Patent FAQ's, Part IV

by Bruce D. Sunstein, Timothy M. Murphy and Robert M. Asher

With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.

Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.

 

What goes into a patent application?
The patent laws require a disclosure of the invention. In most cases, drawings are required. In all utility cases (but not design cases), a written specification is required. This specification has two main parts: (i) the disclosure of the invention that will teach the public about the invention (as part of the exchange referred to above between the inventor, who has made an advance in the field, and the government, which grants a monopoly in the invention); and (ii) the claims. A United States patent application must also include an oath and filing fee. A provisional application does not require all these parts. The different components of a patent application are discussed below.

The Disclosure
The requirements for the written disclosure to be made in a patent application are set forth in the first paragraph of 35 U.S.C. sec. 112, which reads as follows:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention.”

The statute requires that the “best mode” be disclosed. Congress does not want inventors withholding important information about the invention so that after the patent expires, others cannot practice the invention with the same benefits or efficiency as the inventor. For this reason, patents are sometimes incompatible with trade secrets. If the trade secret is important to know for “the best mode . . . of carrying out [the] invention,” then the failure to disclose the secret in the application may invalidate any patent that may issue from that application. While the best mode requirement is important in prosecution, the AIA has eliminated it as a way to challenge the validity of a patent in litigation.

Although the claims are clearly the most critical part of the patent, we at Sunstein draft the disclosure with the view that a well-drafted disclosure will make it easier to obtain broad coverage during the prosecution of the patent application and will strengthen the patent owner’s case during patent litigation.

The Claims
The second paragraph of 35 U.S.C. sec. 112 reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

The claims, which are usually written in a very arcane style, are the most critical part of the patent. The claims are meant to define what is covered by the patent. If an accused product or process falls within the scope of a valid claim, it infringes the patent. A product or process may infringe a claim literally or under the Doctrine of Equivalents, which allows in some cases a finding of infringement if the accused product or process does not include each of the elements of the claim but does include at least an equivalent of any element that is literally absent. Yet the Doctrine of Equivalents cannot be so broadly applied to cover anything that would have been obvious in light of the prior art.

For any invention that is valuable, the drafting of the claims should be done by a patent attorney. It has been the experience of Sunstein, that many inventors do not appreciate the scope of their invention. Without the assistance of an experienced patent attorney, claims often are drafted too narrowly. (More)

Patent FAQ's, Part III

by Bruce D. Sunstein, Timothy M. Murphy and Robert M. Asher

With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.

Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.

 

What are the different types of patents?

There are three types of patents that an inventor can obtain in the United States: a utility patent, a design patent and a plant patent. The type of patent with which most people are familiar is a utility patent, which is a patent for a new and useful invention. The subject matter for each of the three types of patents is discussed further below.

Utility Patents
In order to obtain a utility patent, the invention must be for a “new and useful process, machine, manufacture, or composition of matter . . . .” This requirement is fairly straightforward and is usually not a problem, except in certain areas.

A series of very vague, indefinite and often misleading maxims have arisen over time to address what may and may not be patented. For example, “mathematical algorithms,” “mental steps,” “laws of nature,” “products of nature,” “methods of doing business,” and “printed matter” have, in the past, been held to be not patentable. Patents are regularly issued that defy these maxims. For instance, purified products of nature are generally patentable, assuming that the other requirements of patentability are satisfied. In addition, computers and the Internet have now transformed methods of doing business and mathematical algorithms into protectable machines and processes.

Decisions by the Federal Circuit Court of Appeals favorable to patent applicants have caused the U.S. Patent and Trademark Office to rewrite and loosen its guidelines for examining patent applications for software inventions.

Medical procedures are patentable in the United States; however, the patentee’s ability to sue all infringers of a patent directed to a medical procedure has been curtailed by recent legislation. This legislation makes it even more important to consider likely defendants when drafting a patent claim. For instance, it is usually easier to sue the manufacturer of an infringing product than the consumers, so the patent should be drafted to cover the product as it leaves the factory—as opposed to how it may be used by the consumer—so as to avoid having to show the additional elements of contributory infringement. Many foreign countries limit the patentability of medical procedures.


Design Patents
Design patents have different subject matter requirements from utility patents, as set forth in 35 U.S.C. sec. 171, which reads as follows: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”

One difference between utility patents and design patents is the length of their terms. Utility patents generally have a term of twenty years from the earliest effective filing date—or seventeen years from issuance, depending on when they were filed. Design patents have a term of fourteen years from issuance.

