Introduction to Patents and Other Intellectual Property A. What Is a Patent and Who Can Apply for It? 1/3 B. The Three Types of Patents 1/3 C. The Novelty and Unobviousness Requirement 1/5 D. How Long Do Patent Rights Last? 1/7 E. Patent Filing Deadlines 1/7 F. Patent Fees 1/7 G. The Scope of the Patent 1/8 H. How Patent Rights Can Be Lost 1/8 I. What Rights a Patent Grants and the Prior-Art Reference Value of a Patent 1/8 J. What Can't Be Patented 1/9 K. Some Common Patent Misconceptions 1/9 L. How Intellectual Property Law Provides "Offensive Rights" (and Not Protection) to Inventors 1/10 M. Alternative and Supplementary Offensive Rights 1/10 N. Intellectual Property-The Big Picture 1/10 O. Trademarks 1/12 1. Trademarks Defined 1/12 2. Monopoly Rights of a Trademark Owner 1/12 3. Relationship of Trademark Law to Patent Law 1/13 4. Overview of How Offensive Rights to Trademarks Are Acquired 1/13 5. What Doesn't Qualify As a Trademark (for the Purpose of Developing Offensive Rights) 1/15 P. Copyright 1/15 1. What Is Copyright? 1/15 2. Copyright Compared With Utility Patent 1/15 3. Areas Where Patent and Copyright Law Overlap 1/16 4. When and How to Obtain Copyright Coverage 1/19 Q. Trade Secrets 1/19 1. Definition 1/19 2. Relationship of Patents to Trade Secrets 1/20 3. Advantages of Trade Secret Protection 1/20 4. Disadvantages of Trade Secret Versus Patenting 1/21 5. Acquiring and Maintaining Trade Secret Rights 1/21 R. Unfair Competition 1/22 1. When Unfair Competition Principles Create Offensive Rights 1/22 2. How Does the Law of Unfair Competition Affect You? 1/22 3. Comparison of Unfair Competition With Design Patents 1/23 S. Acquisition of Offensive Rights in Intellectual Property-Summary Chart 1/24 T. Selection Guide to Which Type of Intellectual Property Is Best for Your Creation 1/26 U. Invention Exploitation Flowchart 1/26 In this chapter I'll first introduce you to the world of patent law. Each of the patent-related items discussed here I'll amplify in subsequent chapters, as they relate to the actual process of obtaining and profiting from a patent. I also present an overview of the other forms of "intellectual property" (including trademarks, copyright, and trade secrets), which are potentially available to you. Although you may think that a patent is the only form of protection for your creation, you should be familiar with and consider the alternatives, some of which you can use in addition to or in lieu of a patent. A. What Is a Patent and Who Can Apply for It? Before we start, to show the importance of patents to a society, consider the following: "That reminds me to remark, in passing, that the very first official thing I did, in my administration-and it was on the very first day of it, too-was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn't travel any way but sideways or backways." Mark Twain, A Connecticut Yankee in King Arthur's Court , Chapter IX, "The Tournament." What is a patent? It's a right granted by the government to an inventor. What is the nature of the patent right? A patent gives its Owner-the inventor or the person or business to whom the inventor legally transfers the patent-the right to exclude others from making, using, or selling the invention "claimed" in the patent deed for approximately 17 to 18 years, provided three maintenance fees are paid. (See Chapter 9 for more on patent claims, and Chapter 15 for more on maintenance fees.) You can use this right to exclude others by filing a patent infringement lawsuit in federal court. Who can apply for a patent? Anyone, regardless of age, nationality, mental competency, incarceration, or any other characteristic, so long as he or she is a true inventor of the invention. Even dead or insane persons may apply through their personal representative. (See Chapter 16 for more on patent ownership.) A patent is a form of personal property and can be sold outright for a lump sum, or its owner can give anyone permission to use the invention covered ("license it") in return for royalty payments. More on this in Chapter 16. B. The Three Types of Patents There are three types of patents-utility patents, design patents, and plant patents. Let's briefly look at each. • Utility Patents: As we'll see in Chapters 8 to 10, a utility patent, the main type of patent, covers inventions that function in a unique manner to produce a utilitarian result. Examples of utility inventions are Velcro hook-and-loop fasteners, new drugs, electronic circuits, software, semiconductor manufacturing processes, new bacteria, newly discovered genes, new animals, plants, automatic transmissions, and virtually anything else under the sun that can be made by humans. To get a utility patent, one must file a patent application that consists of a detailed description telling how to make and use the invention, together with claims (formally written sentence fragments) that define the invention, drawings of the invention, formal paperwork, and a filing fee. Again, only the actual inventor can apply for a utility (or any other) patent. The front or abstract page of a typical utility patent is illustrated in Fig. 1A. • Design