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)