Registered Patent Agent - Robert M. Hunter on Patents

_{You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?}
	Robert M. Hunter, Ph.D. Registered Patent Agent WebPatent.com

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INVENTOR'S GUIDE

by Robert M. Hunter, Registered Patent Agent

Table of Contents

INTRODUCTION

Intellectual property is intangible personal property developed by the creative exercise of the intellect. In a knowledge-based economy, intellectual property has become the single most important asset an organization can possess. Rapid technological change, rising global competition and falling trade barriers have focused attention on the importance of intellectual property protection.

This document web provides in-depth information about intellectual property protection, in general, and invention evaluation and disclosure and technology management, in particular. In an introductory section, available types of intellectual property protection (IP) are described and IP strategies and procedures are explained. Next, invention evaluation procedures are described and "how to" information on preparing each type of invention evaluation document is presented. In a subsequent section, invention disclosure procedures are described and "how to" information on preparing each type of invention disclosure document is presented. Finally, technology management functions are explained.

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INTELLECTUAL PROPERTY PROTECTION

Intellectual property is most valuable to its owner(s) when it can be protected. That is, value of intellectual property is maximized when the owner(s) can prevent others from using the property without permission. Because intellectual property is intangible, its owner(s) cannot build a fence around it as with real estate or place it in a bank vault as with currency. To address this quandary, governments have created a variety of forms of intellectual property protection. In this section, the types of intellectual property protection are described and strategies and procedures for using these protections are outlined.

Types of Intellectual Property Protection

Different ways to protect intellectual property have developed because there are different types of intellectual property. Even with intellectual property of the same type, businesses have found that they need multiple ways to maximize the value of the property in order to offset some of the risks of investing in its development. In this section, some of the more common types of intellectual property protection are described, including patents, plant variety, trade secret, copyright, semiconductor mask work, trademark and trade dress.

Patents. A patent is a right, granted by a government or quasi-governmental authority, to exclude others from making, using or selling an invention within a certain jurisdiction for a limited period of time. A patent does not give its owner the right to make, use or sell a claimed invention because practicing one's own invention may infringe the claims of a prior-issued patent that has not expired.

In the U.S., three types of patents are available, a utility (or technology) patent, a design patent and a plant patent. A utility or technology patent can be used to protect a new technology and is in effect for a period of 20 years from the filing date of the patent application on the invention. A design patent can be used to protect the visual characteristics or aspects displayed on an object for a period of 14 years from the issue date of the patent. A plant patent or a utility patent can be used to protect a plant that its inventor has reproduced asexually (i.e., by means other than from seeds) for a period of 20 years from the filing date.

Patent Partner supports the preparation of applications for several types of utility or technology patents. One is a provisional U.S. patent application. A provisional U.S. patent application is used to establish priority of invention (i.e., a priority date) in a way that preserves the right to file subsequent, regular patent applications in the USPTO and/or many other national and/or regional patent offices, as well as the right to file an international application, within one year of the filing date of the provisional application. A second, a regular (nonprovisional) U.S. patent application, is used to obtain patent rights in the U.S. and its territories. A third, an international patent application filed under the Patent Cooperation Treaty (PCT), provides for searching and (optionally) preliminary examination of the application before the substantial costs of filing regular patent applications in multiple national and/or regional patent offices are incurred. Filing of a PCT application also allows national and/or regional filings to be delayed at least 20 months and up to 30 months after the priority date of the application.

The position of the USPTO on this issue is described in the following sections of the Manual of Patent Examining Procedure (MPEP):

MPEP 201 - Types of Applications
MPEP 601 - Content of Provisional and Nonprovisional Applications
MPEP 1801 - Basic Patent Cooperation Treaty (PCT) Principles

A second type of patent granted to inventors in the U.S. is a design patent. The subject matter of a design patent is the configuration or shape of an object or the surface ornamentation of an object, or both. A design patent may be used to protect computer-generated icons, such as full screen displays and/or individual icons. The USPTO requires that the drawing(s) in a design patent application for a computer-generated icon show the icon on a computer screen, monitor or other display panel.

