Patent Primer for Inventors: The 5 W's of Patents

By: Eric M. Nelson and James F. Herkenhoff

Determining whether there is a need for patent protection can be a difficult decision. Common questions include: Is my invention patentable? Why do I need a patent? Can someone easily design around a patent? In this article, we will address these and other commonly asked questions by entrepreneurs when making this difficult decision.

What can I patent?

Patents can be issued for any new and useful process, machine, or even software. Software patents list steps that are performed by a computer running the software. An actual working model of the process or machine is not required to apply for a patent. An inventor is only required to have mentally conceived of the invention before filing for a patent. Even after the inventor has conceived of and filed for a patent with the United States Patent and Trademark Office, the inventor may or may not have constructed a working model. The inventor is simply required to describe the invention in enough detail in the patent so that another person using the description would be able to practice (i.e. assemble or put together) the invention without undue experimentation. In this way, an inventor is able to defer valuable resources early in the patent process. The filed patent application document then provides the inventor with a recognized foundation for soliciting outside resources for developing and marketing the invention.

Why should I get a patent?

The most obvious benefit of patent protection is the ability to prevent competitors from copying the invention. A patent grants the inventor the right to exclude others from making, using, selling, offering to sell or importing the claimed invention. In effect, the patent gives a legal monopoly where the inventor is free to set prices, limit output, or even restrict where the invention is sold. Rather than practicing the invention, an inventor may grant a license for another to practice the invention and receive in exchange a lump sum or a continual revenue stream for the maximum 20-year life of the patent. Furthermore, corporations use patents to cross-license technology.

A well drafted patent will broadly claim the invented subject matter and will make it difficult for competitors to design around the patent. Of course, it is not possible to prevent competitors from making or selling "prior art" solutions. A well drafted patent will require a competitor to secure a patent license to practice the invention.

It has been the authors' experience that one common misconception of inventors is that they believe that software does not need to be patented because it is protected by copyright. However, by statute, in contrast to patents, copyright cannot protect an "idea." Copyright only protects the particular sequence of instructions that were used in the subject software. Thus, copyright protection cannot prevent "clean room" reverse engineering that provides competitive software.

When do I need to apply for a patent?

A few of the most common pitfalls that await an inventor include selling the invention before patent filing or unbridled disclosure of the invention. The patent laws are not forgiving when it comes to an inventor's prolonged commercial exploitation of an invention prior to filing for a patent. The incentive afforded by the patent laws to an inventor is limited in duration and requires the inventor to promptly disclose the invention to the patent office so that the invention is not delayed from falling into the public domain. Patent protection is foreclosed in the United States if more than a year of commercial exploitation occurs before an inventor applies for a patent. Furthermore, in most foreign jurisdictions, a patent must be filed prior to any public disclosure of the invention.

Who should apply for the patent?

Any person may be an inventor and directly apply for a patent from the United States Patent and Trademark Office. At the outset, ownership of the patent remains in the inventor's possession. However, employees are typically obligated under the law and under employee agreements to assign all of their rights in an invention made during work to their employers. Of note, entrepreneurs should be aware that investors typically will withhold funding until ownership of all intellectual property is assigned to a company.

Where do I go to file a patent?

The rules and laws that must be navigated before receiving a patent are unique to the prosecution of patents. Selecting a co-pilot well versed in patent law enables the inventor or corporation to maximize the value of any patent. Knowledgeable corporations often hire a patent agent or patent attorney to assist them in obtaining their patents. Patent agents or patent attorneys are required to demonstrate to the satisfaction of the United States Patent and Trademark Office remarkable abilities in a science field.

Today, there is little benefit in selecting a law firm based on the law firm's proximity to the United States Patent and Trademark Office. The patent laws provide no advantage or disadvantage based on geographic location within the United States. Documents placed in the U.S. mail are afforded the same filing date as documents that are hand carried into the United States Patent and Trademark Office that same day.

Reprinted with permission from the San Diego Daily Transcript.