Patents
Ralph Waldo Emerson is often accredited with the saying: “If a man can…make a better mousetrap than his neighbor, though he builds his house in the woods, the world will make a beaten path to his door.”
Whether the world will make a beaten path to your door depends on a number of factors, not the least of which is whether the “mousetrap” is a novel, useful and unobvious invention worthy of patent protection.
A patent gives the inventor the exclusive right to his or her invention for a limited period from the patent’s filing date. Congress, in implementing the Constitutional mandate mentioned in the first paragraph of this paper, gives inventors a monopoly beginning upon filing of an application for patent. All United States patents based on applications filed on or before June 8, 1995, or in force on that date will expire on the greater of 17 years from the date of issue or 20 years from the filing date of the application upon which the patent is based. This may be affected if the patent is based on one or more prior application. All patents based on applications filed after June 8, 1995 end 20 years from the filing date of the application upon which the patent is based. This term, with some very limited exceptions, may not be extended.
A U.S. patent gives the owner of the patent the right to exclude others from making, using, selling, importing or offering for sale, in the United States the invention which is defined by the series of descriptive claims within it. There are three different kinds of patents available in this country – utility, design and plant patents. Utility patents, the most commonly sought-after patent, cover subject matter such as machines, methods, processes, computer programs, compositions of matter and articles of manufacture. Design patents protect ornamental features rather than function and include such varied items as the shape of a beverage container or the design of pants with changeable cuffs. Plant patents reward discovery of previously uncultivated plants or the breeding of novel plants.
ACQUIRING A PATENT
All patents must be applied for by the inventor and require the approval of the U.S. Patent and Trademark Office (USPTO). An application for a patent typically contains a disclosure of the invention in the form of a description (also known as the “specification”) that enables those having ordinary skill in the art to make and use the invention without undue experimentation. In addition, the application must disclose the best mode of carrying out the invention that is known to the inventor at the time the application is filed and must further include a set of “claims” – the actual information the inventor considers to be the invention and protectable.
A claim includes one or more elements that are connected to one another. Those elements and the manner in which they are connected can be identified by broad or narrow terms. Generally speaking, a claim encompasses something as long as it has “at least” those elements connected in the requisite fashion.
Since it is the objective of the inventor to exclude others from practicing the invention, the invention should be claimed in the broadest possible manner. This means that the broadest claim should have: (1) the fewest elements; (2) the elements should be defined using the broadest terms; and (3) the elements should be connected using the broadest possible terms.
Additionally, inventions are initially owned by their inventor. The inventor may transfer or assign his or her rights by contract. Employers who anticipate that their employees will make inventions during their employment typically include appropriate language in company employment policies that mandate transfer to the employer ownership in any employee inventions made. The attorneys at Lipton, Weinberger & Husick routinely assist individuals and businesses in the transfer or assignment of such rights
PATENTABILITY REQUIREMENTS
For any invention to be patentable it must meet several requirements: it must be useful, novel and unobvious at the time of the invention. While “useful” is fairly self-explanatory, “novelty” and “unobviousness” and two other concepts of patentability, “enablement” and “best mode” bear some discussion.
Novelty
Novelty means “new” and involves a specific set of technical rules. The major rule is that an invention is not patentable if it has been publicly used or sold or offered for sale (anywhere in the world) more than one year prior to the filing date of a U.S. patent application describing the invention. The acts proscribed by this rule are called statutory “bars” because they bar or prevent the inventor from obtaining a patent. One exception to the public use bar in the United States is that an experimental use of the invention will not count as a public use for purposes of the rule.
The one-year grace period does not apply in foreign countries. Most foreign countries have a so-called absolute novelty rule, i.e. a public disclosure (usually the result of public use or sale or offer to sell the invention before a patent application is filed) causes immediate loss of foreign patent rights. It must be emphasized that the novelty rules in each country are different. In some countries some of the bars can occur anywhere in the world, while in other countries these acts are a bar only if they occur in that particular country.