The position of the USPTO on this issue is described in the following sections of the Manual of Patent Examining Procedure (MPEP):

MPEP 1502 - Definition of a Design
MPEP 1504.01 - Statutory Subject Matter for Designs

The following are examples of design patents:

Automobile, U.S. Patent No. Des. 305,624
Dial Top - Housing for Telephone Handset or Similar Article, U.S. Patent No. Des. 315,907

A third type of patent granted in the U.S. to inventors is a plant patent. A plant patent protects asexually-propagated plants. Such plants are reproduced by such means as the rooting of cuttings, or by layering, budding, grafting, inarching, etc. The plant patent grant gives the patentee the right to exclude others from asexually reproducing, selling or using the patented plant.

The position of the USPTO on this issue is described in the following sections of the Manual of Patent Examining Procedure (MPEP):

MPEP 1601 - Introduction: The Act, Scope, Type of Plants Covered

Plant Variety. In the U.S., novel varieties of sexually reproduced plants can be protected under the Plant Variety Protection Act (7 USC 2321). Sexually reproduced plants are those reproduced by means of seed. Fungi, bacteria and first-generation hybrids cannot be protected under the Act. The Act is administered by the U.S. Department of Agriculture. Infringement of plant variety protection consists of performing any of a number of acts without the permission of the owner of the plant variety, including offering for sale, selling, importing, exporting and sexually multiplying the novel variety as a step in marketing. The owner of a novel variety, after filing an application for protection, may label the container of seed of the novel variety "Propagation Prohibited" or "Unauthorized Seed Multiplication Prohibited". Protection expires 18 years from the issue date of the certificate of plant variety protection.

Trade Secret. A trade secret is generally defined as any proprietary or confidential formula, pattern, device or compilation of information used in one's business and that has commercial value or that provides its owner with a competitive advantage. The subject matter of a trade secret must be sufficiently secret that use of improper means is necessary to acquire it. It must also be new, but need not be patentable. Thus, business and financial information may be protected as trade secrets. Manufacturing processes are often amenable to trade secret protection.

Trade secret protection is automatic and lasts until the subject matter enters the public domain. However, a competitor may use legal means (e.g., reverse engineering) to independently discover the secret, which he may thenceforth legally use. Trade secret protection and patent protection are incompatible, particularly in the U.S., where disclosure of the "best mode" of an invention is required. Laws concerning trade secrets are not federal statutes, but are based on prior cases and a long tradition in the common law. Some states, however, have enacted specific trade secret legislation. Like other personal property, trade secrets may be sold, licensed or otherwise transferred.

Copyright. A copyright can be used to protect original works of authorship that are fixed in any tangible medium of expression. Thus, literary works (like this one), music, sound recordings, architectural and engineering drawings, pictures, photographs, paintings, graphical images, sculptures, jewelry, and computer software are amenable to copyright protection. A copyright protects how the subject matter is expressed, not the idea itself or how the described subject matter functions. The subject matter must be "novel" to the extent that it must not have already been placed in the public domain and, thus, dedicated to the public. In the U.S., both a copyright and a design patent may be used to protect the ornamental features of an article.

In the U.S., registration of copyrights is under the jurisdiction of the U.S. Copyright Office. (As the U.S. Copyright Office will generally refuse copyright registration of a work that has been published in a patent, copyright protection should be sought prior to patent protection.) In general, the duration of copyright protection for a work created by an individual is the author's life plus 50 years. For works in which the author is a business entity, the duration of the copyright is 75 years from (publication) registration or 100 years from creation, whichever is shorter. In the U.S., a copyright notice is no longer required on works published after March 1, 1989, however, posting of copyright notices is still widely practiced, particularly if protection is desired in other countries.

In contrast to a patent, a copyright cannot be used to exclude one who has independently created a work from using it. A copyright can only be used to prevent copying of the work of another. Moreover, the copyright laws contain a variety of exceptions to copyright infringement. For example, the fair use exception allows copying of a work for teaching, research, criticism and news reporting.

Semiconductor Mask Work. Mask works are used in the creation of the different layers that collectively make up the electronic circuitry of a semiconductor chip. Thus, mask works function as a kind of "stencil" in the process of chip manufacture. In the U.S., mask work protection can be used to protect original mask work designs under the Semiconductor Chip Protection Act (17 U.S.C. 901 et seq.). A mask work owner has the exclusive right (which he may grant another) to reproduce the mask work and to import or distribute semiconductor chips that embody the mask work. The protection attaches to the work when the work is registered with the Copyright Office or when it is commercially exploited. Unlike a patented item, a mask work may be copied for the purpose of analyzing and reverse engineering it. The results of a reverse engineering effort may legally be incorporated into subsequent, original mask works.

