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Patent Information

Student Legal Services - ASUW

Patent Information

If you have invented something new and non-obvious or have improved an existing product, your new gizmo may be eligible for patent protection. Essentially, a patent is a government-granted limited monopoly on the production, use, or sale of your invention. Effectively, the patent precludes others from making, using, or selling your invention within the U.S. without your permission.

Notably, you may not obtain patent protection for the novel idea or suggestion; you must have either made a working model of the product, or have produced designs and specifications detailed and complete enough to allow someone skilled in the area to make it. Also, if you invent something as part of your employment, your employer owns the patent, not you - think of sticky notes, which were invented by an employee of 3M; 3M owned the patent, not the employee.

So what is a patent and what does it do?
Specifically, a patent is just the piece of paper issued by the U.S. government which grants the monopoly rights to the patent holder over the exploitation of an invention. The U.S. Patent and Trademark Office (USPTO) is the government agency responsible for issuing patents. 

Often, the inventor himself or herself does not actually build the invention but rather licenses it to a company with the proper equipment to build the invention, for a fee or royalty based on the commercial exploitation of the invention. Such licenses may be either exclusive or non-exclusive. Exclusive licenses grant the right to produce the invention to one, and only one, company. Non-exclusive licenses may grant several companies the permission to build and exploit the invention.

Practically, companies are usually more willing to pay for exclusive rights as that grants them the sole ability to reap the gains from marketing and selling the invention. However, the inventor will need to carefully assess his or her potential gain from issuing exclusive or non-exclusive licenses for example, having two companies produce one's invention for respectively smaller license fees may ultimately yield greater benefits to the inventor than one company paying more for an exclusive license. Furthermore, the licenses may be for the life of the patent (14 to 20 years depending on the type of invention, more on that below) or a shorter time-frame, or may be sold outright for an up-front lump sum payment.

Other considerations relating to licensing an invention include the geographic area constraining the license and the possibility of issuing separate marketing and distribution licenses. For example, an inventor could issue a production license to company A, a marketing license to company B, and a distribution license to company C.

Of course, the benefits to the inventor of issuing licenses depend almost entirely on the terms of the license, which is a contract and subject to contract laws. For these purposes, the holder of a potentially valuable patent would be foolhardy to negotiate with a company without his/her own patent attorney as the company will certainly have its own lawyer attempting to get the best terms for the company, usually at the expense of the inventor. Patent attorneys are not cheap, but the downside risks of not retaining one are very ugly.

Types of patents
So, what is the appropriate type of patent for your invention? There are three patent types: utility, design, and plant. Utility patents apply to processes, machines, manufactured goods, and compositions of matter or materials and improvements to existing products falling in one of these four sub-categories. It is common for an invention to fall within more than one of these utility sub-categories. For example, a computer program may often be described as a process (i.e., the steps required to make a computer do something) and a machine (i.e., a device which converts inputs into outputs); however, only one patent will issue for such a multi-category invention.

Design patents issue for non-functional, or superficial, improvements on the design of an existing product. For example, your newly redesigned solar flashlight may qualify for a design patent if your redesign does not improve the functionality of the flashlight, but just makes it look better. In other words, if your invention makes something work better you are in utility patent territory, but if your invention just makes something look better, you are in design patent territory.

Finally, plant patents issue for any sexually or asexually reproducible plant (such as a flower or corn variety) which are both non-obvious and novel. Think of ConAgra - it has many patents on genetically modified seed varieties.

Characteristics of a patentable invention
So, now that you know what type of patent applies to your novel and non-obvious invention, the question remains as to what type of invention may obtain patent protection. First, some examples of inventions which do not qualify for patent protection include mathematical formulas, newly discovered laws of nature, and newly discovered substances which occur naturally in the world. A comment on the last of these non-patentable inventions: while the new substance you discovered on your last trip into the Amazon may not be patentable, the process by which you are able to make more of it in the lab is patentable; so do not despair, you might be rich after all.

Turning to inventions which are patentable, the USPTO will make a two-part analysis of your application. The patent examiner will first determine if the invention is novel on the date of invention (i.e., whether the invention contains a new development in one or more of its constituent elements).

Then, if the examiner is satisfied that the invention is novel, he or she will determine if the invention is non-obvious. In making this determination, the examiner will ask whether someone skilled in the particular field, as of the date of invention, would consider the development unexpected or surprising. For example, if someone skilled in the field of lamp design would find your new lamp design unexpected or surprising, you have hit pay dirt.

On the other hand, if the patent examiner determines that a skilled wheel maker would not be surprised by your reinvention of the wheel, you are out of luck. If the examiner finds after this two-part analysis that your invention is both novel and non-obvious, and it fits within one of the three categories of patents (utility, design, plant), you are on your way to patent glory.

