The patent is a periodical right recognized for the protection of inventions. Thanks to the patent, a certain privilege is gained for producing, selling and using the product for a certain period of time. It is a right to help the development of the industry by promoting the invention and to be accepted and applied by many countries. Assuming that, you have an idea and you suppose that there aren't anything like yours. This is awesome. Nonetheless, supposing is not quite enough to grant your invention, absolutely. Let's discover "What is a patent ?" and "How do you patent your awesome invention?". There are several types of intellectual property in different bodies of law that protect that intellectual property. If you have name brand, you use trademark law. If you have a work of authorship, you use copyright law. If you have a secret recipe, you use trade secret law and if you have a right that enables you to make money by endorsements, you use right of publicity law. But what if you have an idea? The other four areas of IP protect tangible things. Think about it, a trademark is brand name. Trademark law protects a specific name from being infringed by confusingly similar names. A copyright is an original work of authorship that has been fixed in tangible form and copyright law protects that particular work from being copied. It doesn't protect the idea of the expression, only the expression itself. A trade secret is generally information that is not publicly available and trade secret law helps prevent the unauthorized use or disclosure of that secret information. Rights of publicity protect the person's persona and the law prevents unauthorized use of somebody's image. You're probably realizing that if you have an idea, trademark law might help you with the name on it, copyright law might protect you in the final expression of it but it is patent law that actually protects ideas. Patent law is the area of IP law that will protect that stroke of genius, that new way to open a bottle or fix a leak. Patent law protects ideas by granting monopoly on that idea for up to a twenty year period. Not all ideas are protectable. Let me talk about what kinds of ideas are protectable under patent law. In order to be patented, an idea must have three features, utility, novelty and non-obviousness. Let me explain each of these. First utility, an idea has to be useful. Utility is best described as something that has use. An invention is useful if it produces an effect. A machine which will not operate to perform the intended purpose would not be called useful. If the invention does something useful and you're claiming that as the basis for your patent, then your idea will have utility. If your idea has utility but the thing it does is not what you're claiming in your patent, then it will not be patentable. The useful thing it does needs to be the thing you claim rights to. In addition to having utility, an invention must be novel to be patentable. Let's talk about novelty. An invention is novel, if nothing identical previously existed. Novelty means no one has ever done it before the way you are doing it. Sometimes when you have that stroke of genius, it turns out that someone has already invented that very same thing. But there's a final requirement in patentability that is more difficult to overcome. We call this one non-obviousness. Non-obviousness is a requirement that your idea, not be obvious to a person skilled in the art of your particular field of science or engineering. Now let's say that there was a ball picker upper like my friend thought of. But the prior patent used five prongs rather than four. A patent examiner might find it obvious to invent a picker upper that uses more prongs when someone else's already invented one that uses any number of prongs. If the patent examiner felt this way, then he or she will issue a rejection based on the fact that the invention is obvious. On the other hand, a ball picker upper that uses a suction cup or spring or a sticky surface might not be obvious because even though they all solve the same problem, they do it in different ways that may not be obvious in light of the prior prong system. Non-obviousness is the biggest hurdle in patentability. It may be fairly easy to invent something novel, meaning no one has done the exact thing. But inventing something that is not obvious, is more challenging. What is patentable? Patentable subject matter includes processes, machines, articles of manufacture, and compositions of matter. This list might be viewed as saying that anything can be patented. However, this is not the case. While many, many things can be patented, there are some things that are simply not patentable subject matter. If almost everything is patentable subject matter, what is not patentable? We don't allow patents on things that already exist in nature or are just arrangements of the kinds of things that already exist in the world. Here are a few examples. Data structures or programs. These are functional descriptive material that cannot be patented standing alone. Programs can be patented for what they do in some cases. Nonfunctional descriptive material, such as music, literary works and compilations, or mere arrangements of data. Electromagnetic signals which are considered forms of energy, and as such, as are natural phenomena. Under this exclusion, computer programs are patentable when embodied in something physical, such as hardware or software, but computer programs are not patentable when embodied in a signal stream. These items are considered indistinguishable from from abstract ideas and laws of nature, and therefore, are unpatentable. Once you exclude these things, anything else is fair game in terms of patentable subject matter. Now we know that you can patent just about anything. Patent law provides for a few different types of patents, including utility patents, design patents, and a thing we call the provisional patent. What is design patents? In order to obtain a design patent, the subject must be novel, just like a utility patent. There must not be any prior identical design. This also means that you must file within one year of your own publication of the design. Also, just like utility patents, design patents must be non-obvious. A design patent must not be obvious in light of prior art, however, unlike a utility patent, a design patent must not be utilitarian. You are only obtaining protection of the ornamental elements of the product, and not of the functional elements. If you get a design patent but not a utility patent, then you can't stop someone from creating