Delain Law Office, PLLC, a patent law firm with offices in Schenectady, New York, provides patent searching, research, opinion, development, filing and prosecution services nationwide.
What Is Patent Law?
A patent is a bundle of rights granted in the US Constitution that is mandated by that document “…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (U.S. Constitution, Art. I, Sec. 8, Cl. 8). This bundle of limited rights has, in the realm of invention, evolved into the patent system, which is governed by two bodies of codified law. Statutory law, what most people think of when they think of “law,” is found at 35 U.S.C.; the regulations that govern how the statutory law is implemented is found at 37 C.F.R.
In addition, the US Patent and Trademark Office has promulgated a full set of procedures and guidelines for the practical aspects of working with the patent system. These can be found in the Manual of Patent Examining Procedure.
The federal courts regularly add to the patent law. The US Supreme Court has been deciding about two patent cases per year recently; the US Court of Appeals for the Federal Circuit, which holds exclusive jurisdiction over patent matters at the intermediate appellate level, decides patent cases on an almost weekly basis. US District Courts, the trial courts of the federal system, hear patent cases very regularly. Court decisions must be followed in the practice of patent law, both by the attorneys and agents who work with inventors to protect their patent rights, and by the US Patent and Trademark Office.
Can I Patent an Idea?
Only five categories of patentable subject matter exist under 35 U.S.C. 101:
- Composition of matter;
- Improvement of an invention in any of the above four categories.
An “idea” is not patentable in and of itself; only the expression of the idea can be protected (I tell my clients that we are not the thought police and cannot read minds to protect an idea).
Note, however, that the inventor does not need to build a working prototype of the invention. The patent application itself, as long as that application contains a full and complete description of how to make and use the invention, is considered sufficient to reduce the invention to practice.
What is the Value of Getting a Patent?
This is a question that you can answer for yourself by honestly answering the following questions.
- How would it make me feel if someone was to steal my invention?
- How would I feel if I saw my invention on the market and someone else making money off it?
- Is this invention something that I think I can make money from?
If your answers to these questions lead you to believe that you need to protect your invention, then you should consider patent protection.
Do I Need a Patent to Practice My Invention?
The short answer is probably not. However, if there is someone else out there with a patent on your invention, or other interest in your invention, then you may need to license your invention from them before you can use it.
Can I Sell My Invention Before I Receive a Patent?
This question has two interpretations.
First, can you sell the gizmo you invented before receiving a patent? Sure. However, be careful; there are provisions in the patent law that render your invention ineligible for protection if you publicly disclose the invention before you apply for a patent. There are several strategies that you can follow to maximize your protection while marketing your gizmo. We at Delain Law Office can help you sift through those strategies and determine the path that helps you best.
Second, as to whether you can sell your rights in the invention before receiving a patent, that iis a marketing question more than a legal question. There is nothing in the law that prohibits an inventor from selling intellectual property rights to an invention. However, you cannot tell your purchaser that a patent has issued if it has not.
If you can find a buyer for rights in an unpatented invention, then you can sell your prospective patent rights to that buyer. We at Delain Law Office can help you negotiate the sale.
What Rights Does a Patent Give Me?
A U.S. patent gives the patent holder the exclusive right, within the United States, to prevent others from:
- selling the invention;
- offering the invention for sale;
- importing the invention;
- distributing the invention;
- using the invention.
Note that the patent holder does not have the exclusive right to sell, offer for sale, import, distribute or use te invention; she has the exclusive right to prevent others from doing so.
What Must I Do to Police My Patent?
J.K. Rowling wrote a character in her Harry Potter series named “Mad-Eye Moody.” Mad-Eye’s mantra is “Constant vigilance!!” His mantra is well adapted to the policing of patents.
To effectively police a patent, a search should be done at least annually to see if there is anything being marketed that infringes the patent. Such searches are conducted on the internet, in the Patent Depository Library system, through competitors’ websites and publications, and by using other legal means of obtaining information about products being manufactured, marketed and sold.
