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.