protection: Securing and Protecting Your Rights

Protecting rights to an invention through patenting can be one of the most important steps taken in protecting new ideas and innovations. Patent protection provides rights that can greatly add to the value of a company. Unfortunately, mistakes can be made which can adversely affect those rights, or, in some cases, make patent protection completely unavailable. Obtaining timely advice and gaining insight as to how to avoid loss of rights and maximize return on investment of a patent portfolio can be critical during the early stages of innovation.

WHAT IS A PATENT?

A patent is an exclusionary right, granted by the government, which allows the owner of a patent to prevent others from making, using, selling or importing the invention for a limited period of time. The ability to exclude others from the making, using or selling the invention can, under proper conditions, provide a tremendous market advantage to the patent owner. There are various ways that a patent owner can derive monetary reward from an invention. The patent owner can exclude others from the market place (e.g., the right to prevent making, using or selling) or the patent owner can sell or license the invention to others in return for royalties or other monetary payment.

Although patent protection grants to the patent owner the right to exclude others from making, using or selling an invention, enforcement of the patent is not automatic. Patents can be and often are challenged as to both their validity and infringement. In general, someone infringing a valid patent will be liable to the patent holder for lost profits if that can be proven, or for a reasonable royalty. There are also penalties available in some cases which permit enhanced damage awards if the patent has been willfully infringed.

After the term of the patent, a patented invention becomes dedicated to the public, and anyone is free to use it. Practically speaking, a patent can be viewed as a kind of contract. The government grants an inventor exclusive use of his or her invention for a period of time in exchange for a full description of the invention and transfer of the invention to the public after the expiration of the patent. An inventor profits by this arrangement because of the length of time he or she has sole use of the invention as a result of the right to exclude others and gain market share. The public profits from this arrangement because inventors are encouraged to invent and disclose their inventions to the public. This both advances knowledge in the relevant art, and stimulates the economy.

Although patent protection gives the inventor strong, legally enforceable rights, it is not the only way to protect an invention. Often, other aspects of an invention may be protectable under other types of intellectual property rights, such as a trade secrets, copyrights, or trademarks. These kinds of intellectual property rights are not mutually exclusive, and can and often should be used to provide a well-rounded protection scheme. Thus, understanding these other kinds of intellectual property is also important.

There may also be certain situations where it may not be beneficial to patent an invention, but one may wish to ensure that no one else can preclude him or her from making, using or selling the invention by obtaining a patent. Thus, so-called “defensive publication” of an invention may also be used under some circumstances to prevent others from patenting an invention.

Any decision regarding the type of intellectual property protection to be sought for an invention carries certain advantages and disadvantages, and should be made only after careful consideration and consultation with a qualified intellectual property lawyer has helped one to weigh the various options. Early consultation is essential in determining the best course of action. At W|N we typically engage in such early consultation with first time clients at little or no charge so that key decisions and appropriate protection strategies can be identified early on in the process.

WHAT IS PATENTABLE AND WHAT IS THE TERM FOR PATENT PROTECTION?

Patent protection is available for a wide variety of subject matter. There are also different kinds of patents, including utility, design, and plant patents, each of which is designed to protect different types of inventions. Utility patents protect processes, machines, articles of manufacture and compositions of matter. These general classifications are very broad and, as interpreted by the United States Supreme Court, collectively cover "nearly anything under the sun that is made by man." Some subject matter is excluded from patenting as a matter of public policy, such as principles of science, laws of nature, abstract ideas or natural phenomena. These kinds of basic scientific "building blocks" must be left available for use by all. Thus, in the first instance the subject matter of a utility application must be "eligible" for patenting, meaning that it is not something which is excluded for policy reasons.

For inventions patented prior to 1995, the term of a utility patent runs 17 years from the date that the patent issues. As of June 8, 1995, however, this was changed due to implementation of legislation in accord with obligations imposed under the General Agreement on Trade & Tariffs (GATT). For utility patents which issue from patent applications filed on or after June 8, 1995, the patent term is 20 years from the application’s earliest effective filing date. Special rules applicable during a transitional period provide that patent applications that were on file prior to June 8, 1995 carry a patent term which terminates either 17 years from the issue date or 20 years from the filing date, whichever is longer. Moreover, patents already in force as of June 8, 1995 will have their terms adjusted to 20 years from filing if that adjustment results in an extension of the 17 year term.

