6. The Patent Process (including a word about Patent Searching)

History and Purpose...

The first Article of the U.S. Constitution, Section VIII, provides the basis for the U.S. patent system. [U.S. Constitution, Article I, Section 8, clause 8]. In this article, the Founding Fathers granted to Congress the power to form a system "to promote the progress of Science and useful arts by securing for limited terms to authors and inventors the exclusive right to their respective writings and discoveries." [Id]. Almost a century after the Founding Fathers drafted the Constitution, Abraham Lincoln expressed his support for the patent system when he stated that "the patent system .... add[s] the fuel of interest to the fire of genius, in the discovery of new and useful things."

Clearly, the purpose of the patent system, from its earliest beginnings was to provide inventors and their employers with the incentive to create and fund the development of new and useful technologies. The patent laws have accomplished this by providing the inventor or employer with some assurance that he will be able to recover the development costs associated with the technology and then receive some additional reward for his efforts as well. The incentive the Government chose to offer was the granting of an exclusive right to prevent others from making, using, or selling the invention for a period of years sufficient to enable the recovery of these costs and, if all goes well, to return a profit. In exchange for this exclusive grant of monopolistic rights, you, the inventor, must provide the public with a full written and graphical disclosure of your invention, sufficient to enable a person having ordinary skill in the field of the invention to make and use the invention.

Think of a patent as part of a bilateral agreement with the government, an agreement where both parties benefit if the terms are honored. If you do not honor the terms, this may result in a court declaring your patent invalid. Failing to disclose the "best mode" (the best configuration of your invention) at the time of the filing of your patent application is a violation of the terms of the agreement and, as such, can be objected to by the patent examiner.

Who may Obtain a Patent?

The Patent Laws permit the Patent Office to award patents only to the true inventor or inventors. If you are an investor, you cannot file a patent application as the inventor unless you are also the inventor or co-inventor of the invention (as the drafter of the patent application defined the invention it in at least one claim of the patent application) or you have a proprietary interest in the invention. In addition, you cannot get a patent on a mere idea, concept, or suggestion. Therefore, even if you, as an investor, provide the basic idea or identify the need which the invention is to fill, and subsequently fund the development of the invention by others, the Patent Laws do not entitle you to be named as an inventor. You, the investor, however, may retain full ownership of the patent rights through an assignment or other claim, and thus benefit from the future income of the patent to the exclusion of the true inventors.

Bars to Obtaining Patent Protection:

1. when the public knows about or the invention has been publicly used in the United States, by means other than your own disclosure, prior to your filing of a U.S. patent application;
2. when a foreign government grants you a foreign patent on an application covering the same invention which you filed more than one year prior to filing your U.S. patent application;
3. when anyone publishes any article anywhere in the world disclosing the features of the invention before filing your patent application;
4. when you have abandoned the invention, or you "supress or conceal it" and
5. when you did not yourself invent the subject matter for which you seek a patent.

The Patent Search

You should search prior patents and publications at the earliest possible opportunity. Practitioners refer to this as a "novelty" search. The primary reason for this is to avoid the futility and cost of filing a patent application on an invention that someone else has already patented. In addition, a search decreases the chances that you will inadvertently infringe someone else's patent (note that a"novelty" search is not an infringement search--an infringement search is something completely different, costing anywhere from several hundred to tens of thousands of dollars). Still another reason for the search is to obtain information about the state of the art of the technical field of the invention which you may use to improve the invention and increase it's marketability (provided, of course, that you do not infringe someone else's patent)!

If you work for a company involved in an intensive research and development project, this search can save time and money by avoiding a wasted effort at "reinventing the wheel." There are countless examples of situations in which companies could have saved millions of dollars in unnecessary research and development costs, simply by taking advantage of one of the patent system's primary purposes, that of being a resource of relatively up-to-date technical knowledge.

In addition, you may be able to use some of the information in the prior art patents found during your patent search to help locate companies interested in licensing your patent. [The term "prior art" simply means the relevant technology as it existed apart from your invention, just prior to your filing for patent protection]. On the first page of the published patent, directly beneath the names of the inventors (See Appendix, exhibit A), the Patent Office prints the names and addresses of companies to whom inventors have licensed their patents.

You may elect to perform the preliminary patent search yourself, or, you may hire a patent practitioner or search professional to perform the search for you.

Even though I recommend that you hire a professional to perform the patent search, I also recommend that you do a patent "survey" search yourself. A survey search is a preliminary and inexpensive patent search which you perform before your first meeting with a patent practitioner. If the results are in your favor, this will give you the confidence that your $1200 to $3000 investment in a professional search and patentability opinion will be worthwhile. In addition, a survey search will help educate you about the state of the art in the field of your invention (more on this later). If you'd prefer someone else do this survey search for you, then order a Sanity Search from the Patentsearchers Net.

Patent Pending

Manufacturers and marketers of products often use the terms "patent pending" and "patent applied for" to inform the public that an application for a patent on that product is on file in the Patent Office. [The law imposes a fine on those who use these terms falsely]. For the period of time during which your patent is pending, the Patent Office holds your patent application in strict secrecy. What may surprise you though is that having a patent pending provides no formal protection against infringement.

