Intellectual Property Primer Series: Patent Basics
November 8, 2023
Intellectual property laws can be confusing and overwhelming. To help you navigate this web of complexity, we offer an IP primer series to share the foundations of intellectual property laws, including patents, trademarks, copyrights, and trade secrets.
A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most commonly can be a device, method, chemical composition, or ornamental design.
Requirements of Patentability
U.S. patents protect any new, useful, and non-obvious process, machine, manufacture, or composition of matter or any new and useful improvement thereof. An “invention” is not patentable if it claims a law of nature, a physical phenomenon, or an abstract idea.
- New (or novel): To meet this standard, the matter cannot be currently patented, described in a printed publication, or in public use. Additionally, it cannot be on sale or otherwise available to the public before the effective filing date of the application. There are a few exceptions to the new/novel criteria in the U.S., including:
- Disclosures made less than one year before a filing made directly or indirectly by the inventor or someone who obtained the subject matter from the inventor.
- If the subject matter appears in a patent or published application by another, and the subject matter was obtained directly or indirectly from the inventor.
- Useful: Essentially, any use can be deemed useful. However, subject matter that has a mere speculative use or a use that is not currently possible, such as a perpetual motion machine or cold fusion (at least not yet), is not patentable.
- Non-Obvious: The invention meets this requirement if the differences between what is sought to be patented and the prior art would not have been obvious to a person of ordinary skill in the pertinent art at the time the invention was made. Some of the current tests used to show that an invention would have been obvious includes:
- Combining prior art elements according to known methods to yield predictable results.
- Simple substitution of one known element for another to obtain predictable results.
- Use of a known technique to improve similar devices in the same way.
- Applying a known technique to a known device ready for improvement to yield predictable results.
- Choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
- Variations of known work in one field of endeavor for use in either the same field or a different field based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art.
Types of Patents
In the U.S. there are three patent types:
- Utility: protects the structure and/or function of an invention. The term of a U.S. utility patent begins on the date the patent is issued and runs for 20 years from the earliest U.S. priority date (excluding provisional applications). If a patent is issued from a first-filed application, then the term runs for 20 years from the filing date. If a patent is issued from a “continuation” or “divisional” application, then the term runs for 20 years from the earliest “parent” application filing date.
- Design: protects the look and aesthetics of an item/invention (ornamental appearance). The term of a design patent begins on the date the patent is issued and runs for 15 years.
- Plant: protects asexually reproduced distinct and new varieties of plants.
Patent Application Requirements
A patent application contains three main parts:
- Specification: describes the invention so one could make and use the invention without undue experimentation. The specification must be commensurate in scope with the invention as claimed.
- Drawings: show all the claimed details and features of the invention.
- Claims: define the scope (i.e., the metes and bounds of protection) of the patent.
As the cornerstone of inventorship, conception is the formation in the inventor’s mind of adefinite and permanent idea of the complete and operative invention – that is, the idea as it is to be applied in practice. An idea is sufficiently definite and permanent when only ordinary skill would be necessary to reduce the invention to practice (make a working model) without extensive research or experimentation. For joint inventors, each joint inventor must generally contribute to the conception of the invention.
When to File for Patent Protection
A patent application should be filed before any disclosure of the invention is made – even if a confidentiality and non-disclosure agreement is in place. However, such agreements can help preserve the right to receive patent protection when properly used. If a provisional patent application is filed first, then a regular non-provisional patent application (application for U.S. utility patent) and/or foreign application(s) must be made within one year of the provisional application filing date.
Benefits of Filing for Patent Protection
A patent does not give you the right to do or make anything. Rather, it gives you the right to exclude others from making, using, selling, offering for sale, and/or importing the patented invention in the jurisdiction where the patent is issued.
In the U.S. in particular, a patent may also give you the right, in certain circumstances, to prevent others from actively inducing another’s infringement, contributing to another’s infringement, and importing into the U.S. a product that is made by a U.S. patented process if the importation occurs during the term of the patent.
Among the benefits of filing for patent protection are:
- Ability to exclude others from practicing your invention.
- Right to use the term “patent pending” during the pendency of the application.
- Opportunity to build a market perception of innovation.
- Opportunity to differentiate a product offering from a competitor’s product offering.
The Dangers of Disclosing Your Invention
Under the current U.S. patent laws, you have one year after you first publicly disclose, sell, or offer to sell your invention before you must apply for a patent. Essentially, you have a one-year grace period before you have to apply for a patent. Once the grace period expires, you will irrevocably have lost the ability to obtain a valid patent.
In most other countries, including countries in the European Union, there is no grace period, so once you have publicly disclosed your invention, you have irrevocably lost the ability to obtain a patent on that invention. These are referred to as absolute novelty countries and are clearly at odds with U.S. patent laws.
To avoid losing rights outside of the U.S., it is important to have a patent application on file before the first public disclosure of the invention. This can be done by filing a provisional patent application before disclosure. Public disclosure can be avoided by disclosing or showing the invention under an agreement of confidentiality.
Tips for Working with Outside Vendors
To minimize the risk of public disclosures that could harm your ability to obtain patent protection, consider the following tips and best practices when working with outside vendors:
- Always obtain a confidentiality and non-disclosure agreement before you disclose information you believe is an “invention.”
- Be sure to identify information that is confidential and specifically identify material that is considered a trade secret.
- Remember that public disclosure could adversely affect the ability to obtain patent protection and may also negate any claims to trade secret protection.
- Under the patent laws, an invention “belongs” to the inventor or, in some cases, the inventor’s employer.
- When working with outside vendors, an invention that is jointly conceived will belong to both inventors or their employers unless there is an agreement to the contrary.
- If possible, before starting work with an outside vendor, obtain an agreement that states any invention is your property.
- If it is not possible to obtain an agreement clearly stating that any invention is your property, then consider entering into an agreement granting you an exclusive right to the invention as it pertains to any of your businesses/lines of products.
- Make sure to have an agreement with the appropriate terms regarding time and scope, including geographically and within a product line.
First, don’t tell the world about your new great invention without first talking to an IP lawyer. If you aren’t the first to file, you may lose your rights.
Second, think about what you might commercialize and consider two things: (1) is it patentable, and (2) could it infringe another’s patent?
Finally, if you work with contractors or outside consultants, make sure to have them enter into a confidentiality agreement or non-disclosure agreement that also assigns inventions/ownership to you.