The effect of the GATT implementing legislation on patent terms of utility patents represents a significant change in that the patent term is diminished by the pendency period, i.e., the time between filing of the application and issuance of the patent. If this period is greater than three years, the available patent term will be less than the previously available 17 years from the issue date, unless the delay in issuance is due to delays of the Patent Office in processing the application. Accordingly, timely and effective prosecution of patent applications has become increasingly important to the preservation of the full patent term.

Plant patents extend protection to asexually reproduced plants. As an example, many varieties of roses are protected by plant patents. The protection for a plant protected under the Plant Variety Protection Act runs 18 years from the date that the certificate issues. Design patents protect ornamental designs for articles of manufacture. Protectable material under a design patent includes any design, shape, or feature that is purely ornamental in nature and is part of an article of manufacture. The architectural shape and design of a light fixture is an example of the kind of subject matter that may qualify for protection under a design patent. The protection under design patents runs for 14 years from the date that the patent issues.

In 1995 the United States enacted legislation permitting a new type of patent application known as a "provisional" application. A provisional application can be filed with the Patent Office in order to obtain a filing date for a "regular" utility patent application, which must be filed within one year of the date of the provisional filing. The one year period between filing the provisional and the regular application, however, does not diminish the patent term because the term will end on the date that is 20 years from the date of filing the regular utility application. The provisional application will not be examined and can never issue as a patent, and thus acts as merely a "place holder" for the filing date of a regular utility application, but only for the subject matter disclosed in the provisional. Although the requirements for filing a provisional application are much simpler as compared to a regular application, a provisional application should be carefully prepared to ensure that its subject matter will be sufficient to support the scope of protection that is ultimately desired once the regular utility application is filed, otherwise the regular utility application may not enjoy the filing date of the provisional.

In addition to being eligible in terms of subject matter, there are also strict requirements that must be met in terms of whether something rises to the level of "invention" under the statute. Thus, an "invention" must also be new, useful, and nonobvious to someone with ordinary skill in the art related to the invention. Each of these requirements, as defined by law, must be met. The following is a brief summary which, though by no means exhaustive of current law on these requirements, nonetheless provides a useful starting point for understanding these requirements.

In general, the requirement that an invention be "new" means that the invention as defined in the claims of the patent does not exactly correspond to something that already exists in the prior art, as evidenced, for example, by being described in prior patents, publications, or as evidenced by things known or used in this country before the invention (which is presumed to be the application’s filing date, although the presumption can be rebutted by showing the date of actual reduction to practice).

Some kinds of evidence of "prior art" can become conclusive in the sense that it creates a loss of right irrespective of the invention date. Examples of situations where such loss of right may occur include circumstances where the invention was in public use or on sale more than one year before the patent application was filed, or the invention was described in a patent or a printed publication more than one year before the patent application was filed.

To be "useful," the invention must provide some practical benefit or result. For example, a new compound is not patentable unless it can be shown that the compound can be used to provide some practical use, such as treatment of disease in the case of a pharmaceutical. In most cases, the requirement for being "useful" is relatively straightforward and is often evident from the description contained in the patent application.

The most subjective requirement when determining the patentability of an invention is the requirement of nonobviousness. An invention must not be merely an obvious extension of the prior art. In other words, the differences between the invention as defined in the patent claims as a whole and what was known at the time the invention was made must not have been obvious to someone with ordinary skill in the prior art related to the invention. If the invention would have been obvious, no patent can be obtained. This does not mean that an invention that seems "simple," however, is necessarily obvious. Many inventions are simple in retrospect, but obviousness cannot be determined using the benefit of hindsight.

WHO CAN FILE FOR A PATENT?

Only those who qualify as inventors are entitled to file for a patent in the United States. An inventor may, due to an employment agreement or other circumstances, be obligated to assign an invention to another, but the patent application must nonetheless be filed by the inventor(s). Thus, inventorship and ownership of an application are not the same thing. Any person or legal entity can own all or part of the patent application, but the application must still be filed in the first instance naming the actual inventors. There is a penalty for misrepresenting the identity of the true inventors or identifying less than all of the inventors when filing a patent application. Patents which were not filed in the name of the inventor, or which do not name all the inventors, may be invalidated under some circumstances, unless corrected.

The law also recognizes that inventions are often made by more than a single individual. In these instances, the patent application must be filed by all the inventors jointly. In the absence of any contrary agreement, joint inventors become joint owners of the patent. This means that they own equal undivided parts of the invention and thus can independently exploit the patent without the consent and without any requirement to account to the other inventors. Thus, ownership rights in an invention should be clearly understood by all parties, both inventors and other potential assignees or owners of the inventors’ rights, such as employers, before a patent application is filed.

