(The material below has also appeared in basically the same form on my Infringing Actions blog. It is currently a work in progress, and will be added to as new installments are posted on Infringing Actions. It is for information purposes only, and is not to be taken as legal advice. This is directed at non-lawyers as well as lawyers who don't practice intellectual property law.)
Patent Basics
“You ought to patent that idea!”
We've all heard that dozens of times before, but perhaps never thought about what it really meant. Today's post will cover the basics about patents; what they are and what they do. Future posts will cover the patent application process, and what you can do with your patent once you have it.
The Patent Grant
A patent is a license granted by the government. In the case of the United States, the Constitution gives the government the power to grant patents; specifically, “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” So a patent gives the patent owner the exclusive right to practice the patented invention for a limited period of time.
Part and parcel of that “exclusive Right,” of course, is the right to exclude others from practicing the patented invention for the duration of the patent. Similarly, the patent owner has the right to permit others to use the invention – that's typically known as a patent license.
What Can be Patented?
There are two main categories of patents: Utility and Design. This post will focus on Utility Patents, and a later post will cover Design Patents.
What the Patent Statute Allows
While there is a continuing debate about the outer limits of what can be patented, there are some basic guidelines that apply to the vast majority of the situations that most of us will encounter. The first issue is whether the invention falls within the categories of things that the law allows to be patented. These include a “process, machine, manufacture, or composition of matter.” A “process” is like a formula, or a set of instructions for making or doing something. It is the category is the one that is used to identify so-called “business method” patents, which is one type of idea that many people argue should not be patentable.
A “machine” is, well, a machine. A “manufacture” is something that is made, but it can cover a lot of other things as well. And a “composition of matter” can be a chemical, a biological invention, or a new material.
Something Useful
A patentable invention is one that is “useful.” It accomplishes some meaningful task or achieves a meaningful result. That may be plowing a field, pinning a broken bone together, changing the chemical makeup of a fluid, or making a decision about how best to invest a sum of money. This separates a patentable idea from a creative idea. Writings, works of art, musical compositions, and the like are typically not considered to be patentable, but can often be protected by copyright. (Copyright will be covered in another section in the near future.)
Something Novel
A patentable invention is “novel,” or new. It is one that no one has invented before. In the United States, that means that the person who first conceives of the invention and “reduces it to practice” – makes it work – will be entitled to a patent for that invention. In other countries, the first person who files the application for the patent for an invention gets the patent. While the US may move to that system in the future, for now it remains a “first to invent” country rather than a “first to file” country.
Something Not Obvious
A patentable invention is not “obvious.” It is one that someone who is familiar with the subject matter wouldn't consider to be an obvious combination of existing inventions. (The actual standard is “one of ordinary skill in the art,” meaning that this hypothetical person has to have some skill in the particular technical field of the invention.) As you can imagine, this is one area where people often have differing views. One person may believe that adding an on/off switch to an extension cord is an idea that should be patentable, while another could consider that to be an obvious combination of two existing inventions: the extension cord and the on/off switch.
Do I Have to Keep my Invention Confidential?
Paying attention to some basic points can help you make sure that you don't lose your patent rights even before you file your application. This post will cover the importance of knowing when to disclose your invention, and appreciating what consequences follow from doing so.
Disclosing Your Idea
In the United States you have one year from the date your first disclose or sell your invention to the public before you have to file your patent application. If you fail to file within this time period, the parts of your idea that were disclosed to the public become part of the “public domain” and can be used by anybody for free. This applies to sales as well, presuming that the sale of the product puts the workings of the invention in the hands of the purchaser.Our world is increasingly interconnected, however. If you anticipate that you will want to apply for patent protection outside of the U.S., then the public disclosure or sale of your invention takes on much greater significance. That's because in order to secure a patent in most other countries, you need to have your patent application on file before you disclose your idea to the public.
What “Public Disclosure” Means
What constitutes a “public” disclosure of an invention is not always clear. There are some general guidelines that will help you figure out when you might be getting close to doing so.Disclosure generally involves revealing enough of the workings of the invention so that people who work in the technical field of the invention can figure out how it works. Enclosing a mechanical invention in a proverbial “black box” to hide its inner workings is thus one way to reveal what an invention does without revealing how it does it (though if there is enough in the way of description of how the invention works to teach someone what's going on inside the box, then the black box will do little good). A sale of a product that includes the invention will also be considered a disclosure, since the purchaser can take the product apart and “reverse engineer” it.
Any recorded description of the invention that can be accessed by the relevant members of the public risks being considered a public disclosure. This includes white papers, advertisements, video and audio recordings, thesis papers, abstracts, trade show exhibits, and the like. Oral disclosure only is more of a gray area, though it's generally a good idea to avoid gray areas wherever possible.
Who is “The Public”?
The relevant members of the public can be a smaller group than the public at large. For example, if you work in a particular industry and your invention relates specifically to that industry, and you disclose your invention at an industry group meeting, that may very well be considered a public disclosure even though the general public did not attend that meeting.
But My Investors Want to Know What's Going On
One way to disclose your invention without risking patentability is to disclose it only to people who have agreed to keep it confidential. That is often necessary when dealing with investors and customers, who want to know what you're working on even while you're still developing it. The courts have generally agreed that if you require people to sign a meaningful confidentiality agreement before you disclose your invention to them, it will help protect you from tripping up on the public disclosure issue. You have to make sure, of course, that you otherwise treat the invention as confidential, at least until your first patent application has been filed.
Procedures Can Help
Your employees should be aware of the importance of the disclosure issue. It is a good idea to have in place some written procedures for dealing with the invention process. Many companies have invention disclosure forms that are completed by employees who believe they have invented something. These forms are forwarded to an individual or a committee responsible for making decisions about which inventions the company should seek to protect by way of a patent. These procedures and forms can all reiterate how important it is to treat each invention as company confidential information unless advised otherwise.
