Home: Patents:
Patent Basics
AN INTRODUCTION TO THE PATENTING
PROCESS: INITIAL CONSIDERATIONS
Clients frequently ask us if they will
be able to obtain a patent on a new invention, and if so, whether
obtaining a patent is in their best interests. In general, inventors
should weigh the following initial considerations before seeking
a patent.
I. Patentability Requirements:
“Could we patent the invention?”
The Basic Rule
According to Federal law; “[w]hoever invents
or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof,
may obtain a patent therefore[.]” This means that, absent
any statutory bars to patentability, a new and useful invention
or an improvement to an existing invention may be eligible for patent
protection. However, certain conditions apply to this rule that
could prevent the issuance of a patent.
The Novelty Requirement
Has the invention been made available publicly for
more than one year? If so, this constitutes a statutory bar to patentability.
An invention has been made available publicly if it has been offered
for sale, described in a printed publication, or used to produce
a product.
Other statutory bars to patentability can be triggered
if an invention was abandoned by an inventor who later returns to
pursue a patent, or by an applicant who did not invent the subject
matter sought to be patented.
The Non-obviousness Requirement
In order to obtain a patent on an invention, it must
be “non-obvious,” or not anticipated by the prior art.
If the differences between an invention and the prior art are such
that the invention would have been obvious at the time it was made
to a person having ordinary skill in the art to which the invention
pertains, it may not be patented.
Prior art consists of U.S. and foreign patents, known
pre-existing products, publications that disclose inventions, information
obtained from industry trade shows and from third parties. If there
is little or no difference between a new invention and the prior
art, then an application will be considered obvious since there
is no subject matter on which to obtain a patent.
II. Other Considerations: “Should we patent the invention?”
If there are no statutory bars to patentability, it
may be possible or even likely for an inventor to obtain a patent
on an invention. Before proceeding however, other factors should
be taken into consideration:
Licensing:
Patent owners may assign or license their rights in
an invention. If this is a possibility, it may be preferable for
an inventor to file an application, since patented inventions are
typically more valuable than unpatented technologies.
Trade Secrets:
In order to obtain an issued patent, an inventor must
fully disclose the best mode of carrying out an invention. That
is, an inventor must be able to explain to the patent office how
an invention works, what components comprise the invention, and
any other information required to teach someone similarly skilled
in the art of the invention how to make and use it. If fulfilling
this requirement will necessarily involve the disclosure of confidential
business information, such as trade secrets, an inventor should
weigh the benefits of obtaining patent protection against the possibility
of losing those trade secrets.
Joint Inventors:
Depending on their input, joint contributors to an
invention might all be regarded as inventors. Furthermore, each
inventor shares an undivided interest in any patent issued on the
invention unless their interest is assigned. Therefore, it is important
to make sure that all inventors agree to assign their rights in
the invention, since even one inventor can authorize other parties
to practice the invention.
Enforcing Patent Rights:
Inventors should consider whether a patent can be
enforced. If it will be impossible to catch infringers, or difficult
to know if someone is infringing the patent, it may be impossible
to enforce an inventor’s patent rights.
Economic Viability:
In order to be economically viable, an invention should
make technological improvements for which there is a demand. With
regard to these considerations: Does the invention make improvements
that yield a competitive advantage in the market? If the invention
leads to functional improvements, decreased costs or greater efficiency
in the art, it yields a competitive advantage.
Finally, an inventor should consider the size of the
market for an invention and how long it will last. How likely is
it that there will be competitors in the market? If there are contractual
mechanisms that can prevent others from making or purchasing the
invention, these may be preferable to obtaining a patent.
These issues are by no means an exhaustive checklist for patentability,
but rather represent the types of issues an inventor should consider
before attempting to obtain a patent. For a more detailed analysis
of patentability, or to discuss a particular invention, inventors
should speak directly with a patent attorney.
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