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What a Business Should Know About
Patents
By J. Nevin Shaffer, Jr.
Every Business Has Intellectual Property
The first thing to keep in mind is that every person who is in
business has at least three of the four types of intellectual
property. They have words, symbols and slogans that they use to
identify and distinguish their brand of stuff from their
competitors’ stuff. These are their trademarks. They also have works
of art and/or authorship in the form of advertising, original
software and the like that is protected by copyrights and they have
trade secrets such as customer lists.
Not Every Business Has A Patent (But More And More Do)
There is no requirement that your business have a patent in order to
be successful in your business, but it sure helps. Twenty years ago
eight out of ten patent infringement cases ended up in the court
throwing out the patent. Since the establishment of the Court of
Appeals for the Federal Circuit, the odds have reversed. The bottom
line now is that a patent is a very powerful business tool. Think of
maximum leverage.
What A Patent Is:
The Good News
The good news is that a patent gives its owner something less than a
20 year monopoly to stop other people from making, using, and/or
selling the patented invention. The actual length of a patent
depends upon how long the bureaucrats in Washington, and you, take
to approve an application for a patent. That is, the time begins to
run from the day you file the application. Typically it currently
takes two to three years from the date of application to approval.
Additional Good News is that, in the United States, you still
qualify for a patent even after offering it for sale or disclosing
it publicly. So long as a year has not elapsed from the date of
first sale or disclosure you can still file an application.
The Bad News
The bad news is that they just don’t give away patents. Everything
that has ever been invented must pass three tests:
• First, the invention must be useful. A lump of lead is useful as a
paperweight so it is clear that this first test is a very low
threshold test.
• Second, the invention must be new. Essentially this test means
that so long as the identical thing has not been done before it is
new.
• Third, an invention is patentable so long as it is a nonobvious
improvement over pre-existing technology. This test is the kicker.
The implementation of this test requires the creation of a
hypothetical person. This hypothetical person is presumed to have
ordinary skill in the “art” and to know every patent and publication
in that art with which the invention is related. The problem that
the invention has solved is presented to this person and if they can
solve it the way you did it is an obvious, therefore not patentable,
improvement. If they cannot, it is a nonobvious, therefore
patentable, improvement. An obvious difficulty with this test is
that everything is obvious when you know how. The paper clip is
pretty obvious but it was patented. Patent attorneys, patent
examiners, and you will spend most of their time struggling with
issues of nonobviousness.
Two Options:
Do a Patent Search
One option for a person with an invention is to do a patent search.
You can spend nothing on a patent search because the law does not
require one before filing a patent application. On the other hand,
you can spend the gross domestic product of the United States on a
patent search. Even if you spent all the money in the world on a
patent search, you would never know for sure that the invention is
patentable because patent applications that are pending are
confidential and may not be searched. Typically, a patent attorney
and you will use a patent search as “go-no go” decision-making
information. The thrust of the search is to attempt to determine if
the exact thing has been done before (novelty) and if it is an
obvious improvement on pre-existing technology or not (nonobviousness).
File a Patent Application
Another option is to file a patent application. As a practical
matter, the patent examiner is the person who says yes or no, no
matter how much you have or have not spent on patent searches. The
issue here is cost. The number one question asked of patent
attorneys is: How much does a patent application cost? This
question, and its answer, is similar to asking: How much does a car
cost? The answer is, it depends. It depends on the novelty,
nonobviousness, complexity, time constraints, and business strategy
of your business to name a few. Each situation is different. In
general, a patent attorney will ask for more information about the
invention not less. Once he or she is comfortable in their
understanding of the invention they will give you an estimate of the
cost of the application. While I have written a patent application
in a weekend, it is best to give your patent attorney more time to
draft the application, not less. A normal period of time is three to
four weeks.
What a Business with an Invention Should Do
1. Keep It Confidential
Most inventors are paranoid. That is a good thing. In the
knowledge/information age, ideas are the most valuable assets in the
world. There are lots of people in the world these days with a lot
of money but there are very few people with good ideas. The longer
you keep your idea confidential the greater your options.
Nonetheless most inventors have a need to consult with somebody, an
engineer, a draft person, a (heaven forbid) venture capitalist, and
you can so long as you first have a signed
Nondisclosure/Confidentiality agreement.
2. Know Your Market
The most important thing an inventor can do after coming up with
the invention is to aggressively determine the commercial viability
of the invention. It is not enough to say: “The market is huge.” You
should be able to tell your attorney all the “players” in this
particular market and exactly what are the numbers concerning
products or processes that attempt to solve the problem solved by
your invention. The more accurately you understands the potential
for the invention the better able you will be to evaluate the
cost-benefit ratio of filing a patent application, for starters.
3. Contact A Patent Attorney
Actually this is tied with number 1. The sooner you get in
contact with a competent patent attorney the better served you and
your business will be.
©
Copyright 2004 JNSJrPA. The material in this article is provided for
general informational purposes only and should not be considered a
legal opinion nor relied upon in lieu of specific legal advice.
Accordingly, readers who require legal services in connection with
their specific circumstances should consult an attorney competent in
the field of intellectual property. |
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