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Ideas & Inventions

Ideas & Inventions

For an inventor to protect an invention from unauthorized use by others the invention needs to be patented.

Not all invention which are the subject of a patent application will be granted a patent. It is

only when an application is granted as a patent that the inventor can prevent others from making or

using the invention. Note that an idea per se is not patentable, only an invention that embodies the

idea. For example, “increasing fuel efficiency” is not patentable, but a specific engine configuration

which increases fuel efficiency is patentable.

Establishing a Filing Date

An inventor establishes a filing date by filing an application at the patent office and paying the required

fee. The application includes a written description of the invention. It is often appropriate to include

drawings which clearly illustrate the invention. The description should explain how the invention works,

provide examples of how it might be used and describe results of any experiments that have been

performed. The description must be sufficiently detailed to allow one of ordinary skill in the art to make

or use the invention without undue experimentation. Since the amount of experimentation that might

be considered undue is difficult to gauge in advance, it is wise to include as many details as possible,

while stressing that the details are provided as examples only. If you are filing a provisional patent

application (PPA) that is all that is required. If you are filing a utility application, you need to add an

ordered set of claims at the end of the application. The claims, if granted, will determine the scope of

protection provided by the patent. The difference between a PPA and a utility application is described in

greater detail below.

Keeping Your Idea Confidential

One way for an inventor to protect an invention against unauthorized use by others is to keep the idea

secret. In some cases, keeping the invention secret provides a long term solution. This strategy is known

as “trade secret protection”.

In other cases, keeping the invention secret is not practical. If it is necessary for you to disclose your

invention to another person you have two options. One is to establish a filing date as described above.

The other is to sign a non-disclosure agreement (NDA) with the person/company to whom you are going

to reveal your idea before you share it with them. The NDA should specify that the person/company

agrees to keep the idea confidential and not to make any use of the idea without the permission of the

inventor. An NDA offers a different type of protection than a patent. If an NDA is violated and there is a

lawsuit, the suit is about breach of contract, as opposed to patent infringement.

In many cases the person/company you want to negotiate with is unwilling to sign an NDA. In such

cases, establishing a filing date is a unilateral step you can take to protect your rights.

In some cases the person/company you want to negotiate with will ask you to sign a waiver of

confidentiality agreement. You should consult with an attorney before signing such an agreement, even

if you have already established a filing date.

All of these considerations apply to contractors that that you engage to do work for you, as well as

potential customers, licensees and investors.

Searching

Before you establish a filing date, the inventor may want to do a preliminary search to satisfy

themselves that the invention is new and non-obvious. In many cases the results of the search help an

inventor refine the invention. This can help the person writing the patent application focus the

description on those aspects of the invention that are likely to impart patentability.

When you search to determine whether your idea is new, everything that has ever been published is

relevant, no matter how old, or what type of publication. It is likely that even if you do a thorough

search a patent Examiner will find references that you did not find.

In many cases the most relevant publications are the most recent publications. Since patents are only

published eighteen months after filing there is a “black hole” containing hidden material which has a

filing date up to eighteen months ago but has not yet been published. Upon publication, this material

can enjoy its filing date in the US.

Repeating your search ten or eleven months after you establish a filing date can help you find nearly two

thirds of relevant patent applications which were unavailable during your initial search.

When conducting your search, you should consult with a professional about the material you find that

seems most closely related to your invention. In many cases inventors are ill equipped to understand the

impact of what they have found.

In addition, freedom to operate (FTO) is independent of patentability. If you are concerned about FTO,

you should consult with a professional about the relevance of prior publications and/or about other

options for increasing your FTO when other parties have rights in the technology area you are working

in.

In some cases you may want to hire a professional to write an opinion on patentability and/or FTO. Such

an opinion can be useful in securing investment capital

Provisional Patent Applications

A provisional patent applications (PPA) serves only to establish a filing date for an invention. The PPA

establishes a period of twelve months in which to file a utility (or international) application and claim

priority based on the filing date of the PPA.

The PPA itself is never examined and if no application claiming priority from the PPA is filed within

twelve months, it becomes abandoned. PPAs are useful in early development of an invention, when

significant additions or changes are anticipated within 12 months.

PPAs can serve as a substitute for NDAs as described above.