Employee Assignments
The mention of employees brings to mind the concept of the invention assignment. Patents in the U.S. are filed in the names of the individual inventors, not their employer. Most companies have invention assignment requirements in place, preferably in the form of a written agreement that each employee (or each technical employee) signs when joining the company. These agreements typically assign the entire invention to the employer, and allow the employer to advise the Patent Office of the assignment so that the patent application moves forward in the name of the company. Both the application and the patent then belong to the company.These assignment agreements can also impose a confidentiality requirement on the employee. Even if the employee ignores the obligation and discloses the invention to the public, a court may take note of the confidentiality agreement and any company confidentiality policy and rule that the unauthorized disclosure was not a “public disclosure” that would hurt the invention's ability to be patented.
Your patent counsel can help you put together a set of policies and agreements that, if followed, will help you make sure you don't lose the opportunity to patent an invention because of a public disclosure problem.
The next step in applying for a patent on your new invention should be a prior art search.
What is “Prior Art,” and Why Should I Look for It?
Patents are only awarded for inventions that are “novel” -- in other words, new. You won't be able to get a patent for the light bulb unless your version of the light bulb is an improvement over all of the other light bulbs that have ever been invented and disclosed in some way to the public. Those earlier versions of the light bulb are part of the “prior art.”
Inventors have an obligation to tell the Patent Office about any prior art that they're aware of that may relate to their inventions. But that of course is not the main reason for conducting a search to find possible prior art before you file your patent application. There are a number of more practical reasons for doing so.
Prior Art Search Benefits
- A prior art search will help you figure out whether your invention is truly 'novel.' Why spend thousands of dollars on a patent application for an invention that someone else has already thought of?
- A prior art search may help you refine and improve your invention. “Stand on the shoulders of giants,” so to speak, and see what others have done. Their work may inspire you to improve on your original idea.
- A prior art search will show you what you may need to 'design around.' Since you can't patent what's already been invented, you may have to develop a different way of doing what your invention does in order to avoid infringing an existing patent. A workable design-around can be valuable if the owner of the prior art patent refuses to license their invention on reasonable terms. A design-around can then become a cost-effective way to compete with a product or process that is protected by such a prior art patent.
- A prior art search will help you understand whether your invention is a significant improvement over existing inventions, or an incremental advance. In either case, that information will help you decide whether it is worth investing in the patent application for your idea. An incremental advance that overcomes a significant marketing or operational problem that exists with the prior art, for example, may be very valuable. On the other hand, if your idea does not add much value to the existing invention, you may decide to invest your money elsewhere.
There are services that will conduct a prior art search for you, of course for a fee. The quality of these searches can vary widely, and often depend on how much you spend. One thing that I explain to every client is that nobody will conduct as thorough a prior art search as someone who is accused of patent infringement. In other words, a prior art search that is paid for by an inventor, and may cost hundreds of dollars, will not be as thorough as one conducted by an accused infringer that stands to lose millions of dollars in a patent infringement suit.
That's a fact that patent owners simply need to accept. A reasonably-priced, reasonably-thorough prior art search is likely to provide a good indication of existing, similar inventions that are out there. But it cannot be considered to be definitive.
The patent search services tend to be very adept at searching U.S. Patent Office records, which in many cases are an excellent source of prior art. Existing patents and published patent applications are likely to form the bulk of the results of most prior art searches from such a firm. If your invention is one that is in a 'traditional' line of inventions – in other words, not a business method – then a Patent Office-focused search may be sufficient.
If, however, the invention is in a new field of science or technology, or is a business method invention, you should make sure that the prior art search goes beyond the Patent Office, and includes areas where publicly-available information about the particular field of endeavor is likely to be found. This includes the Internet, but can also include key university libraries as well as foreign-based information sources.
In some cases – mainly in areas where the inventor is at the cutting edge of the technology – the inventor may be an excellent source of prior art. In any case, it's always a good idea to check with the inventor to find out what information he or she has about the existing state of the technology and other inventions that may be out there.
Where to Search
If you want to do some or all of your prior art searching yourself, here are some good places to start. Of course Google or some other comprehensive search engine is first, provided you are adept at crafting searches that will yield enough relevant 'hits.' Google also has its own patent search engine, available at http://www.google.com/patents, that is a great help insofar as it goes. Clicking on the “Advanced Search” option opens up a detailed search menu that you can use to help narrow down your search results. I have found, however, that Google Patents is not kept up to date, and many recently-issued patents and recently-published applications are not included in the scope of its search, making this otherwise excellent search tool something that is ultimately unreliable for prior art searching.
There is, of course, the United States Patent Office website at www.uspto.gov. The main page will give you a link to the Search section, where you will quickly learn that the PTO is not exactly on the forefront of intelligent search technology. Still the information is there, and if you know something about a particular inventor or company whose work may be part of the prior art, a PTO search may be an efficient way to see what they've patented. If you really want to dive in to the nitty-gritty of how to search using the PTO's patent classification system and other similar tools, you can look at what the PTO tells its examiners about searching prior art here: http://www.uspto.gov/web/offices/pac/mpep/documents/0900_904_02.htm .
Finally, don't forget that a foreign patent or invention disclosure can also be prior art. There are a number of databases where you can conduct a search of foreign patents. The World Intellectual Property Organization provides a short guide to some of them here: http://www.wipo.int/sme/en/documents/prior_art.html#P72_8069 .
Some sort of a prior art search is an important part of the application process for any patent application. Whether your resources permit you to hire a search firm, or you conduct the search yourself, if you move forward with a patent application a prior art search will be a good investment.
Next we will discuss the application process, and explain the difference between a provisional application and a non-provisional application.