their product that accomplishes the same purpose, however, with just the design patent, you can stop them from making exact replicas. Take a unique kitchen product, something like a spatula. You cannot stop people from making a spatula, generally, but if you obtain a design patent, you'll be able to prevent someone from using your same design elements. This can be very handy if your own factory is selling your products without your knowledge. Patentable and nonpatentable ideas While many ideas are just not going to be considered useful enough to be patentable, there are certainly plenty of bad ideas that are patented. How about these ideas? A 12 gauge golf club, a diaper alarm, beach boots, a fish bath, a toilet timer, a doggie umbrella, or the instant facelift. You can tell by the titles alone that these are probably off-the-wall ideas, but they are patented. They had utility, they were novel, and they were non-obvious. (Ropeless jump rope!) Ultimately, whether or not your idea has merit is not for attorneys to decide. As long as it is useful, novel, and non-obvious, it should be patentable. However, not every product needs to be patented, and many ideas aren't patentable. Some companies choose not to file patents for their ideas because of the cost or because they do not believe the idea will ultimately result in a broad patent that can be enforced. According to a recent study that 90% of new innovations developed by companies are never actually turned into patent applications. Overview of the patenting process A patent is initiated by filing an application. The first question people often ask is how much is this going to cost? If you choose to have an attorney file your patent you should expect to pay $6000 on the low end for attorneys fees, and then out of pocket costs for drawings, about $500, USPTO fees, generally under $500, and paralegal and docketing fees, which are typically under $500 as well. But many patents will cost well over $15,000, including software and business method patents in particular. Once you have filed your patent application it will be examined by a patent examiner. Unless you pay to expedite your patent application it will take 12 to 24 months before an examiner is assigned to your application. The patent examiner then examines the application. He or she will research prior patents and then issue a refusal. Almost all patents are initially refused for one reason or another. The examiner may find that the invention is not novel, and he or she will then cite the prior patents that are exactly the same. More often a patent will be found to be obvious in light of prior art, and the examiner will cite the prior art. Inventors should not be alarmed by a refusal. Remember, the patent application is a process, not simply a one time filing. In addition, if you asking for as broad of a patent as possible, then you must expect an initial refusal. You can respond to the refusal by modifying the patent claims, or by making arguments to the examiner, or in most cases, both of these. If your claims are too broad then you can use the prior art that the examiner finds to narrow your claims, and show that in light of such changes to your patent application the invention is now not obvious. Attorneys often combine legal arguments with factual arguments. Sometimes some simple changes and a common sense explanation is enough for the examiner to accept the patentability of your invention, and the patent can move forward. In other instances the examiner will still find that the amended patent claims are not novel or non-obvious, and issue another refusal. At that point, you can continue to have the patent examined, and make arguments, or you can appeal. Each time you respond to the patent office the patent office will have a period of time to respond to you. And each time the patent office sends you an office action you'll have a time period to respond to the examiner. Some patents can take several years to reach a conclusion. We call this process patent prosecution. Or, the process of pushing your patent application through the patent office, hopefully to an issued patent. During the prosecution of your patent application you can also request an in-person or telephonic interview with the patent examiner that's assigned to your application. The interview can be very helpful, particularly if you have prototypes and things that can help the examiner see what makes your invention unique over the prior art that the examiner might be citing against you. Sometimes an examiner will even use the interview to help you reflect on changes to your application that he or she might allow if you use different language, or add something to one of your claims. Once the patent is issued, you receive a patent registration in the mail, and you can go about enforcing your patent rights. After registration there are periodic maintenance fees that must be paid. You can calendar and pay these, or use a law firm, or even pay an outside company that specializes in maintaining patents and ensuring that your annuities are paid so that your patent doesn't go unpatented. Territoriality of patents Patents are territorial. This means that patent rights can only be obtained by filing a patent application in each country in which you want protection. If you do not have a patent in Brazil, for example, then you cannot enforce your patent rights in Brazil. I've already explained what is required to obtain a patent in the U.S. It isn't cheap. And now you know that your U.S. patent will not get you protection in other countries and that you need to file patents in any country where you want to eventually enforce your rights. Yes, filing in every country is an expensive proposition. But there are a couple of things that you can do in order to defer expenses for a couple of years, and also things that may reduce the overall costs. There is no means of filing an international patent application. In other words, you can't file one patent that covers multiple countries; however, there is a system called the Patent Cooperation Treaty, or the PCT. The PCT allows for the filing of a central patent that is eventually filed in individual countries. Most common questions What does the phrase patent pending mean? When you have filed for a patent you may use the phrase patent pending, or an abbreviation of that, such as pat. pend. Once a patent issues then you mark the goods with a patent number. It is illegal to claim that you have a patent pending when you do not. It is also illegal to mark a patent number on goods when the patent has gone abandoned or is expired. Is