Utility Patent

A utility patent is what most people are referring to when they say “patent”. Once granted, a utility

patent affords exclusive rights to an invention defined by a set of claims at the end of the patent.

The utility patent application must contain claims, and it is the claims that are examined by the patent

office. The requirement for claims, and the fact that the claims are examined, and that a patent is

granted if the examination is completed successfully are the main differences between a utility patent

and a PPA.

Once a patent is granted, its term is 20 years from the date on which the application for the patent was

filed, subject to the payment of periodic renewal fees. Failure to pay fees causes the patent rights to

lapse.

Utility patents are available in most countries around the world. The rights are granted on a per country

basis. The inventor must decide where protection is desired early in the patenting process.

International applications

There are international treaties that permit an inventor time to file an application on the same invention

in multiple countries.

The Paris Convention provides an inventor with twelve months to file additional applications in other

countries, providing that each additional application explicitly claims priority from the first application

filed.

The Patent Cooperation Treaty (PCT) provides an additional eighteen months (total of thirty months) to

file applications on the same invention in additional countries on the condition that an international

application, or PCT application, is filed and explicitly claims priority from the first application filed.

Subsequent applications filed within the 30 month time limit claim priority from the first application

filed through the intervening PCT application. It is important to note that the international (PCT)

application can never mature into a granted patent in any country unless a separate application is filed

in that country.

Design Patents

In contrast to a utility patent, a design patent affords protection on the external appearance of an

object. The appearance must be independent of the function. As for a utility patent, the design must be

novel and non-obvious. The period of protection for a design patent is 15 years from the date of grant.

In some cases a single object may be eligible for both copyright and design patent protection. It is

advisable to seek advice from an attorney in copyright law as well as design patent law if your invention

is a design.

Plant Patents

A plant patent can be granted for a new variety of asexually reproduced plant, including cultivated

spores, hybrids, mutants and newly found seedlings other than tuber propagated plants or plants found

in an uncultivated state. Again for an inventor to obtain plant patent protection an application must be

filed and examined. The term of protection is 20 years from the earliest filing date.

Plant variety protection certificates are not issued by the Patent and Trademark Office in the US but by

the US Department of Agriculture through the Plant Variety Protection Office (PVPO). Plant variety

protection certificates cover sexually reproducible plants and remain in force for 20 years (25 years for

vines and trees)

Copyrights

Copyright law safeguards novel works of authorship from direct and unfair copying. These works of

authorship includes: collages, scripts, articles, musical composition, choreography notations, books,

sculptures, three-dimensional models, maps, poems, blueprints, and the printed material on board

games, computer programs, data, and sound recordings.

The time period of a copyright is the life of the author (if identified) plus 70 years. The term of the

copyright is 95 years from publication or 120 years from creation where the author is not identified or

the work has an “institutional author”.

Trade Secrets

If the idea lies under category of a process or technique, the individual can keep the idea confidential by

arranging to license or sell his idea as a trade secret. This is advantageous in that a trade secret has a

(theoretically) unlimited life. Some trade secrets may be kept secret for a lot of years while others get

known in a fairly short time after the product involved has been on the market. Trade secret is also

known as confidential know-how.

Computer implemented inventions

Computer implemented inventions may benefit from hybrid IP protection. They can be safeguarded by

copyright and/or patent and/or trade secret. Hardware and software components should each be

analyzed as candidates for protection. Lines of code may be protected by Copyright. Trademarks and

service marks can protect software products through creation of brand loyalty.

Enforcement

The role of the patent office as a representative of the government ends with grant of a patent. The

government plays no role in identifying or prosecuting infringers. The owner of patent rights bears sole

responsibility for enforcing the patent.

In many cases the owner of patent rights has limited financial resources and the infringing party has

much greater resources. In such a case the owner of rights may enter into a contractual arrangement

with a third party to enforce their rights. The contract often species a percentage of the damage award,

or licensing revenue, as a fee to the third party.

The third parties that engage in such contractual arrangements are referred to as “non practicing

entities (NPEs). In the US a significant portion of patent litigation involves NPEs. NPEs are sometimes

referred to derogatorily as “trolls”. Application of this pejorative epithet is testament to their efficiency.

Although much criticized in the media, NPEs perform an important service in providing protection to

patent owners, ion the same way that private security companies protect physical premises that might

otherwise be trespassed upon.

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