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Basics of Patent Protection

Andrew J. Sherman, Partner, Dickstein Shapiro Morin and Oshinsky LLP

A patent grants inventors the right to exclude others from making, using, selling (or offering to sell) or importing their inventions throughout the United States for a limited period of time. To obtain a patent, the inventor submits his or her application to the U.S. Patent and Trademark Office (known as the "USPTO"). There are three categories of patents:

  • Utility patents are most commonly granted for the protection of new, useful, non-obvious and adequately specified processes, machines, compositions of matter, and articles of manufacture (or any new and useful genuine improvements thereof), for a period of 17 years from the date the patent is actually issued by the USPTO.
  • Design patents are issued for new, original, ornamental and non-obvious designs for articles of manufacture, for a period of 14 years from the date of issuance.
  • Plant patents (used less frequently) are for certain new varieties of plants that have been asexually reproduced, for a term of 17 years.

The first step in determining whether to protect a new product or invention with a patent is to understand the costs and benefits of patent protection. The patent application and registration process generally lasts three to five years and often involves a costly legal and consulting fees. That being so, it is crucial to determine, before you file, whether the benefits of being able to exclude others from manufacturing, distributing or exploiting the subject matter outweighs the high costs of prosecuting and protecting the patent.

You should also consider whether there are adequate alternatives for protecting the invention. Is adequate protection available under state trade secret laws? To what extent does the business plan exploit technology before the patent is issued? For example, in an average patent-infringement civil suit, attorneys' fees alone could easily cost hundreds of thousands of dollars. When conducting this cost-benefit analysis, you should strongly consider:

  • What is the projected commercial value of the invention? What are the projected out-of-pocket expenses for registering the patent? In addition to legal fees, what advertising, marketing or even re-tooling expenses will be incurred? For example, if you are concerned that the target market for the invention may be limited, it may not be worth the cost of prosecution and subsequent protection.
  • How close (from both an infringement and commercial development perspective) is the subject matter of the invention to existing patented and non-patented technology? For example, if the subject matter of the patent is too close to existing technologies, then the claims allowed by the USPTO will be very narrow and difficult to commercialize and protect.
  • Can the invention be exploited within the time frame granted by the federal statute? Or, will the market value of the technology or invention be lost during the three to five years that it will take to obtain a patent? Timing is always an issue. If the patent application concerns a field in which the technology is developing quickly, you do not want to run the risk of the invention becoming obsolete by the time the patent is finally issued.

A patent application must be filed within one year of the public use or publication of the invention. This statutory requirement applies significant limitations on the level of marketing research or testing. If you decide to pursue a patent, there are two things to do before obtaining a patent attorney. Compile and maintain careful records relating to the research and testing of the product. These records must:

  • contain certain key dates, such as the date that the invention was conceived as well as the date that it was actually reduced to practice (that is, the invention is well beyond the conceptual phase and has either actually been developed and tested or is described so clearly in the application that a third party skilled in the particular art could understand and actually develop the technology);
  • be able to demonstrate the company's diligence in the development and testing of the subject matter;
  • include the corroboration of independent witnesses who are capable of understanding the nature and scope of the invention and who can verify the dates of conception, actual reduction to practice and continued diligence of the inventor.

Also, conduct a search at the USPTO Public Search Room in Arlington, Virginia (usually done by an attorney) to determine what patents have already been issued in your field and how these will affect your application.

The Registration Process

Registration is a complicated process. The actual patent application is made up of several distinct parts, including:

  • a clear and concise description of the company's declaration that it is the original and sole inventor;
  • written drawings (where necessary) of the invention;
  • filing fees; and
  • one or more of the company's "claims" of exclusivity. The claims define the actual boundaries of the exclusive rights that the inventor hopes to be granted during the term of the patent. If they are drafted too narrowly, imitators and competitors will be able to develop similar technologies or processes without worrying about infringement. If they are drafted too broadly, the inventor runs the risk that the proposed claims will be rejected by the USPTO examiner or subsequently be declared invalid by the courts in litigation, when and if the validity of the patent is challenged by a competitor.

The review and ultimate determination of the patentability of the invention will depend on the company's ability to demonstrate to the examiner that the following statutory requirements have been satisfied:

  • The invention constitutes patentable subject matter (e.g., process, machine, composition of matter, article of manufacture or some new and useful improvement thereof).
  • The company is the original inventor or discoverer of the subject matter of the technology described in the application.
  • The subject matter must be novel or new. It is not patentable if: (a) it is already known or used by others (already covered by another patent), (b) it is merely a new use of an existing product or technology; or (c) the subject matter has already been described in a printed publication.
  • The subject matter of the invention is useful and not merely of scientific or philosophical interest.
  • The subject matter of the invention is non-obvious to others in that particular trade or industry. The USPTO has broad discretion to determine what may be considered "non-obvious." A patent will not be issued if the differences between the subject matter sought to be patented and the current body of knowledge to those "skilled in the art" are marginal.

Once the patent has been issued, you must embark on an aggressive patent protection program. This entails:

  • the use of proper notices and labeling of the registered patent for the product;
  • monitoring the developments in the industry;
  • policing the activities of licensees, employees, and others who came into contact with the patented machine or technology;
  • exploiting the marketplace that has been created by the patented product and
  • aggressively pursuing known or suspected infringers of the patent.

Although the costs of patent litigation may be high, the rewards of stopping an infringer are also very worthwhile. Damages and equitable remedies (such as an injunction or an accounting for profits) are available, and federal patent law allows a court to triple the damages for extraordinary cases (also known as treble damages).

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