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.

Protecting rights to an invention through patenting is one of the most important things you can do to protect your innovation. Patent protection can add lasting value to a company and maximize your investment when it is obtained in a timely manner.

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 provide a tremendous market advantage to the patent owner. Patent owners benefit when they are able to exclude others from the market place, or can sell or license their invention to others in return for royalties or other payment.

Although patent protection grants 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 both to 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.

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 with this arrangement because of the length of time he or she has sole use of the invention. The public profits from this arrangement because inventors are encouraged to invent and disclose their inventions to the public. This advances knowledge 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 through 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.

There may also be certain situations where it may not be beneficial to patent an invention, but it may be beneficial to ensure that no one else can preclude him or her from making, using or selling the invention by obtaining a patent. “Defensive publication” of an invention then, can prevent others from patenting an invention.

Various types of intellectual property carry certain advantages and disadvantages. A consultation with a qualified intellectual property lawyer will help you weigh the various options, and time is of the essence. Early consultation is essential in determining the best course of action. At Workman-Nydegger 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 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 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. 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. Determining whether the subject matter or invention then, is “patentable” is the first step in the process.

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. 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 apply.

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. The regular utility patent 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 acts as 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 than a regular application, a provisional application should be carefully prepared to ensure that its subject matter will be sufficient to protect the subject matter once the regular utility application is filed.

There are also strict requirements as to what is considered an invention by the patent office. An “invention” must be new, useful, and nonobvious to someone with ordinary skill in the art related to the invention. The following is a brief summary which provides a useful starting point for understanding these requirements.

In general, the requirement that an invention be “new” means that the invention does not exactly correspond to something that already exists in the “prior art.” With the passage of the America Invents Act of 2011, the laws defining what constitutes “prior art” have changed to focus on events that occurred before filing and disclosure dates instead of events that occurred before filing and invention dates. Workman-Nydegger can help inventors navigate this change in the law.

To be “useful,” the invention must provide some practical benefit or result. 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. 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.

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 be filed by the inventor(s). In this way, 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 first be filed 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 inventor’s’ 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. A well drafted patent must accomplish multiple objectives: 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; and 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. 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.

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 so that they define as broad a scope as possible for the invention while, at the same time, making the claims narrow enough to avoid a challenge to validity. 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. 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 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 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 allow the patent. However, 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, the appropriate course of action at each stage must be carefully evaluated with the goal of achieving resolution without 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. 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 balance between refining the claims of the patent application so that they define over the prior art on the one hand, but do not narrow the invention, exposing the patent to 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 always 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. As with any process of negotiation it is important to 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 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 strengthen the patent when finally issued. Following are recommendations and guidelines to assist in obtaining strong, legal patents.

1. Keep accurate records as to an invention’s development, from conception to actual reduction to practice. This record can be important in demonstrating or defeating a claim of derivation, in demonstrating entitlement to a grace period under the America Invents Act, or in simply describing a compelling story of the invention’s development in infringement litigation. 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 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 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 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 in the event that they need to be relied upon.

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 then 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 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 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, it is advisable to conduct a preliminary patentability search. Patent counsel 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 benchmark 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 be 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 nondisclosure and confidentiality agreements.

Summary

Securing patent rights for 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, minimizing expenditures of time and money.