Trademark/Service Mark. A trademark is a word, phrase, name, picture, shape, symbol or device or any combination thereof, that identifies the source of origin of goods. A service mark is similar to a trademark except that it is used to identify the services performed by an organization. Trademarks and service marks must be capable of distinguishing the goods or services that bear the marks from those of competitors. The marks (in total or in part) typically do not (but may) consist of a company's name.

Trademark and service mark rights give their owners the right to exclude others from passing off or selling goods or services identified by the marks. Ownership rights in trademarks and service marks are created by use of the marks. Additional legal rights (e.g., enforcement) can be obtained by registration of the mark with the USPTO, and, to a lesser extent, by obtaining state registration. In the U.S., a trademark or service mark can also be the subject of design patent protection (or, if functional, utility patent protection).

Trade Dress. In the U.S., Section 43(a) of the Lanham Act (15 U.S.C.1125(a)) provides a means for using the federal courts to prevent unauthorized imitation, and this includes trade dress protection. Trade dress protection can be used to protect the look or image of a product's packaging or that of the product itself. In order to support a showing of trade dress infringement, the product's trade dress must be shown to be inherently distinctive, or the trade dress must be distinctive through acquisition of secondary meaning identifying the source or brand of the product. In addition, potential customers must be likely to be confused by the trade dress of the allegedly infringing product. Trade dress features may not be "functional" in that the functional aspects of products are required to be used by all competitors to maintain competition in the marketplace and cannot be protected. It is possible, however, for a product to be patentable and for a "nonfunctional" feature of the product to be used as a basis to obtain trade dress protection.

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Intellectual Property Protection Strategy

A number of factors must be considered in formulating a strategy for implementing intellectual property protection. Such factors include the nature of the property, timing, cost and business models.

Certain types of intellectual property are more amenable to certain types of intellectual property protection than others. As was noted above, in some situations, technology can be protected with utility patents, trade secrets, design patents, trademarks and even trade dress. Trade secret protection is particularly appropriate for protecting easily-guarded processes in which reverse engineering of the process by disclosure of the product is not feasible. While in the U.S., concurrent use of patent protection and trade secret protection is not usually possible because of the "best mode" disclosure requirement in U.S. law, this combined strategy can be used in jurisdictions that do not have such a requirement, such as the European Patent Office jurisdiction. Plants, depending on how reproduction occurs, can be protected with a plant patent or a utility patent or as a plant variety. Ornamentation and computer-generated icons can be protected with a design patent or a copyright, and, in some instances, trademarks or trade dress can be used. Service marks are appropriate for protecting service businesses. Mask works and utility patents are appropriate for protecting semiconductor chip designs.

Timing is also an important factor to consider. Patents, for example, are more appropriate for property with a relatively long expected economic life. Because obtaining patent protection in many jurisdictions can take two years or longer, securing patent protection for some technologies, such as short-lived computer software, is problematic. Copyright, trademark or even trade secret protection might be more appropriate in such situations.

In some cases, however, the time delays associated with obtaining patent protection can work to the advantage of the innovative organization. After a patent application has been filed (in the U.S. after the filing receipt has been received from the USPTO), products embodying the claimed invention can be marked "Patent Pending" for as long as the application is actually pending in the Office. It is illegal to mark a product "Patent Pending" if that is not the case. Because, in the U.S. patent applications are maintained in confidence by the Office until a patent issues, the "Patent Pending" label can be used to engender FUD (fear, uncertainty and doubt) in competitors, who might otherwise decide to immediately start developing a rip-off product. Furthermore, under the Paris Convention, filing a U.S. patent application establishes a priority date for an international and certain non-U.S. patent applications that may be filed within one year of the U.S. filing date. Such patent applications are not published until 18 months after the priority date. Thus, the mere possibly that such non-U.S. patent applications might be filed can act as a deterrent to non-U.S. competitors. Likewise, not filing such non-U.S. applications can make it impossible for competitors to determine what the claims might cover until the U.S. patent issues.