Examples of creative works which have been found to satisfy the three requirements (novel, non-obvious, recognized patent category) are: biological inventions, carpet designs, chemical formulae, processes or procedures, clothing accessories and designs, computer hardware and peripherals, software, containers, cosmetics, decorative hardware, electrical inventions, electronic circuits, fabrics and fabric designs, food inventions, furniture designs, board games, jewelry, magic tricks, mechanical inventions, medical accessories, musical instruments, odors, plants, sporting goods. As you can see, should your creative juices yield something (almost anything) which is sufficiently novel and non-obvious, you may be eligible for patent protection for your invention.

How can I find out if my invention is already patented?
Before you start the registration process, you may want to research existing patents to see if someone has already been issued a patent for an invention similar or identical to yours. To state the obvious, if you see something for sale in a store, it is likely patented (a patent examiner once stated that a prospective inventor knew her invention was functional and patentable because she saw one for sale at Walmart).

You can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the USPTO web site at www.uspto.gov/go/pats.

A complete patent backfile in numeric sequence is available on microfilm or in optical disc format. Official Gazettes, Annual Indexes (of Inventors), the Manual of Classification and its subject matter index, and other search aids are available in various formats. Patent assignment records of transactions affecting the ownership of patents, microfilmed deeds, and indexes are also available.

You may also retain a patent attorney or agent to conduct a complete search. For information on registered patent attorneys and agents in your area, you may visit the Office of Enrollment and Discipline web site at http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm.

Inventors can also perform a preliminary search of patents at one of the Patent and Trademark Depository Libraries (PTDLs) established throughout the United States. These libraries have copies of patents in microfilm and/or optical disc format arranged in numerical order. They have classification search tools, automated search aids, and photocopy facilities available to the public. For information on your nearest PTDL, you may visit PTDL web site at www.uspto.gov/go/ptdl.

The patent application process
Now that you can feel confident that your invention is patentable, how do you go about getting the patent? Unlike trademarks or copyrights, no protection is available for patents without filing for patent protection, paying the application fee, and finally obtaining the patent. The application must be filed with one of the regional branches of the USPTO. The USPTO website (www.uspto.gov) has locations of patent offices and detailed documentation regarding the registration process.

An applicant may start the process early by filing an abbreviated Provisional Patent Application (PPA), which must only adequately describe the invention, but does not require the detailed documentation necessary to build the thing. If the final application is ultimately approved, filing a PPA will provide an earlier date for patent establishment and infringement purposes. To obtain a patent, however, the applicant must thereafter file a formal application within one year of filing the PPA. Note that one need not file a PPA to file a full and formal patent application.

The formal application must contain words and drawings providing crucial information. This information must (1) include words and drawings which teach and show how to make and use the basic invention, (2) explain why the invention is different from all previous and similar developments (which previous and similar developments are known as "prior art"), and (3) precisely describe the aspects of the invention that deserve the patent. Usually, the patent examiner and the inventor engage in much negotiation and clarification over the specific content of the application prior to approval or disapproval.

Term of patent protection
Once issued, utility and plant patents expire after 20 years from the patent issuance date. Design patents expire after 14 years from the patent issuance date. Other reasons for patent expiration include failure to pay required maintenance fees. Upon expiration of the patent, the invention enters the public domain and the patent holder loses the exclusive rights to the invention, and anyone may use the invention without permission.

Notably, even after the invention enters the public domain, later improvements to the invention may be available for separate patenting. Examples of patents issued on inventions which have entered the public domain are improvements to existing television and computer technology, the underlying technology of which was invented long ago.

Patent infringement
After an inventor obtains a patent, he or she gets exclusive rights to the use and manufacture of the invention. For simplicity, assume the inventor has issued no licenses for others to produce, market, or distribute the invention. If someone else uses the invention, that person infringes on the inventor's patent. In that event, the patent holder may bring an infringement suit.

If the patent holder is successful in suing the infringer, a court may issue an injunction which would prohibit the other from using the invention with an award of damages to the patent holder. A court may alternatively work with the parties to construct an agreement between the parties whereby the losing party (i.e., the infringer) will pay the patent holder royalties in exchange for use of the invention.

Common defenses to patent infringement suits include attacking the validity of the patent by alleging the examiner erred in issuing the patent because it is either not novel or not non-obvious. The infringer may also allege that the patent violates anti-trust laws that curb restraint of trade or monopolistic practices or that the patent was obtained through fraud on the USPTO.

A final note on patents relates to international protection for U.S. patents. Generally, patents obtained in the U.S. are good only in the U.S. However, several international treaties provide procedures for obtaining patent protection in other countries.

A note on inventions created using government funds
Where an invention is created using government funds, the general rule is that the government owns the invention and it then lies in the public domain. Special care must be taken when negotiating for government grants as without special planning, an inventor may lose all exclusive rights to his or her invention. This area of the law is extremely nuance and any use of government funds for development must follow consultation with a patent attorney skilled in government contract negotiation.

This point cannot be emphasized enough if you are seeking government research or development funds, CONSULT A PATENT ATTORNEY or else you might unwittingly surrender your invention to the public domain and rue the day.


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