The Patent Zone

So you’ve got a product or an idea for a product. You are sure there is a market and there is a well-founded concern someone will steal the idea and run with it if it is not protected legally. You have just entered the patent zone. Well, maybe not just yet….

A patent is essentially a form of protection under the law to ensure that no one else can make, use or sell a product without the permission of the patent owner.

Having an idea about exactly what it is you want to patent is obviously a necessary first step. But what if someone else already had the same idea—and it has already been patented?

Round 1

This is the time to conduct a patent search to make sure someone else has not already come up with “your” unique idea. Part of doing the homework involves thinking critically about what separates your idea from similar inventions, if any are known to exist. If it passes that test, and if your idea is truly different, it will be necessary to complete an application with the U .S. Patent and Trademark Office.

Round 2

Outside of a trusted advisor and/or confidant, a patent examiner at the U .S. Patent and Trademark Office will likely be the first person you contact about your idea during a review process. As the title suggests, a patent examiner evaluates the specifications of a product to determine whether they do or do not overlap with patents granted to previous inventions, or if the idea is indeed unique enough to be patentable in the first place. The examiner will likely send an applicant a list of items in the application that should be clarified or, in some instances, changed. At this point, it is possible to either argue the point(s) or modify the application to address the examiner’s concerns.

Assuming everything checks out with the review process, the product may be granted a patent. In the United States, the lifespan of a patent may range from 14 to 20 years, depending on type.

It’s not uncommon even for an inventor who has been through the process already to hire a patent agent or attorney to help guide him or her through the process and to argue for them on point(s) contained on a rejection list. If you have made it through Round 1 and you are looking to making it through Round 2, it is a good idea to know the ropes or consider the advice of someone who does.

Provisional vs. Non-provisional Patents: The Difference

For someone who is looking to protect an invention for up to a year at minimal cost in order to test the commercial waters, it may be worth looking into a provisional patent application.

For example, an inventor may well want to seek out prospective manufacturers for an invention to license for royalties before investing in a non-provisional patent, which can be much more costly.

Non-provisional Patents

A non-provisional patent application is what most people think of when they think of the “patent” concept. Such a patent can be of either a “design” or a “utility” type. Before going further, it is important to note that a provisional patent application is not valid with “design”-type materials; a provisional patent application can only be filed for inventions of the “utility” type. In broad terms, a “utility patent” protects the way an article is used and works, while a “design patent” protects the way an article appears.

Applying for a non-provisional patent establishes a filing date and it initiates the review process by the United States Patent and Trademark Office (USPTO).

Provisional Patents

A provisional patent application provides temporary protection for up to year from the date of filing. It also establishes a filing date, but it does not initiate the review process by the USPTO—an important distinction to keep in mind should the inventor wish later to file a non-provisional patent application.

Patent Pending

As mentioned above, a provisional patent is less expensive than a non-provisional patent and it allows the inventor a year’s time in which to market and/or develop an invention using the familiar term “patent pending”. In addition, a provisional patent application does not require the patent claims, a major component of a non-provisional patent application.

As can be presumed from the lack of a review by the USPTO, a provisional application does not automatically become a regular patent 12 months after the date it was filed. In order to obtain a non-provisional patent, an inventor is required to submit the appropriate application within one year of the date a provisional patent application was filed in order to use that same filing date.

A provisional patent application is typically less involved than a non-provisional application, and may include as little as a cover sheet, the name of the inventor and some bibliographic information, a description of the invention (here, invention claims are not necessary),  a drawing if it is necessary to understand the invention, and a filing fee.

A provisional patent application can be useful when a fairly quick and inexpensive form of legal protection is desired.  Compared to a non-provisional patent application, a provisional patent application can be put together and submitted with less effort and expense, while effectively buying an inventor more time in which to develop the product and determine how it might be marketed.

Enter the “Patent Troll”

With all the innovation the Internet promises, perhaps it should come as no surprise that some of the very concepts and slang used by techies and self-proclaimed “hackers” should find their way to the business of invention and patent protection.

The Obama administration recently has made headlines with a list of legislative priorities and executive actions in response to what has increasingly been viewed as a source of frivolous lawsuits, extortionate settlements and license fees, and a general roadblock to innovation—the non-practicing entity (NPE), also known more colloquially as the patent troll. Such companies buy up patents, sometimes whole portfolios of them, with no intent to manufacture or use the patented invention, per se. Instead, the purpose is to bring suits against any companies that might appear to be infringing on the patents the NPE owns.

Since 2011, when the Leahy-Smith America Invents Act (AIA) was passed, the number of patent applications has gone up. Among other innovations, the AIA changed the system of patent award from a “first to invent” to a “first inventor to file” model.  Another change made by the AIA is the courts play the main role in determining damages. And, since the AIA passed, there has been a marked increase in the number of NPEs established.  Sheer coincidence seems unlikely.

For its part, the U.S. Justice Department is beginning to look seriously at whether NPEs are disrupting competition in a number of industries, hi-tech perhaps having the highest profile.  Not surprisingly, other industries have been brought into the fray, too, from manufacturing to retail, making the issue one to be watched closely in the months ahead.