In the U.S., in certain situations, long strings of related (continuing) patent applications can be used to delay disclosure of inventions, although this strategy is strongly discouraged by the USPTO. After an original filing, subsequent related (continuation, divisional or continuation-in-part) applications are filed during the pendancy of the original application. Subsequent filings are made during the pendancy of the second generation of applications, and so on and so on. In that final rejections of certain related applications can be made in the first Office action and the term of any patent that issues from the related applications can now extend no more than 20 years from the filing date of the original application, this strategy has practical limits.

Cost is another important consideration. While the cost of obtaining and maintaining patent protection in the U.S. is relatively low, typically costing several thousands to several tens of thousands of dollars, the cost of enforcing a patent can be significant. It is not unusual for a patent infringement lawsuit to cost hundreds of thousands or millions of dollars to prosecute, with the infringer winning about 20 percent of the time in the U.S. and Europe. The cost of applying for non-U.S. patents (using a U.S. patent as a priority document) can range from several thousands of dollars per country to twice that, depending on the cost of interpreting the application into the official language of the patent office.

If patent protection is likely to be sought in multiple countries, including the U.S., a variety of strategies can be used to delay expenditures. One common strategy is to first file a provisional application in the U.S. followed by filing both a regular (nonprovisional) U.S. patent application and an international patent application under the PCT that designates all countries and/or regions (possibly, including the U.S.) in which patent protection might be desired within one year of the filing date of the provisional application. If a demand for preliminary examination of the international application is filed within 19 months of the priority date, the cost of filing in national patent offices can be delayed until up to 30 months after the priority date.

The business model to be used in capturing the value of the property is another factor to consider. Manufacturing businesses, particularly those operating in technically crowded fields, often protect improvement inventions with patents that can be used as bargaining chips in cross-licensing arrangements wherein both parties to the arrangements get access to certain of each other's technologies. Multiple improvement patents can be used to surround a pioneering patent with a portfolio that is worth more in total than the individual parts are worth alone. If the pioneering patent and the improvement patents are owned by different parties, cross licensing can be necessary before either party can proceed. Patents are the preferred mode of protection over trade secrets in situations where termination of a licensing arrangement is a strong possibility because trade secrets can be more difficult to take back. Universities and small technology-based firms often use patent protection in situations in which royalty income is the objective. In many situations, patents need not be obtained in all the jurisdictions in which monopoly is sought because patents in the jurisdictions that either effectively control manufacturing resources or a sufficient market share to make competition uneconomic may be all that is required.

The key to optimizing an intellectual property strategy is to understand where the potential value of the property lies and to focus on protecting that value in a cost-effective manner. Depending on the value and the resources available to the organization that owns it, it is often appropriate to use a variety of types of protection. Because utility (technology) patent protection is often a part of such strategies, the steps in securing patent protection are discussed in the next section.

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Steps in Securing Patent Protection

If use of patents is considered an appropriate intellectual property protection strategy, an understanding of the tactics of the process is necessary. Because obtaining a high-quality, valuable patent can involve a substantial investment of time and money, it is important that the process proceed in a logical manner. How Patent Partner supports each of the steps in that process is described below.

The first step in the process involves keeping records that document (i.e., provide evidence that could be used to prove) when inventions were conceived (the mental step in invention) and how they were reduced to practice by either building and testing the invention in the U.S. or by filing a complete patent application on the invention. In general, these activities should be recorded by the inventor(s) in a series of bound notebooks and (at appropriate intervals and at critical junctures) contemporaneously read, discussed and signed (witnessed) by a technology manager or someone else who is not an inventor, but is capable of understanding the invention and the activity. Patent Partner supports the documentation of these activities in the Important Events element of the Complete Invention Disclosure. Technology managers can control access to invention information stored in Patent Partner's databases using its Access Control functionality.

The second step in the process is invention "triage." The word triage is normally associated with the sorting and allocation of limited medical treatment resources to battle casualties and disaster victims. (If you remember the television program MASH, triage was what occurred on the helicopter landing pad.) Because, in innovative organizations there are always more inventions than money and time, triage is important in technology management. In Patent Partner, completion of a Discovery Report by the inventor(s) and its analysis by the technology manager is the first step in invention triage. After the technology manager understands what the invention is for and why it is better than what is out there now, potential customers can be contacted to confirm the information in the report.

