Intellectual Property Primer Series Part 3: Patents

Here in Part 3 I will discuss patents. Patent law is an extremely complex and detailed field, so I will do my best to cover the basics as effectively as possible; however, if you have patent law questions, you should most definitely speak to your attorney who can refer you to or contact a patent attorney (an attorney that is specifically licensed to practice before the U.S. Patent and Trademark Office [PTO] to provide patentability opinions, prepare patent applications, or opine on the validity of another party’s patent).

Patents are a very different category of intellectual property than copyrights or trademarks. A patent offers much stronger protection for intellectual property than copyright or trademarks; however, the process and standards for obtaining a patent are much harder than copyrights and trademarks — unlike copyrights and trademarks, patents must be registered in order to be enforceable. And although patent protection is comparatively strong, it also lasts a much shorter period of time than copyrights or trademarks — 20 years from the date of filing of the patent application.

Patents can be obtained for any product or process that is “new and nonobvious” — products are any machine, article of manufacture, or composition of matter; processes are any art or method of a use of a known process, machine, manufacture, composition of matter, or material. The product or process does not have to be completely new; it may be an improvement on an existing product or process — for example, one may not patent a drinking cup, but one may patent a cup that uses a new design and/or material that prevents spilling liquid on oneself when taking a sip. However, if someone else already holds a patent on the material used in the cup, no one can manufacture the cup without infringing on both the patent on the material and the patent on the cup; in addition, the holder of the patent on the cup cannot make his or her product without infringing on the patent on the material!

As long as the product or process is new and non-obvious, it is generally patentable. However, there are several categories of products and processes that are not patentable. The first category is so-called “immoral inventions”: inventions concerning atomic weaponry, state secrets, or human beings (in particular, processes for cloning humans). The second category is medical procedures, which are technically patentable, but cannot be enforced if infringed upon by a medical professional during a “medical activity” (although patents on products used in the procedure can be enforced). The laws of nature or abstract ideas (e.g.: mathematical equations and computer algorithms, or business/accounting methods) are a third category of items that cannot be patented — one theory behind the bar is that such processes are fundamental to nature and have always existed, therefore they are not “invented” so much as they are “discovered”; however, the modern trend has permitted the patentability of computer algorithms and software where they are a component of a process — for example, a computer algorithm used as a part of a process for making steel may be patentable, as the patent would not bar use of the algorithm altogether, only as part of the patentable steel-making process. Finally, physical phenomena and living organisms/products of nature are generally not patentable, but like with abstract ideas, the recent trend has been to soften the rule; in the past few years courts have permitted patents on both modified genes and the resulting genetically engineered organisms.

A patentable product or process must be new and non-obvious. An invention is new if it has not been anticipated (it was not known to the public or described in publication), if it has not already been invented by someone else in the process of making the invention and filing a patent application, and if the patent applicant is the inventor and did not learn of it from someone else (however, patent rights are personal property like copyrights and trademarks, and can be sold or assigned, so a laboratory employee may assign to the employer his or her patent rights in any invention he or she creates while working in the lab). The invention must also not be obvious to an individual working in the field of the invention — for example, if a puncture-proof tire is invented, it may be obvious to someone in the field to invent a car that uses puncture-proof tires. The product or process must be useful — that is not to say that someone would actually want to use the invention, merely that it works; however, products of scientific research, such as a non-naturally occurring molecule, may run afoul of the usefulness requirement if the product of research does not yet have any practical application or effect.

In order to obtain a patent, an inventor must file an application with the Patent and Trademark Office. In order for the application to be valid, it must be filed within one year of the invention being published, sold, or otherwise made public, or from the filing of a patent application in another country. The process is time-consuming (it can sometimes take up to four years for a patent to be issued) and expensive (often costing tens of thousands of dollars of the inventor’s time or in legal fees). It also requires the inventor to publicly disclose the invention; for this reason, corporate inventors often choose to protect their inventions under the theory of trade secrets (which I will cover in the final part of the IP series) rather than seek a patent. But patents give their holders the exclusive right to control the production and/or use of their inventions, even if someone else were to come upon the invention independently.

The most important part of the patent application is the claim. The patent will cover what the inventor claims the invention is and does, not what the invention actually is or does. The claim determines the scope of the patent and the protection it offers; first and foremost, though, it is important to note that the PTO distinguishes between product claims and process claims — for example, if an inventor develops a new, non-naturally occurring molecule and a process for synthesizing the molecule, he or she must submit a claim for the molecule (the product) as well as a separate claim for the manufacturing process (the process).

Most of the effort put into drafting the claim goes into striking a balance between broadness and narrowness of the claim — a narrower claim is more likely to be approved by the PTO, while a broader claim is more valuable since it will cover a wider range of products or processes. Drafting a patent claim is a highly skilled art, so it is almost always recommended that an applicant secure the assistance of a patent attorney or agent in the application process.

Infringement of a patent can occur by the production or sale of an identical or equivalent product or process. A product or process is equivalent if the difference between the infringing invention and each element of the patent would be insubstantial to a person of ordinary knowledge and skill in the field of the invention. The infringing invention must have overall equivalence to the patented invention — it must generally perform the same function in generally the same manner to achieve roughly the same result. However, courts sometimes choose to apply the “reverse doctrine of equivalents” and reduce the equitable scope of the patent claim, where if the allegedly infringing invention falls within the literal language of the patent claim but performs the function in a substantially different way, it is held not to be infringing.

For entrepreneurs who may have patentable inventions, beginning the process of securing the patent should be of the highest priority; taking any other steps in starting up a business to ultimately exploit the patent or invention may start the clock on the one year time limit for filing patent applications. If you have a patentable invention, you should contact a patent attorney or agent.

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