The aspects of the design claimed in a design patent must be ornamental, as opposed to functional. This can sometimes be a very fine distinction. Design patents can be very useful (especially as a surrogate for or in conjunction with trade dress and other trademark protection), but are not considered to be as valuable as utility patents, since they are not supposed to protect the underlying concept that makes a product function the way that it does, and since it is usually very easy to design around an ornamental design. Design patents, on the other hand, are generally easier and less expensive to obtain than utility patents.

Plant Patents
It is possible to get a patent on living plants, including hybrids, mutants, and newly found seedlings, provided that the plants are asexually reproduced and are of a distinct and new variety. Plants can also be protected by utility patents in certain circumstances. The requirements for obtaining plant patents are set forth in 35 U.S.C. sec. 161.

 

What is patentable?
Pursuant to Article 1, section 8, clause 8 of the U.S. Constitution, the U.S. Congress has the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has exercised this power by creating statutory schemes for copyrights and patents. The rules for what is and is not patentable, as promulgated by Congress, are set forth below. Congress has also set up the United States Patent and Trademark Office (the USPTO), whose primary responsibility is to review patent applications and issue a patent if the application meets the statutory requirements. (More)

Patent FAQ's, Part II

by Bruce D. Sunstein, Timothy M. Murphy and Robert M. Asher

With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.

Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
 

What are some of the differences between patents and other types of intellectual property?
The different types of intellectual property—patents, copyrights, trade secrets and trademarks—have different purposes, different strengths and different weaknesses. In many cases, a proper strategy for protecting a new product line will involve several different types of intellectual property. Sunstein is well suited to consider and implement such a strategy, since our attorneys are familiar with all these areas.

A patent is generally considered to be the strongest way to protect an invention—assuming that a patent with broad coverage can be obtained for the invention. A patent is frequently the only way to protect an invention adequately. In many cases, trade secret protection is impossible or impractical, because of the nature of the invention (e.g., the invention is mass marketed and can be reverse engineered), or because of other circumstances (e.g., the engineers move freely among competitors in the industry). A copyright is not supposed to protect an idea, only the expression of the idea. Trademark and trade dress protection is meant to prevent consumers from being misled about the origin of a product and is not intended to prevent competition in the underlying product.

Patents have other advantages over other types of intellectual property protection. In particular, in order to prove infringement of a patent, one does not have to show that the accused party copied the invention from the patent owner, nor does one have to show that the accused party breached an agreement with the patent owner. Indeed, the infringer may be liable even if the infringer was unaware of the patent or of the patent owner.

In other words, someone who has independently developed their own product can innocently infringe a patent and still be liable. Unlike in patent litigation, to prove copyright infringement in copyright litigation, one has to show—by one means or another—copying of the copyrighted work. To prove misappropriation of a trade secret, one must show that the trade secret was improperly appropriated.

Issued patents are entitled to a statutory presumption of validity pursuant to 35 U.S.C. sec. 282. In addition, since the institution in the early 1980′s of the Federal Circuit Court of Appeals, which hears the appeals of all patent infringement cases, patents have become much more valuable. Whereas about two-thirds of patents in litigation had been invalidated, now about two-thirds are upheld.
There are some disadvantages to patents over other types of protection. Patents have a short, limited life compared to copyrights, trade secrets and trademarks. Utility patent applications filed on or after June 8, 1995 have a term of twenty years from the earliest effective filing date. Design patents have a term of fourteen years from the patent’s date of issuance. By contrast, trade secret protection and trademarks can last indefinitely if properly handled.

A patent can be enforced only after it has been issued by the U.S. Patent and Trademark Office. Patent prosecution takes significantly longer than the copyright registration process—typically measured in years (although, if examination is accelerated or if the application is for a design patent, the examination can take less than a year). Trade secrets do not require any government approval. (More)

Patent FAQ's, Part I

by Bruce D. Sunstein, Timothy M. Murphy and Robert M. Asher

 

With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.
 

Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
 

What is a patent?
A patent can be a very valuable asset for a business selling a novel product or using a novel process. A patent is a right, granted by the government, to exclude others from making, using or selling within the government’s jurisdiction the invention as claimed.
Patents are intended to promote innovation and the exchange of ideas. The granting of a patent is traditionally considered an exchange between the applicant and the government: the applicant permits the invention to be disclosed to the public (and pays a variety of fees) and in return the government grants the applicant a monopoly to practice the invention as claimed in the patent document. But of course it’s not that simple, as the invention and the patent application must meet all of the government’s requirements.
Having the right to exclude others from making and using or selling your invention can be a very powerful tool for the success of your business. At Sunstein, our goal is to allow the client to maximize the leverage afforded by patents and other intellectual property.

 

What does a patent look like?
A patent is a document that describes the invention protected by the patent and sets forth in the claims the scope of the invention. To view a typical patent, click here (PDF: 183KB). This patent was prosecuted by Sunstein. It, and other patents, can be found on the website of the United States Patent and Trademark Office.

 

Why are patents important?
If someone else has or obtains a patent that covers your product or process, you (i) may be enjoined from making, using and selling the product or process; and (ii) may be subject to significant monetary damages—even if you did no copying and even if you did not know about the patent. In certain cases, the damages may be doubled or trebled and attorney fees granted.

One of the services provided by Sunstein is to conduct searches of issued patents to determine the degree of risk our clients undertake in introducing new products or in continuing to sell a product accused of infringement. Often, we will suggest design modifications for a product to minimize the risk of a successful patent infringement suit against our clients. Sunstein prepares clearance opinions to address such issues, and we pay particular attention to how such opinions may be used by a defendant in patent litigation to advance its case, as well as to reduce the likelihood of multiple damages and the award of attorney fees.

If you can obtain a patent, you may be able to (i) prevent others from practicing the invention (including even those who independently develop their own product, as well as copycats); (ii) obtain license fees from others who wish to practice the invention; and (iii) use it as a marketing tool. At Sunstein, we view the obtaining of a patent not as an end, but as a means to achieving our clients’ goals, whether it is giving our clients a business advantage over competitors or producing an additional income stream for our clients.

Filing for a patent early (and keeping good records of the invention’s development) puts you in a better position vis-à-vis other inventors. Thus, it is almost always preferable for the patent attorneys to consult with the inventors early on in the development process, rather than waiting for the development of the product to be completed.

The fact that a person obtains a patent for an invention does NOT necessarily mean that the invention can be practiced without infringing someone else’s patent. The Patent and Trademark Office determines whether an invention is new enough to be entitled to a patent, but not whether a device, such as that described in a patent application, infringes anyone else’s patent. A typical example is when someone obtains a patent for an improvement on someone else’s patent: Until the earlier patent expires, a license may be required to practice the later invention. The earlier patent is therefore called a blocking patent. Like any other patent, a blocking patent may be invalidated if sufficient proof of unpatentability is shown during litigation. In some cases, however, the fact that a person obtains a patent for an invention is evidence that the product incorporating that later invention does not infringe an earlier patent cited during the prosecution of the later patent in the U.S. Patent and Trademark Office.

Having a patent portfolio may permit you to enter into cross-licensing arrangements with other companies that have patents on valuable related technology.

Building a patent portfolio can also increase the value of your company in the eyes of potential investors or buyers. A patent is an important piece of property, and may enable a company to obtain capital when it would otherwise be insolvent. Investors, of course, would like to invest in a company that has a product that is in demand, but has no competition. Investors also do not want to invest in a company that has made or will make significant expenditures in research, only to have the product “knocked off” by a low-cost producer that was able to avoid the research costs simply by copying.

On the other hand, if you are a potential investor or licensee, the value of a patent must not be overestimated. Simply because a company has a patent does not mean that the company is valuable—the patent may be narrow (thereby allowing plenty of competition), there may be no demand for the product covered by the patent, or the company’s product might be of poor quality. Patents by themselves do not necessarily result in royalty streams. The invention or the products incorporating the invention still have to be marketed—to customers, licensees or assignees—in order to make money. Frequently, for individual inventors, obtaining the patent is the easy part; it’s the money-making part that’s difficult. Also, a patent is NOT a seal of approval from the U.S. government. If one looks through the weekly Official Gazette published by the U.S. Patent and Trademark Office, one will find plenty of inventions that are not practical and that will not make any money.

These issues should be addressed whenever one is considering a technology transfer. At Sunstein, we feel it is critical to discuss fully such practical aspects of an invention with our clients and to appreciate the business and technical context of an invention, in order to advise our clients on a technology transfer issue. (More)