Qualifications for a Business Method Patent

Have you developed a unique online ordering process or an innovative Internet advertising plan? Then, you may be able to get an Internet patent.

An Internet patent, also called a business method patent, combines the use of software or the Internet with business methodology. Unlike a mechanical invention which is an actual physical object, a business method is a process or a sequence of actions used to complete a specific task or produce a specific product or service.

If a company obtains a business method patent, then they can stop other companies from using the patented business method for about 17 years. Or, a patent owner can charge others a fee to use it.

In order to qualify for a patent, the business method must meet four requirements.

The method or software must be:

  • Patentable – It cannot be a law of nature, a natural phenomenon, an abstract idea, or a general concept.
  • Useful – in other words, it must provide a concrete, tangible result.
  • Novel or different in some way from previous methods or software. Plus it cannot have been used publicly or written about in a published document.
  • Non-obvious – that is, it would not be obvious to someone with ordinary skills in the technical arts.

Want some more clarification on the qualifications for a business method patent, feel free to contact us at Brannon Sowers & Cracraft PC.

Intellectual Property and Business: When Knowing Isn’t Enough

In a world that makes accessing information seem effortless, protecting intellectual property can be seem like a full time job.

While it might seem a like fairly modern concept, the term intellectual property has been recorded as early as 1845, according to Merriam-Webster’s Collegiate Dictionary. There it is defined as “property (as an idea, invention, or process) that derives from the work of the mind or intellect” but also “an application, right, or registration relating to this.” Some scholars say the concept extends much further back in history, but today it has been cast into the spotlight as the ease and speed of transmission of data on a global scale make protecting proprietary information more important than ever.

In modern practice, intellectual property is something of an umbrella term that covers inventions, literary and artistic works, symbols, names, images, and designs used for business purposes. More broadly, this can be any proprietary intangible asset that has value.

Intellectual property is broadly divided into two main areas: 1) industrial property, which includes inventions, trademarks, and designs; and 2) copyright, which includes literary and artistic works such as writing, photographs, and architectural designs. Legally defined categories of intellectual property in the United States include patents, copyrights, trademarks, and trade secrets.

Intellectual property rights in the form of patents typically grant the originator an exclusive right to the use of the creation for a certain period of time.

Copyrights do not protect ideas, but they do protect how they are expressed.

Trademarks are used to protect names and identifying marks of products and/or businesses. Trademarks are aimed distinguishing competitors from each other in an easily recognizable way.

Trade secrets refer to formulas, patterns, devices or bodies of data that give the user a competitive advantage.

While intellectual property is afforded these protections under U.S. federal and/or state laws, it is not always afforded the same level of protection internationally. This can mean the loss of proprietary information by means of theft and/or unauthorized duplication that can be detrimental to any organization, whether or not it does business internationally. The issue of safeguarding intellectual property across borders remains hotly debated and is often associated with losses of competitive advantage and incentives to innovate that are often seen as the underlying basis for intellectual property rights.

What Constitutes a Trade Secret?

Trade secrets are protected under a number of state, federal, and in some instances, international laws. They are a form of protection that exists largely as long as the information remains a secret.

Merriam-Webster’s Collegiate Dictionary defines a trade secret as “something (as a formula) which has economic value to a business because it is not generally known or easily discoverable by observation and for which efforts have been made to maintain secrecy.”

In practice, a trade secret could be any information used in a business that may represent a competitive advantage. Trade secrets could be the use of a certain method of producing a good or a method of providing a service, such as a recipe or a computer algorithm. Trade secrets are treated in such a way as to reasonably keep the public or competition from learning about them, unless they are improperly acquired, such as by means of a violation of a non-disclosure agreement or by theft.

One advantage of trade secrets compared to other forms of protection is that they are potentially longer lived. A patent, for example, is typically granted for a period of 20 years, while copyright protection, though it may be extended for decades longer, is not forever.

For example, a patent protects against the unlicensed use of the patented device or process even by someone who might discover it on his or her own. In essence, it is a limited form of monopoly awarded to the inventor. However, when a patent is registered and issued, any secrecy is lost.

A trade secret can be something that is patentable, but it does not necessarily have to be.  The novelty that is necessary for a patent to be issued is not required for something to be deemed a trade secret. For example, it is possible for other people to know of a trade secret who have discovered the same process or formula by independent means.

Unlike other forms of intellectual property, such as patents, copyrights, and trademarks, a trade secret does not have to be registered with the government. Rather, trade secret security is a matter of keeping the information confidential. Who is allowed to know of a trade secret is at the discretion of a business owner, so it might be shared with employees or board members who have been directed not to disclose the information.

If the trade secret is revealed in breach of a non-disclosure agreement, it may be possible to sue for damages. However, once a trade secret is revealed, it may not be possible for it to become a secret once more.

Interesting Article: 10 Patents That Make Simple Tasks Crazy Complicated per Popular Mechanics

In our years in business, we have seen our share of some interesting patent requests – some have become patent applications. Popular Mechanics came up with a slideshow of 10 such patents that make you go “really, they patented that?” or at least make you laugh a bit.