it possible that people will get the information I submit to the USPTO while it is pending? The information in your patent application is not published until 18 months after filing. Do I have to go to the USPTO to deal with my patent? You do not have to go to the USPTO physically at all. However, once your patent has been initially refused you can ask for an interview with your patent examiner, which can occur over video conference or in person. Interviews can be a very good way to explain to the examiner exactly what makes your invention unique. If two or more persons invent something, who gets the rights? Rights go to all inventors, thus unless the inventors have assigned their rights to the patent to a person or an entity they will all have the capacity to use the patent without any duty to account to the other inventors.This is very important because if you have multiple inventors and no assignment then the inventors can become competitors. This will make it very difficult to license or to sell one's patent rights. Typically a company is formed to own a patent created by two or more inventors, or in many cases the inventors are employees of a company. As employees the inventors are listed as inventors. Companies do not invent, people do. But as employees the inventors will likely have assigned their rights to the invention to the employer, thus they get their name on the patent, but the benefits are all in the name of the company. Can you be an inventor if you have funded the invention, paid for development, or furnished the materials or a lab? No, the inventors must have been inventors participating or contributing to the invention itself, not merely investors. An investor can acquire rights on a patent by requiring that the inventors assign their rights to the investor or a company, but the investor can not merely put his or her name on as an inventor when they have not actually done any inventing. Can my patent ever be challenged after it is issued? Yes, a patent can be reexamined at any time after issuance. Typically a reexamination occurs when an adversary finds evidence that would make your invention not novel or obvious, and they submit that information to the USPTO with the request to reexamine your patent. If the reexamine is accepted by the USPTO then a patent examiner will reevaluate the claims in light of the newly submitted prior art and possibly modify the claims or invalidate them. Does the USPTO tell people to stop infringing your patent? No. The USPTO only deals with the patent issuance. If there is infringement you must bring a civil action in federal court and ask that court to enter an injunction to stop the infringer, and ask for damages as well. The cost of enforcing the patent is on the patent owner, thus it can be frustrating for clients who are new to litigation to learn that they may have to pay for attorneys to go after an infringer. Certainly some infringers will stop practicing your invention if you send a demand letter asking them to cease and desist, but if they do not, then you must engage attorneys to protect your rights. What is patent licensing? A license is a contract that allows a third party to practice your invention. We call it a license because you, as the patent owner, are giving permission to a third party to use the patent. Licenses are quite complicated, because you have to address who's responsible for suing infringers, and who keeps the damages for infringement rewards. You have to deal with the maintenance of the patent, international rights, and of course, royalties. I'm often asked how much a patent royalty should be. The truth is that there is no fixed number. There are patents that are licensed for a very small royalty, like one or two percent, while many are six to eight percent, and still others might be 20% or more. Can I file a patent, and just turn around and sell it or license it, rather than making the product myself? Yes. On the one hand it is not easy to find parties to license or buy your patent, it is possible. If your patent is for something that is core to another business, then you maybe able to sell it to that company. But I try to discourage clients from spending the money on a patent if they don't have a plan for what they can do with it if no one wants to license it. Can I patent a board game? Yes. As we've discussed in this course as long as the game is novel and non-obvious it can be patentable. Can I patent a computer app? Yes. You aren't getting a patent on the code, but you can patent what the app does if it has utility and novelty and is non-obvious. If you remember the example of my daughter's Facebook application, while we didn't pursue it through to conclusion, the subject matter of her app to share possessions amongst friends was patentable subject matter. Can I patent something that was patented, but for a different application? Yes. If someone has patented a drug for one therapy, but you find an unexpected result when it is used for a different therapy it is possible to obtain a patent for the new result. How do I maintain the confidentiality of my invention before I file? So here's the thing, you have a great idea and you want to talk about it and share it and maybe even make prototypes to test your idea out, do you need to spend thousands of dollars right away to get a patent filed before you do anything? The answer is no. You actually can wait to file your patent if you can maintain the confidentiality of your idea while you work on it and test it out. Source: Dana Robinson, LinkedIn Learning Course To sum up, I suppose that we have had necessary answers related to patent and patentability. It is time to ponder your invention somehow. If you already have an idea that you assume can be patentable (or should?) you need to a broad patent research. You may use European Patent Office (EPO) and the other resources as specified below: EPO: www.epo.org/searching-for-patents/technical/espacenet.html#tab1 USA: ww.uspto.gov/patft/index.html Google: www.google.com/patent And a bonus document that includes all patent codes by country: Who is the most prolific inventor ?
Thomas Edison was widely known as the world's most prolific inventor. He held a total of 1,093 U.S. patents (1,084 utility patents and 9 design patents). In 2003, he was passed by Japanese inventor Shunpei Yamazaki (4677 granted patents at the end of 2016). On February 26, 2008, Yamazaki was passed by Australian inventor Kia Silverbrook (4737 granted patents at the end of 2016). Click for prolific inventors with 200 or more worldwide utility patent families
0 Comments
|
Categories
All
|