Hopefully, the assessment of the novelty of the invention presented in the Discovery Report is based on at least a preliminary search of the patent and non-patent literature. In any event, Patent Partner explains how to conduct both a preliminary search or a detailed search and provides links to search resources available on the Web in its Patent Search module. If a preliminary search suggests that the invention is novel, an evaluation of the commercial potential of the invention is conducted as is described later in this document web.

If preliminary assessments indicate that the invention is likely to be novel and likely to be valuable, a detailed search should be conducted, preferably in conjunction with the conduct of a patentability evaluation. Patent Partner supports the conduct of patentability evaluations under both U.S. and international (PCT) rules. The patentability evaluations can inform the search activity by explaining rules about such critical concepts as "anticipation" and "obviousness." Alternatively, if the search is to be done by someone other than the inventor(s), Patent Partner supports the preparation of a provisional (U.S.) patent application which contains the minimal information a person other than the inventor(s) would need to search the "prior art."

If the invention appears to be valuable and patentable and U.S. Government funds were used in making the invention (e.g., the invention was created or first actually reduced to practice during the performance of a Government grant or contract award), a Complete Invention Disclosure should be prepared using Patent Partner's Disclosure module and filed with the awarding agency or department. Tracking of this filing and other milestones associated with invention reporting to research sponsors are supported by the Technology Management module of Patent Partner. Before a patent application is filed (either a U.S. patent application or a PCT application that will serve as the priority document for a subsequent U.S. patent application), each alleged inventor should prepare an Inventorship Evaluation using Patent Partner's Evaluation module. Technology managers can coordinate the evaluation and disclosure activities of inventors using the Action Notes functionality in Patent Partner.

In the Technology Management section of this document web, information on how to select and work with patent professionals (patent agents and patent attorneys) is presented. Depending on the preference of the patent professional who is responsible for preparation and filing of the patent application(s), disclosure of the invention to him/her can be by means of either or both a Complete Invention Disclosure (question and answer format) and/or a draft patent application. Patent Partner's Disclosure module supports preparation of the following draft patent applications: Provisional (U.S.) Patent Application, Regular (U.S.) Patent Application and International Patent Application. The patent professional should also receive a copy of the appropriate patentability evaluation and the inventorship evaluation(s) prepared by the inventor(s). If copyright protection is desired on a work (e.g., computer program listing) that is disclosed in a patent application, it should be sought before the PCT application (or other non-U.S. application) is published or before any patent issues.

If patent protection is going to be sought in countries other than the U.S., information about "how to make" and "how to use" the invention should be maintained in confidence at least until the filing of a priority patent application. Maintaining enabling information about the invention in confidence for a longer period can be critical if the invention is a pioneering one that requires further development or if confidentiality provides some other competitive advantage to the invention's owner. If an invention is made in the U.S., either a foreign filing license must be obtained from the USPTO (or an applicant must wait 6 months after filing a patent application in the USPTO) before a non-U.S. (foreign) patent application is filed or before a non-U.S. utility model, industrial design or model is registered that discloses the invention. Every patent application filed in the USPTO is considered to include an implicit petition for such a foreign filing license. Granting of the petition is indicated by the presence of the phrase "Foreign Filing License Granted" on the filing receipt sent to the applicant by the USPTO. An international application may be legally filed with the U.S. Receiving Office before a foreign filing license is granted by the USPTO. The USPTO can refuse to grant or invalidate a U.S. patent on an invention made in the U.S. if a non-U.S. patent application is filed without a foreign filing license that discloses the subject matter of the invention.

The position of the USPTO on this issue is described in the following sections of the Manual of Patent Examining Procedure (MPEP):

MPEP 140 - Foreign Filing Licenses
MPEP 1832 - License Request for Foreign Filing Under the PCT

Inventors and technology managers are involved in a variety of activities during the prosecution of patent applications and during the terms of the patents that issue from them. The assistance of inventors is required in the negotiations with the patent offices that occur during patent prosecution. Technology managers are involved in invention reporting to research sponsors and in other administrative tasks. Patent Partner supports these activities in the Technology Management module.

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