If patents are part of your IP strategy, focus your patent budget on inventions that your development team believes will be technically achievable, that patent counsel tells you appear on preliminary review likely to be patentable, and that you believe will be commercially well received by the marketplace.
So what are patents? Well a patent covers an invention. And a patent structurally is very simple. It has a write‑up, a description of the invention and at the end it has one or more claims, each claim setting forth what you think is your entrance. And if the patent office agrees that's the protection that you get from your patent. So think about this, ask yourself first, is it potentially patentable. Work with your patent lawyer on this. They can do a preliminary search and give you guidance to whether or not this particular point may or may not be patentable. If it is patentable ask yourself the question, is it technologically feasible. You know the idea, wouldn't it be cool if we had a time machine. That's not an invention, a great idea but not an invention. So ask yourself are we there yet. Are we at the point where we have a technologically feasible invention. If the engineering side of the house thinks they can get there and if the patent folk are saying yeah, it looks like we can probably get patent protection for this, then ask this third question, is it commercially interesting. Because just the fact that it's a cool idea doesn't make it commercially interesting. But if it is patentable and if it is technologically feasible where we think we can get there and on the commercial side of the house where they think it's a product point worth pursuing, that triple overlap, that's where you put your patenting dollars.
So what is patentable? Technological features, product features, products and sales, certainly processes can be patentable. But they have to meet the statutory requirements of novelty, nonobviousness and usefulness. What do we mean? Novelty means it wasn't available to the public previously. It wasn't in an earlier patent. It wasn't in publication. No one was using it in the marketplace earlier. If the idea is already out there in the public it's not patentable anymore.
So you're going to have to watch confidentiality very strictly in the early days until you get your patent application filed. Even if it's novel in that sense, it still has to be nonobvious. What we mean by that is that those who practice in this area, those that are skilled in the art as they say, wouldn't find your idea obvious from the prior art that went before, from the prior patents, from the prior publications. Whether something is obvious or not is a tough, tough question that lawyers fight about all the time.
Finally it has to be useful. Well you wouldn't be bothering if it wasn't useful. Of course it's useful. Those are three requirements. It's got to be novel. It's got to be nonobvious. And it has to be useful.
One important point to keep in mind if you do decide to file a patent application, you're going to have to give all the prior art that you know about. That's all the earlier patents and publications that you know about to your patent lawyer to submit them to the patent office. I know it seems like you're shooting yourself in the foot, but it's terribly important. There's an obligation on patent applicants to bring to the examiner all the prior art they know about. And in the long run it will make your patent stronger because the claims will be crafted to avoid that prior art and be patentable over that prior art. If your patent attorney and examiner don't know about that prior art they might mistakenly issue broad claims that cover the prior art. Any claim that covers the prior art is invalid. So this is a lose/lose proposition. Bring the prior art to the patent office, get a strong patent.
So a lot of companies use invention disclosure forms. These are forms that are available on the internet. You can probably find some. We've got some in the materials attached to this. It simply provides information that the patent lawyer can work with to begin the conversation to determine what is the invention, and what do we want to try to protect here. It doesn't have to be The Great American Novel. Usually the names of the people involved in that particular work, some brief description of what they think the invention is, what they think the new part is. And maybe a few other bits of information such as how they think it's going to be applied in the business, maybe what they know of prior art. Remember things that have gone before, what did they start with, what did they work from? They should record robustly and it should be in an organized fashion, data and all the rest of it.
So you've got records. Now you're in a position to review those records and make sensible decisions as to which of these technology assets are we going to try to protect with which forms of intellectual property, patent, trade secret, copyright, whatever it might be. That gives you an opportunity in a sensible, sound and cost efficient way to build your I.P. arsenal. Your I.P. arsenal is part of your I.P. strategy that supports your business plan. It gives you competitive advantages in the marketplace. And that's what your I.P. ought to be doing for you.
American Bar Association: What is a Patent? Third Edition, 2010
Field, Thomas G., Jr. IP Basics: Seeking Cost-Effective Patents
McDermott, Peter. Will the Real Inventor Please Stand Up? (PDF)
Lecture Clarification: Public disclosure by an inventor does not immediately render the invention unpatentable under the so called “absolute novelty” rules that came into effect in the United States in 2013. The inventor has a 1-year grace period from the date of such public disclosure in which to file a US patent application. Any disclosure of the same invention by another person during that grace period will not qualify as “prior art” and, so, will not render the invention unpatentable. Conversely, if the inventor does not publicly disclose his invention prior to filing a patent application, there is no grace period and any public disclosure by another prior to the inventor’s patent application filing date will qualify as prior art potentially barring patentability. So, filing a patent application as soon as possible and preferably before any public disclosure by the inventor is the best course of action.
The United States Patent & Trademark Office has materials, links and information, including answers to frequently asked questions regarding patents and the process of applying for patent protection.
Questions for You
Does your IP Strategy call for securing patent protection for inventions made by the company? If so, what procedures do you need to implement and institutionalize to ensure that technical advancements are promptly and properly recorded and periodically evaluated for possible patenting?
What management procedures do you need to implement to determine the possible impact on your patent rights of any planned dealings with others, such as responding to a potential customer’s request for quote or entering into a supply contract or joint development deal?
Will I obtain a patent clearance or freedom to operate opinion from patent counsel for new products or features, and if so, when is an appropriate point along the development path to seek such guidance??
Can you obtain useful marketplace intelligence by reviewing the recently issued patents and published patent applications of your competitors?
Questions for Your Team
What procedures do I need to follow in promptly recording technical advancements to be evaluated for possible patenting?
Do I have access to the company’s standard invention disclosure form?
Do I understand the risks of copying a competitor’s product?
Tools and Exercises
Numerous invention disclosure forms and discussion materials are available on-line. Here is one Sample Invention Disclosure Form (PDF).