A Guide for Protecting Ideas and Inventions Through Patents

Many successful products and businesses are conceived with a single idea. While the creativity and high energy produced from new and intelligent ideas is invigorating to the inventor and his business, that enthusiasm can be quickly deflated by another who chooses to use those ideas as his own, profiting from the hard work of the original inventor.

In order to protect ideas and inventions, inventors and companies alike should be aware of the availability of patents. Ideas that relate to new products, machines, chemical compositions, processes or designs can be protected by a patent. Protection of new technology produced by the most advanced minds is essential in our competitive economy. Before acting on your idea or invention, consider the following:

• Patents protect your novel ideas, methods and apparatus;

• Patents help you protect your market share;

• Patents keep others from infringing on your ideas, products and methods; and

• Patents are important to ensure income from royalties.

PATENTS

A U.S. patent is a grant by the government of the right to stop others from making, using or selling a patented invention in the United States. U.S. laws are designed to award a patent to the first inventor, not simply the first person to file a patent application. Therefore, you should maintain careful records of the development of your ideas, products and methods, in case documentation is later required. It is also advisable to have independent corroboration (witnesses) to your invention. Without the corroboration of another, proof of your invention will be disregarded. The U.S Patent and Trademark Office has a program to help inventors document their inventions properly.

PROTECTING YOUR PATENTS

A patent gives you the right to bring an infringement suit against anyone who makes, uses or sells your patented invention in the United States without permission. If you prevail in your lawsuit, you could receive a dollar award for damages and an injunction forbidding future infringement. Likewise, also be aware that charges of infringement by a competitor could become an issue for you. Seek advice regarding employee invention agreements, employee confidentiality agreements, international licensing and technology agreements, distribution agreements, documentation of intellectual property involved in mergers and acquisitions, advertising compliance, and engineering and technology issues related to product liability and negligence claims.

Although you are not required to have a patent to market your invented product, others may feel free to use your ideas for their own gain if a patent does not exist. If someone else makes, uses or sells your invention or contributes to another's making, using, or selling of your invention, that individual infringes your patent.

Whether something is infringing on your patent often depends upon the meanings of the words and the arguments made during the prosecution of the patent application. For this reason you should be cautious about needlessly making statements that will later restrict the scope of your patent.

PATENT QUALIFICATIONS

Patents come in two classes: utility patents (products, machines, processes, and chemical compositions) and design patents (based on the ornamental appearance of a product). However, whether your invention is in fact patentable depends upon whether it meets three statutory tests: (1) the invention must have utility (except for designs); (2) it must be novel; and (3) it must be non-obvious.

The utility test requires that an invention serve a purpose. The novelty test requires that the invention be different from "prior art, " or anything that was previously known or used. Finally, the non-obvious test requires that in addition to being novel or different from prior art, the invention must be more than an obvious variation from prior art. This test is usually applied by asking whether the invention would have been obvious to a person of ordinary or average skill in the field of the invention.

DETERMINING WHETHER YOUR INVENTION IS PATENTABLE

Whether an invention is patentable depends primarily upon how it differs from prior art. A patentability search in the U.S. Patent and Trademark Office should be conducted to determine whether prior art exists. Based upon the results of a patentability search, our patent attorneys can give an opinion on whether patent protection is available on your invention, and if so, what scope of protection you are likely to obtain. A search can help you decide whether it is worthwhile investing the time and money in filing a patent application, and will later help your patent attorney prepare a better patent application.

After you have determined that your idea or invention is patentable and that you wish to file the necessary documents to ensure your creations are protected, a patent application should be filed with the U.S. Patent and Trademark Office. While you are entitled to file your own patent application, the U.S. Patent and Trademark Office recommends that applicants seek the assistance of a patent attorney or agent.

To file an application your patent attorney will need: any prior art of which you are aware; a description and sketches of your invention; and a list of features and advantages of your invention as it compares to prior art. Nothing new can be added to your application once it is filed, and therefore, it must be complete. The more detailed your application, the greater your chances of obtaining a patent.

FILING A PATENT APPLICATION

U.S. patent laws allow you to make your invention public and/or try to sell your invention for up to one year before you must file a patent application. However, if you do not file within one year of the first time you use your invention in public, or sell or offer to sell your invention, you will be unable to obtain a valid U.S. patent. The terms, "public use," "offer for sale," and "sale" have specific legal meanings, and advice should be sought early on to determine whether any of these terms apply to your actions.

It can be advantageous to use this one year period to test the market, determining whether it is worthwhile to invest the time and money needed to file a patent application. Of course, you incur the risk of others claiming ownership of your invention, or jeopardizing your obtaining a foreign patent, reducing the marketability of your invention (a patent issued proves that your invention is unique and protectable).

PROTECTING YOUR IDEAS IN THE INTERIM

While waiting for your application to be examined, which can take from six weeks to two years, you can mark your invention, "Patent Pending." Although this title does not give you any additional legal rights, it does serve as a warning to potential competitors, both within and outside of your company, not to copy your invention because a patent could issue at any time, enabling you to stop others from making and selling the invention. The term "Patent Pending" is also a good marketing tool, attracting interest in your product.

If any of the claims in your patent application are rejected, you can file a response amending the claims or presenting arguments to convince the Patent Examiner to allow the rejected claims. If your claim is allowed, a patent will issue upon payment of an issue fee. If the rejection is final, you can appeal.

After the patent application is allowed, you may consider the issued patent a piece of property that can be held, mortgaged, sold or licensed, just like any other piece of property. If two or more people hold one patent, each has the right to use or license the patent without accounting to the others. When co-owners are involved it is usually a good idea to have a side agreement to equitably divide the costs and profits, protecting the co-owners from exploitation of the patent.

ENFORCING YOUR PATENT

Patents help you protect your market share. If you believe your patent is being infringed, you have the right to bring suit in federal court. If you prove that the patent is infringed you are usually entitled to an injunction forbidding further infringement, as well as an award of monetary damages. The award should compensate you for any provable damages, but it should not be less than a reasonable royalty for the use of the invention. If the infringement was deliberate, your damages will increase.

Remember that a U.S. patent only protects your invention within the United States. It is an infringement to make a patented invention in the U.S. for export, or to use or sell a patented invention made abroad. To protect your invention outside of the United States, a patent is needed in each country where protection is desired. To preserve the right to file patent applications in most countries it is important that no disclosure of the invention be made anywhere before filing a patent application in that country.

MARKETING YOUR INVENTION

You may be interested in selling or licensing your invention to someone else, rather than trying to commercialize it yourself. But, keep your idea or invention confidential until you have received a written promise from the potential buyer guarding against them disclosing information without your permission. It may be advisable to obtain a confidentiality agreement before you disclose such information.

Protecting your ideas and inventions is of the utmost importance in our competitive economy. Some of the best ideas have been lost to another, simply because available legal protection was not utilized. It is important to become educated and to receive sound advice about the options available to you in protecting your most valuable asset, your ideas.

For additional information, contact John Beulick.

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