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.

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.

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.


Five Critical Steps to Protecting Your Intellectual Property – Part 1

In one of our latest blog posts, the second of a two-part series, we described how to know when you need an Intellectual Property (“IP”) attorney to legally shield your great idea. This time, we’ll look into the action steps that are critical to this undertaking. As stated previously, don’t take shortcuts when it comes to your ambitions. If you’re serious about bringing your IP to the next level and protecting your innovation or invention, taking the necessary steps are invaluable to save months or even years of creative energy going unfulfilled.

1. Learn all you can on the topic of IP: A simple Google search can provide you with a wide array of information on the topic. There are legal references and publication resources specific to IP. Research and take notes on the different types of legal safeguards and write down any questions you formulate along the way. You’ll need to be familiar with the type of protection that is appropriate for your invention and your industry (copyright, trademark, etc.).

2. Get all contracts and non-disclosure agreements in order: If you are a business owner or you have a partner who was intimately involved with the creation of your IP, it is critical to have all agreements in place. Not only partnership agreements, but thorough and specific non-disclosure and non-compete agreements for your employees. Although it is implied, it stands repeating that if your deal fairly and honestly with partners and co-inventors from the beginning, you’ll lessen the chance of legal action against you in the future. Give credit where credit is due. Follow the Golden Rule.

In our next post, we’ll conclude with the final three steps – one of which will make or break the process, yet many inventors fail to take into account.