THE PROCESS OF OBTAINING A PATENT

Preparation of the patent application for filing at the U.S. Patent and Trademark Office is a challenging process. A patent often requires careful interaction between the inventors and patent drafter to clearly understand the invention in terms that will permit its most important features to be clearly understood and then broadly described and protected. Thus, a well drafted patent must accomplish multiple objectives: by statute it must be legally sufficient to enable the person of ordinary skill in the relevant art as to the making and use of the invention in its best mode; it must be technically accurate as viewed by those who are the inventors, so that it is something they can be proud of in view of potential peer review by those who, like themselves, often are persons of extraordinary skill; and yet it must be understandable and persuasive to others who may be lay persons, such as a judge or jury. Given these challenges, it is no wonder that the courts have frequently observed that few legal instruments are more challenging to properly draft than patents. The patent application is an important legal document and should thus not be undertaken by someone who is not trained and experienced in drafting patent applications.

A patent application includes a specification, a series of claims, and drawings where necessary for understanding the invention. The specification must contain a full written disclosure of the invention so that anyone skilled in the area pertaining to the invention would be able to obtain all the necessary information to make and use the invention. It must also disclose the best mode known to the inventor(s) of practicing the invention at the time the application is filed. Attempting to withhold information with the idea of treating it as a trade secret may jeopardize the validity of a patent and in general should not be done without first carefully consulting patent counsel to determine whether such information is essential to include in the application to achieve statutory compliance.

The claims determine the scope of protection provided by the patent for the invention. It is the claims that define what the patent owner can exclude others from making, using or selling. Great care must be taken to draft patent claims such that they define as broad a scope as possible for the invention while, at the same time, making the claims sufficiently narrow to avoid a challenge to validity based on prior art. As discussed below, the initial claims of the application are often amended during the prosecution of the application to refine them once examination is commenced and prior art is more clearly identified.

Since drawings must comply with detailed Patent Office rules and standards, it is often advisable to use an experienced patent draftsman to prepare the drawings. Patent counsel will normally make the arrangements for the services of a competent patent draftsman.

Once the patent application is completed and the accompanying filing documents are prepared, the application can be filed with the Patent and Trademark Office. When the application has been filed, but not before, the invention may be marked "Patent Pending" or "Patent Applied For."

The Patent and Trademark Office is responsible for ensuring that all of the statutory requirements are met before a patent is issued. Thus, patents undergo a strict process of examination to ensure that these requirements for sufficiency in the patent’s description, as well as the requirements for "invention" (e.g., that the subject matter of the invention is proper, and the invention itself is new, useful, and nonobvious) are met. To fulfill this duty, an examiner working in the relevant art for the Patent and Trademark Office will review the patent application to ensure that it is adequately described. The examiner will also then conduct a search of prior art to evaluate the inventive merit of the claimed invention in light of previous inventions and knowledge, or "prior art." The results of this examination process are reported by an examiner to the inventors and their duly appointed representative, who are then given an opportunity to respond to the examiner’s finding and to refine the invention as defined in the claims by amendment if needed.

The application is again reviewed by the examiner in light of any such changes and/or accompanying arguments in support of the invention as to why it is believed to patentable. The examiner may accept the inventor's responses and changes and allow the patent, or the examiner may make further objections and again reject the application. If the application has been rejected a second time, options are still available to pursue the patent application. These options may involve filing a continuation application which gives the inventor an opportunity to make further arguments. Sometimes an appeal from the examiner's conclusions is appropriate. Because the pendency period may diminish the available patent term, which as noted is now based on a term of 20 years from the earliest effective filing date, the appropriate course of action at each stage must be carefully evaluated with a view to achieving resolution without unduly sacrificing patent term.

The decisions and choices that are made during this review process may have a significant impact on the scope and interpretation of a patent, and hence its "strength." While patents carry a statutory presumption of validity once issued, they are not infallible and may be challenged in court. The outcome of trials involving infringement and validity of a patent are often determined by the events that occurred during the time the application was under examination before the Patent and Trademark Office. Thus, this process of patent prosecution or examination involves a careful balancing between refining the claims of the patent application so that they define over the prior art on the one hand, but do not unduly narrow the invention so as to permit the patent to be easily avoided by competitors. Like drafting the application in the first instance, this requires careful interaction between the inventors, the patent owner, and their attorney to identify and protect the invention is a way that is as broad as permissible in view of relevant prior art.