Therefore, an act which triggers the start of the one year grace period in the U.S. or which would benefit in the U.S. from the experimental use exception causes immediate loss of patent rights in most foreign countries. But there is one very significant exception. If a U.S patent application is filed before the occurrence of a foreign bar, the bar will not cause loss of foreign patent rights provided that corresponding foreign patent applications are filed within one year of the U.S. patent application filing date. This exception results from international treaties in which each country agrees to give a foreign patent application the same filing date it received in its home country, if the foreign application is actually filed within one year of the filing date which it has in its home country.
Unobviousness
The patent system distinguishes those new inventions that deserve patent protection from those that do not, through the concept of unobviousness. Simply put, the U.S. patent statute says that even if all the other requirements of patentability are met, the invention is patentable only if it is also not “obvious”. Although much has been written about this concept, for our purposes, it must be considered a subjective determination, based on guidelines, by the examiner who processes the application in the U.S. Patent Office. (And, ultimately, by a judge and jury in the course of a lawsuit involving infringement of the patent.)
The answer to one question is clear though: unobvious to whom? The invention must be unobvious to one skilled in the art pertaining to the invention. This means inventions relating to electronics must be unobvious to, say, electrical engineers, not chemists. Similarly, an invention relating to vending machines must be unobvious to those who design such machines. This standard is necessary, otherwise even the most mundane invention would be unobvious to somebody and hence, patentable.
It is the job of the patent attorney to convince the examiner that the invention, in view of the prior art (revealed by the examiner’s and inventor’s searches), is novel and unobvious. One situation occurred in our practice where an examiner refused to allow any claims (more about them later) to an invention and upon the refiling of the patent application, another examiner allowed broader claims than those refused by the first. This is mentioned only to show the subjective nature of the process.
Enablement and Best Mode
There are two other rules relating to patentability that generally do not come into play before the USPTO but are, nonetheless, very important. These are the enablement and best mode rules. An issued patent which fails to fulfill the requirements of either of these two rules will be held invalid and hence, unenforceable by a court that considers the patent after it issues.
The enablement rule is the requirement that the inventor fully disclose in the patent application enough information for “one skilled in the art” to practice the invention. Thus, during the preparation of the patent application, care must be taken to fully disclose the invention. In meeting this requirement, published documents may be incorporated by reference.
The best mode of the invention known to the inventor at the time of filing must be disclosed in the patent application. This rule is designed to prevent an inventor from disclosing an inferior version of the invention while the “best” version is commercialized. An inventor is frequently motivated to do this, for obvious reasons, particularly when the best mode may also be protected as a trade secret; remember the enabling rule requires that the trade secret be disclosed if it is necessary to practice the invention.
It should be apparent by now, that the most commonly asked question by business executives and inventors is incomplete and insufficient. That question is: “Is the invention patentable?” Most neophytes and some experienced inventors persist in focusing on whether an invention is or is not patentable; although that is a valid question its answer can lead to bad business decisions. For example, an invention may be patentable, but the patentability may be so narrow that little monopolistic protection is obtained.
The real question that should be asked is two fold. The first is: “If the invention is patentable, how broadly patentable is it?” The next question is: “Is it sufficiently patentable to protect that feature of the invention which gives it commercial value?” Lipton, Weinberger & Husick can help you find the answers to both of these questions.
MAXIMIZING VALUE WITH
DILIGENCE:
PRIOR ART SEARCHES, PREPARATION/PROSECUTION
OF APPLICATIONS AND STRATEGIC ENFORCEMENT
The patent attorneys at Lipton, Weinberger & Husick have scientific and engineering backgrounds and are registered patent attorneys with the USPTO. We are not only familiar with the law involving the patentability of subject matter, we are able to search for, locate and analyze relevant technology in the files of the USPTO and elsewhere. Therefore, we can provide our clients with a considered opinion as to the patentability of an invention in light of the search results. We are also able to help determine in a separate search and analysis whether a proposed invention might infringe someone else’s patent claims.
If it is determined that patent protection is available, we represent our clients before the Patent and Trademark Office. Our attorneys have considerable experience drafting and prosecuting patent applications relating to a wide range of products, devices and technologies.
Additionally, our attorneys work to maximize the capabilities of our clients’ patent portfolios by maintaining a successful patent enforcement strategy. We have litigated patent infringement suits involving a wide range of technologies in courts around the country. We have also advised and negotiated on behalf of clients in pursuit of licensing opportunities to help advance their overall business strategy and objectives.