Patents: As discussed in more detail in Chapter 10, a design patent (as opposed to a utility patent) covers the unique, ornamental, or visible shape or design of a non-natural object, even if only on a computer screen. Thus if a lamp, a building, a computer case, or a desk has a truly unique shape, its design can be design patented. Even computer screen icons can be patented. However, the uniqueness of the shape must be purely ornamental or aesthetic; if it is functional, then only a utility patent is proper, even if it is also aesthetic. A good example is a jet plane with a constricted waist for reducing turbulence at supersonic speeds: although the shape is attractive, its functionality makes it suitable only for a utility patent. A useful way to distinguish between a design and a utility invention is to ask, "Will removing or smoothing out the novel features substantially impair the function of the device?" If so-as in the jet plane with the narrowed waist-this proves that the novel features have a significant functional purpose, so a utility patent is indicated. If not-as in a woodshop wall clock that is shaped like a circular saw blade, or a phone that is shaped like a shoe-a design patent is indicated. Another useful question to ask is, "Is the novel feature(s) there for structural or functional reasons, or only for the purpose of ornamentation?" Sometimes the state of the art, rather than the nature of the novelty, will determine whether a design or utility patent is proper for an invention. If a new feature of a device performs a novel function, then a utility patent is proper. However, if the state of the art is such that the general nature of the feature and its function is old, but the feature has a novel shape which is an aesthetic improvement, then only a design patent will be proper. The design patent application must consist primarily of drawings, along with formal paperwork and a filing fee. • Plant Patents: A plant patent covers asexually reproducible plants (that is, through the use of grafts and cuttings), such as flowers (35 USC 161). Sexually reproducible plants (that is, those that use pollination), can be monopolized under the Plant Variety Protection Act (7 USC 2321). Both sexually and asexually reproducible plants can now also be monopolized by utility patent (35 USC 101). C. The Novelty and Unobviousness Requirement With all three types of patents, a patent examiner in the Patent and Trademark Office (PTO) must be convinced that your invention satisfies the "novelty" and "unobviousness" requirements of the patent laws. The novelty requirement is easy to satisfy: your invention must be different from what is already known to the public. Any difference, however slight, will suffice. Novelty, however, is only one small hurdle to overcome. In addition to being novel, the examiner must also be convinced that your invention is "unobvious." This means that at the time you came up with your invention, it would have been considered unobvious to a person skilled in the technology (called "art") involved in your creation. As we'll see in Chapter 5, unobviousness is best shown by new and unexpected, surprising, or far superior results, when compared to previous inventions and knowledge ("prior art") in the particular area you're concerned with. (In addition to being novel and unobvious, utility inventions must also be "in a statutory class" and useful. More on this later.) Continue... Excerpted from Patent It Yourself by David Pressman Copyright © 2002 by David Pressman Excerpted by permission. All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher. Inventor's Commandment #1 Prior to deciding how to proceed with any creation, you should learn and be familiar with the various forms of intellectual property, including utility patents, design patents, trademarks, copyright, trade secrets, and unfair competition, so that you will be able to select and employ the proper form(s) of coverage for your creation. Important Definitions While these definitions may seem elementary, I provide them here so that you will know exactly what I mean when I use these terms later. An invention is any new article, machine, composition, or process or new use developed by a human. A patent application is a set of papers that describe an invention and that are suitable for filing in a patent office in order to apply for a patent on the invention. A patent is a grant from a government that confers upon an inventor the right to exclude others from making, using, selling, importing, or offering an invention for sale for a fixed period of time. The Life of an Invention Although most inventors will be concerned with the rights a patent grants during its monopoly or in-force period (from the date the patent issues until it expires (20 years after the filing date)), the law actually recognizes five "rights" periods in the life of an invention. These five periods are as follows: 1. Invention Conceived but Not Yet Documented: When an inventor conceives of an invention, but hasn't yet made any written, signed, dated, and witnessed record of it, the inventor has no rights whatsoever.