Although it is impossible to make generalizations applicable to every situation, rejections by the patent examiner should not generally be viewed as a sign of failure. As noted, patent prosecution is a process of negotiation between the inventors and their attorney and the patent examiner, in an effort to define the invention in terms as broad as possible given the state of the prior art. As with any process of negotiation, one must carefully assess how much to yield in order to achieve a desired result. This often requires persistence during the examination stage of the application.

Frequently, an inventor will make changes or modifications to improve the invention during the time between the preparation of the patent application and completion of prosecution and issuance of a patent. It is often important to inform patent counsel of such changes so that he or she can make sure they are protected. If it is not possible to protect the improvements by amending an application already on file, the filing of a continuation-in-part application incorporating the changes may be recommended.

AVOIDING PITFALLS

Even prior to filing an application of patent, there are certain things that will help to strengthen the patent when finally issued. Following are some additional recommendations and guidelines to assist in obtaining patents that will provide strong legal rights.

1. Keep accurate records as to an invention’s development, including from conception to actual reduction to practice. This record of the actual invention date is often important in determining whether other information actually qualifies as "prior" art and can also be important if others claim to have made the same invention, in which case the patent is awarded to the party who was first to invent. Thus, written and/or photographic records of the development of all inventions from the initial conception of the idea through each stage of development and reduction to practice should be carefully preserved, as well as early prototypes that are made. All such details should preferably be recorded by an indelible, dated entry in a permanently bound notebook. The inventor should retain all correspondence about the invention, as well as all receipts for materials purchased or services performed by others. All continuing research, testing, and developments should also be recorded as they occur.

2. Records generated by an inventor are not as convincing when there is no person other than the inventor to corroborate the content of those records. There is a common misunderstanding that an inventor can protect an invention by mailing to him or herself a registered letter describing the invention. Such letters do not provide the inventor with another person who understands the invention and can corroborate the inventor’s evidence of invention. Such letters, therefore, do little to protect an invention and are of minimal value in establishing legally sufficient proofs of the invention date. Development records should be witnessed, dated, and signed by one, or preferably two, trustworthy individuals who understand the invention. This helps insure that such invention records will be given as much weight and credibility as possible should a challenge arise as to who was first to invent, or should other circumstances require proof of the invention date.

3. Not all inventions are patentable and not all patentable inventions should be patented. It makes little sense to invest money pursuing patent protection on an invention that will not return the investment. Frequently, the inventor is aware of the most pertinent information relating to the invention. The inventor is therefore in an excellent position to gather information that can be evaluated to help assess the legal merit of the invention in terms of its novelty and nonobviousness. In what way does the invention differ from what is already known in the relevant art of the invention? How much of an advance do those differences represent? Are those differences marketable differences, and as such would protecting them add value? These are all questions that should be asked and answered, if possible, before substantial sums are invested into patent protection for the invention. Similarly, these are also questions that will help in evaluating whether the invention meets the standards necessary to obtain patent protection. This information must also be submitted to the Patent and Trademark Office when the application is filed, as part of a legally imposed duty of candor. Failure to comply with the duty of candor may result in invalidating the patent or rendering it unenforceable.

Similarly, in many instances it is advisable to conduct a preliminary patentability search. Patent counsel, when provided with a full disclosure of the invention, can handle the arrangements and assist in evaluating the results. Such a search is relatively inexpensive, particularly when compared to the costs of preparing and prosecuting a patent application. While there is no guarantee that the patentability search will uncover all pertinent references, it generally provides a good bench mark of the patentability of the invention.

In addition to the invention’s technical evaluation, other factors should be considered such as the size of the potential market, the number of units likely to be sold, the profit per unit, whether the invention will be manufactured and marketed by the patent owner or licensed to others to manufacture and/or market the invention, and the monetary investment required to patent, manufacture, and market the invention.

Where such technical or marketing information is not readily obtainable, it may desirable to consider filing a provisional application in order to reduce costs and to provide additional time for obtaining such information.

4. Care should be taken to avoid using the invention under circumstances not protected by confidentiality, disclosing the invention under non-confidential circumstances to others, publishing articles on the invention or distributing sales literature or the like, or making sales or offers for sale prior to obtaining a U.S. filing date. Such activities can result in loss of U.S. and/or foreign patent rights to the invention. Remember that in general, in the absence of patent protection, the only ways to protect new ideas and technology are by preserving them as trade secrets, or by protecting them under appropriate contractual provisions such as non-disclosure and confidentiality agreements.

SUMMARY

Securing patent rights in an invention can be a highly worthwhile investment. However, much care and thought needs to be given to how to maximize the investment. By following the above guidelines, many of the pitfalls that can jeopardize important patent rights may be avoided and expenditures of time and money can be minimized.