A patent is an intellectual property right granted by the federal government to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for a detailed description of how to make and use the invention. In essence, the federal government is encouraging the disclosure of new products into the public domain by granting a limited monopoly to an inventor.
There are three types of patents.
- Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Here is the process for obtaining a utility patent.
- Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Patent Law requires that the invention pass four hurdles before it can be patented. The invention must be:
- Novel, i.e., it has not been anticipated by anyone else anywhere in the world;
- Not obvious to a person with ordinary skill in the field; and
- Descriptively explained in the patent application so that a person having ordinary skill in the field can reproduce and use it.
The Patent Process:
- Creating a solution to a problem
- Searching to see if anyone has found the same or similar solution
- Deciding whether you want to pursue a patent or keep it as a trade secret
- Drafting a proper patent application that complies with the United States Patent & Trademark Office (USPTO) procedures
Everything after step 1 should include the advice of an experienced patent attorney. Hypothetically speaking, let’s say you have a fantastic idea and build a working prototype for a new invention. Everyone you show it to loves it. Friends and family are willing to invest in a new company to help you sell the product. You invest a year of your life into this and other people’s money only to receive a letter in the mail from a patent owner claiming that you are infringing his/her patent. The patent owner can legally ask for an injunction preventing you from making and selling your product, as well as damages. Monetary damages compensate the patent owner, and usually amount to as much as what the patent owner could receive as royalties under a reasonable patent license agreement. Furthermore, the patent owner can ask for lost profits that he/she normally would have received but for the introduction of your product into the market. And if you receive notice that your are infringing someone’s patent and continue without interruption, the judge can triple the monetary award for your flagrant behavior. In extraordinary cases, the judge can even force you to pay for the patent owner’s legal fees.
To prevent this hypothetical scenario, it is always advised to contact a patent attorney and perform a Freedom-to-Operate search. Even though this is something a new business owner would normally perform in-house, a patent attorney has years of experience and specialized education that permits a focused search and comprehension of the oft-used legalese found in patent claims.
A similar search can be done to see if the new product is patentable. This type of search incorporates the Freedom-to-Operate opinion, and also ensures that the invention is useful, new, and not obvious. Once this hurdle has been cleared, the patent attorney sits down with the inventor to prepare an appropriate patent application.
Navigating a patent application through the USPTO is a well-rehearsed dance. The patent application should be drafted broadly in an effort to capture every possible iteration of the invention. The USPTO examiner will conduct a search to see if the application has overcome the four hurdles mentioned above. Usually, the examiner will find some type of prior art and deny most, if not all, of the claims. At this point, the patent attorney and the inventor must decide how to proceed. Amending the application to narrow the scope of the claims to comply with the examiner’s objections is the easiest option. Sometimes, the patent attorney can use purely legal arguments to overcome the examiner’s objections. Other times, the inventor may want to abandon the application, or file a new application due to recent improvements. I cannot stress enough how instrumental a patent attorney is during this process.
Patents v. Trade Secrets
In the very beginning of the process, the inventor must determine whether the invention should be kept as a trade secret or disclose it during the patent process. Patents require the inventor to provide a detailed and enabling disclosure about the invention in exchange for the right to exclude others from practicing the invention for a limited period of time. Patents do expire, and when that happens the information contained within is no longer protected. However, unlike trade secrets, patents protect against independent discovery and reverse-engineering. Patent protection also eliminates the need to maintain secrecy. While most anything can be kept secret, there are limitations on what can be protected by a patent. If a given invention is eligible for either patent or trade secret protection, then the decision on how to protect that invention depends on business considerations and weighing of the relative benefits of each type of intellectual property. If the invention can easily be reverse-engineered, the inventor should pursue a patent.