Nevertheless, when a patent is pending, because the potential for its grant exists at the same time that the content of the application is held secret, this makes it more difficult for a competitor to effectively design around your patent. In some cases, the mere threat that your application may grant may be sufficient to deter a would-be competitor from manufacturing the invention, because if your patent issues and a court rules that your competitor infringes your patent, he may have to completely shut down production of his product--a death sentence where his primary source of revenue is derived from manufacturing the infringing product.

Obtaining "patent pending" status is quite easy. All you need do is file a provisional patent application and pay a filing fee of about $130 (for a small entity).

The Special Problems of Joint Inventorship and Assignments

When assignments, employment agreements, joint inventors, or possible joint inventors are involved, you should bring this to your patent practitioner's attention immediately. If you omit an inventor that you should have recognized as a joint inventor, then the joint inventor can protest your patent application. If the protestor can prove bad faith in your omission, he could invalidate your patent.

Please understand that just because you should list someone else as a joint inventor in your patent application, this does not mean that the patent laws require that this person share in the future income from your patent. In fact, a joint inventor can contractually assign away all of his rights in the invention. However, if he retains any ownership interest at all, even as little as one percent, he has a right to protect that interest by entering into license agreements with manufacturers, or by exploiting the invention himself. In fact, unless otherwise stated in a contract, he may enter into such license agreements without your permission.

If you have signed an employment agreement in which you pre-assigned to your employer all rights in job-related inventions, you may not have any rights in the invention at all. In such cases, you should first obtain a written waiver or release from your employer before you spend any money on a patent application.

Types of Patents

There are three different types of patents: utility patents, design patents, and plant patents.

The Patent Office grants utility patents to "anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The term "process" means a process or method; you may patent new industrial or technical processes or methods. The term "manufacture" refers to manufactured articles. "Composition of matter" relates to chemical compositions, and may include mixtures of ingredients as well as chemical compounds.

The Patent Office grants design patents to anyone who invents a new, original, and ornamental design for an article of manufacture. The patent laws protect the appearance of the article, not its function (for this reason, seek design patent protection only when the ornamental features of your invention are unique and commercially valuable).

The Patent Office grants plant patents to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

Design Patents vs. Utility Patents:

Design patents, under certain circumstances, may be more effective than utility patents in protecting your intellectual property. Because the patent laws base design patent protection on the ornamental appearance of the invention, design patents are almost always easier to obtain than utility patents. Provided that the appearance of your "article of manufacture" is not solely dictated by its function, the patent laws consider that its appearance is ornamental and therefore patentable, provided that the article of manufacture is useful, and the ornamental aspect is novel and not obvious to the designer of ordinary skill in the art. In addition, compared to utility patents, design patents are significantly less expensive to obtain and to maintain in force. The cost for filing a design patent application begins at about $1,000. Unlike utility patents, the patent laws do not require you to pay maintenance fees.

The right to file and maintain an action for patent infringement is the essence of patent protection. With design patents, the criteria for judging infringement is more subjective than in utility patent cases. This uncertainty often favors the patent owner. In addition, the design patent holder may elect to recover total profits. The recovery of total profits is not available in a utility patent infringement case. The potential for such a recovery adds to the effectiveness of a design patent as a deterrent to infringement. For example, a court ordered Waring, the blender company, to pay Braun more than $1,000,000 for its infringement of a Braun design patent for a tapered household blender design. Braun v. Dynamics Corp of America, 975 F.2d 815 (Fed. Cir 1992). On the other hand, because utility patent claims cover a wide variety of designs, regardless of the ornamental appearance of any particular design, utility patents are generally broader than design patents. Therefore, a utility patent is generally the most desirable type of patent.

Patent Protection in Foreign Countries

A U.S. patent gives you the right to sue anyone who makes, uses, or sells your invention within the United States, its territories, and possessions. If you desire protection in foreign countries, you must file patent applications in those countries. However, many foreign patent laws bar the grant of a patent if, before you filed in the foreign country, you displayed, sold to the public, or described your invention in a printed publication anywhere in the world. Therefore, early in the patent process, you should decide whether or not to seek foreign patent protection so that you can avoid doing anything that might prevent your obtaining foreign patent protection .

In addition, the exclusive right to exclude others from selling your invention, which your U.S. patent grants, can sometimes deter a potential overseas competitor from entering the overseas market. This indirect benefit of a U.S. patent depends on the economies of scale in the world market, and the relative proportion of the U.S. market. If the U.S. market for the invention is a substantial proportion of the world market for the invention, and if a potential competitor must make a significant investment in overhead and fixed costs in order to produce the product at a competitive price, the foreign demand alone may not be sufficient to justify the products overseas manufacture. Further, the sale of a product in the U.S., which an overseas manufacturer manufactured using a process covered by a U.S. patent, infringes the U.S. patent. [35 U.S.C. A7 271(g)]. Read our article on Extraterritorial Effects of US Patents for more information. This illustrates a special advantage of a process patent over other, more common, utility patents.

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