If infringement is discovered, the proper course to follow is to first send a cease and desist letter. You can work with the infringer to have them license your invention from you and pay you a royalty on its use. Only if this process produces unsatisfactory results should you consider litigating the patent infringement in federal court.
Should I Keep My Invention a Trade Secret?
Whether an invention would be best kept as a trade secret depends in large part on the invention and the inventor.
Some inventions have kept their trade secret status for far longer than their patent rights would have lasted. The most famous example of of a well-kept trade secret is the formula for Coca-Cola. This formula has been kept secret for nearly a century; patent rights expire 20 years from the date on which the original nonprovisional application was filed. The Coca-Cola Company has done very well with its trade secret, and still profits from the marketing and sale of the Coca-Cola formula. However, they take extraordinary measures to prevent the dissemination of their formula.
If your invention is difficult to “reverse engineer,” if you are good at keeping secrets, and if you have solid nondisclosure agreements in place, trade secret may be a viable alternative to patent for you.
If your invention can be “reverse engineered,”, if you like to discuss your invention at professional meetings or parties, or if you do not have a good nondisclosure agreement in place, patent protection may be the route you should follow.
These considerations are merely broad guidelines. Each invention and each inventor are different from every other invention and inventor. Contact Delain Law Office for an in-depth analysis of your particular situation.
Should I Secure International Patent Rights?
Patent rights are geographically limited by country. Thus, patent rights granted by the US Patent and Trademark Office do not protect your invention anywhere else outside of the United States, its possessions and territories.
If your invention has an international marketing scope, patent rights may become important in countries outside of the U.S. If that is the case, then international patent rights may be important to secure the protection of your invention in other countries.
Each country has its own patent-granting authority, and only that patent-granting authority can issue patent rights in that country. We talk blithely of a “PCT Application.” PCT stands for Patent Cooperation Treaty; this treaty, signed by most of the world’s countries, provides an easy method of getting your invention in front of the patent offices of each signatory country. Once the application is in the PCT National phase, a local patent agent must take the application over in each country in which patent protection is sought and “shepherd” that application through that country’s patent system.
How Do I Police International Patent Rights?
International patent rights can be policed by following many of the same methods used to police US patent rights. We keep a close eye on the publications that issue from other countries’ governments and private enterprises, we watch advertising, and we do a search at least annually to make sure that there is no product anywhere in any country where patent protection exists that infringes the patent. We also utilize the services of firms located in each country where the patent rights have been granted to help us maintain constant surveillance over any infringement that may occur in that country and to vigorously pursue infringers in that country.
How Can the America Invents Act Affect Me and My Invention?
In September, 2011, President Obama signed into law the largest overhaul of the US patent law since 1952. Included in the Leahy-Smith America Invents Act are several new provisions that affect many inventors, including:
- First to file: The U.S. patent law has, until now, provided a means for an inventor, who files his patent application with the patent office after another inventor of the same invention files, to challenge a previously filed patent application if s/he can show that s/he invented first and worked continuously to produce the patent application between the time of conception and the time of filing. That provision no longer exists under the new patent laws; the US joins many other countries in requiring inventors to race to the patent office.
- Other than inventor can file: An entity can now file an application on behalf of an inventor who assigned or is under an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest in the invention), without seeking the inventor’s execution of the application. However, any patent that issues belongs to the inventor unless the inventor (or the inventor’s estate) has made a written assignment to the entity.
- Best mode: An inventor must disclose the best mode of making and using the invention, but failure to disclose a best mode is no longer a basis for invalidating or rendering unenforceable an issued patent.
- Micro-Entity: A micro-entity includes:
- an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications, not including those the inventor was obligated to assign to an employer
- a university or an inventor under an obligation to assign the invention to a university
A micro-entity is entitled to a 75% reduction in many of the US patent application fees.