A patent for an invention (something useful, unique and non-obvious) is the grant of a property right to the inventor, issued by a government or an authorized multi-national agency.
The patent rights include the right to exclude others
Unlike copyrights and trade secrets, independent creation is NOT a defense to a claim of infringement.
Patents are considered the strongest form of intellectual property
Patents = The Right to Exclude Others
A patent gives the owner the right to exclude others from making, using, offering for sale, selling, or importing the invention. Note, this is NOT the right to make the invention.
This right is only valid in the country that issued the patent.
The patent owner may authorize others to use his/her property right under certain conditions. These are called patent licenses.
The term of a new patent is usually 20 years from the filing date of the patent application.
Not enforceable until the application issues into a patent.
Patents – What Kinds Are There?
– Protect functional use or functional structure
Other Types of Patents
– Design patents – how products “look“, their ornamental design, apart from utilitarian/functional features
– Plant patents – grafting or genetic alteration
Provisional “Patent“ Application
– Not itself an enforceable patent, as such, but allows claim of “patent pending”
– Not examined, expires in one year, only as good as technical disclosure, but may establish an early filing date
Non-Provisional Patent Application
Examined and granted as the standard enforceable 20 year patent
Patents – Why file a patent application?
→ Create a defensive portfolio and thereby create cross-license opportunities
→ Create design freedom for technical staff
→ Increase business valuation – US and abroad
→ Create obstacles for competitors
→ Create licensing assets for potential revenue
→ Create an offensive portfolio for patent enforcement
→ Open monopolies with patent leverage
→Obtain recognition in a technology area
→ Maintain ownership of employee designs
Patents – What ideas to file on?
Protect features which distinguish a product in the marketplace.
→ Patents should be sought for ideas which give products a technological or other competitive advantage over competitors.
Protect ideas which are easily identifiable.
→ It is important to have patents for inventions which, when embodied in a third party’s product, can be readily identified or that can be easily determined through reverse engineering.
Protect ideas that have a relatively long product life (greater than 2 years).
→ A patent will take approximately 2-4 years to issue and is not enforceable until then.
Do not discount “business method” patents.
→ Amazon’s “One-Click” patent. Obtained injunction against B&N and forced them to redesign their site.
→ Priceline.com obtained a patent on on-line reverse auctions. Suit filed against Microsoft in late 1999.
→ FantasySports.com obtained patents for on-line fantasy football games. Suit filed against Sportsline.com, Yahoo, ESPN, and others in late 1999.
Patents – Legal Requirements
⚆ Statutory – The invention must fit one of the legal categories of protectable inventions (e.g., a mechanical device, a machine, a compound, a composition of matter, a method/process, or software apparatus/system)
⚆ Novel and Useful- The invention must be useful and new or novel (e.g., no one else has, before certain prescribed dates, either patented, used, sold or otherwise publicly disclosed the invention which is sought to be patented)
⚆ Non-Obvious – The invention cannot be “obvious” to persons of ordinary skill in the relevant field of technology, when viewed in light of knowledge such persons would ordinarily have
⚆ Not Abandoned – The inventor has not somehow abandoned the invention
Patents – Business Criteria
→ NEW / NOVEL
→ NOT OBVIOUS
→ Business Value > Something competitors likely to copy? > How significant if we could stop them?
→ Detectable > would we be able to detect whether a competitor is using the invention?
→ Policy > better to keep as trade secret?
→ Longevity > will the feature/concept become obsolete soon?
Patents – Time Element
PATENT RIGHTS FOR AN INVENTION ARE FORFEIT IF A PATENT APPLICATION IS NOT FILED ON THE INVENTION WITHIN ONE YEAR OF THE EARLIEST OF:
⚆ first printed publication or patent issued (anywhere in the world) in which the invention was described
⚆ first sale or offer for sale in the United States
⚆ first public use in the United States
Patents – Time Element
→ 12 month grace period
→ Not publicly disclosed/used more the 12 month before filing date
→ Not sold/offered for sale more that 12 month before filing date
→ Patent rights accrue to the ‘first to invent’
→ NO 12 month grace period
→ Not publicly disclosed before filing date of patent application
→ BUT sale/offer for sale does not necessarily = public disclosure
→ Patent rights accrue to the ‘first to file’