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Patents

A patent seems like a lot of work and expense, what if we just keep our invention a secret?

An invention that is kept secret is called a trade secret and is protected under the law against misappropriation. However, to sue for misappropriation, you must prove that you made diligent, proactive efforts to keep the invention secret, for example, utilizing confidentiality agreements and limiting access to your facilities. Also, you do not have an exclusive right to the invention meaning that someone else may independently develop or reverse engineer the invention. A patent, on the hand, requires full disclosure of your invention, but it also gives you the exclusive right your invention for 20 years from the filing date. You do not have to worry about breaches in confidentiality or others independently developing your process or product. Considering the expense of protecting a trade secret and the potential for independent invention by others, a patent may actually involve less work and be the more economical choice.

My new invention will be marketed heavily in Japan. Can I file a patent application overseas before filing in the U.S.?

You will need a Foreign Filing License (FFL) to file a patent application outside the United States. The FFL is a type of export license. You can seek an FFL prior to filing a patent application outside the U.S. However, a simple way to obtain an FFL is to file your patent application in the U.S. before filing outside the U.S. Soon after the new patent application is filed in the U.S., it will be reviewed for granting of an FFL. While patent applications on most technologies are granted FFLs, applications on technologies that might affect national security (such as munitions, certain chemicals, and biological materials) may be denied an FFL.

How can I tell if my idea for a new product is patentable?

To obtain a U.S. patent, your invention must meet certain requirements. The subject matter must fall into accepted categories, e.g., compositions of matter, plants, machines, manufacturing methods, computer-related inventions and business methods. Certain things are not patentable, e.g., discovery of a new property of a known material or mathematical algorithms. Your invention must be novel — not known or used by others or appear in print before your date of invention. Also, it cannot be sold or even offered for sale or appear in print more than one year prior to the time of application. Finally, it must not be obvious to one skilled in the art (technical area of invention), as assessed by evaluating differences between your invention and what is known at the time of application. A search of existing patents and published applications can tell you if someone has already tried to patent your invention.

When does an invention not warrant a patent?

Many inventions do not warrant a patent. You can generally manufacture a product without one, assuming it does not infringe someone else's patent. A patentable invention is generally defined as an invention that is novel and not obvious. Obtaining a U.S. patent can cost thousands or tens of thousands of dollars and take three or more years. Fad items and recipes usually do not justify.

Years ago, I developed an invention but never pursued it. Last week, I saw the same invention advertised by a national company. Since I came up with the invention first, can I file a patent application now?

Probably not. Generally, the first person to conceive an invention and reduce it to practice has the right to patent the invention. However, this right can be lost if the invention is abandoned, suppressed, or concealed. A major purpose of the patent system is to encourage people not only to make useful inventions but also to disclose them to the general public so that the public can benefit from the technology. Barring any reasonable excuse protection. Patenting a fad item, with a life span of three or fewer years, makes no financial sense since issuance will probably occur after it runs its course. Recipes generally are not patentable or can be difficult patents to enforce. Therefore keeping a secret, like the COCA-COLA® syrup recipe, can sometimes be more valuable than exposing a patented formula to the world. In these cases, it’s best to spend money on marketing instead of patenting. for failing to diligently apply for a patent, your rights to the invention may have been lost.

Is there more than one type of patent in the United States?

Yes. There are three types of patents under current U.S. law. A utility patent is enforceable for 20 years from filing, and it ends with written claims, which define the protected invention, much like a property description in a deed. A design patent protects new, original, and ornamental.

How do I know whether someone has already patented my idea for a new invention?

Conducting a search of United States issued patents and pending applications is a good way to begin. The U.S. Patent and Trademark Office provides a free search tool at its www.uspto.gov website. Searching can identify whether someone has already received a patent covering your idea. A patent attorney can assist with the search or conduct one for you. Identifying any relevant patent “art” will enable your patent attorney to advise as to what level of patent protection may be available for your invention, before you commit to the expense of preparing and filing an application. The patent attorney can provide guidance in identifying possible patentable subject matter relating to your invention.

Do I need a working model of my invention before I can get a patent?

No. All that is needed is a patent application, featuring a description of your invention, that must be filed with the U.S. Patent and Trademark Office. This document must be sufficient to permit someone with skill in the field of your invention to duplicate it without undue experimentation. Even if you have only a few rough sketches, a skilled patent attorney will be able to talk with you about your invention and prepare and file an application. If you feel you have a valuable invention, it is best to at least speak with a patent attorney as soon as possible, since there are events that may occur, such as offering your invention for sale, which may preclude you from seeking patent protection.

Do I have to patent a new technology in the United States first?

If you are a U.S. citizen or even just live or work in the U.S., you should file the U.S. patent application before filing patent applications outside the U.S. A U.S. patent application usually precipitates a Foreign Filing License (FFL), which is a type of export license. Obtaining an FFL is not just a formality. The U.S. Department of Defense sometimes denies FFLs to patent applications directed to technologies whose export might affect national security, such as detonators, explosives, some chemicals, certain biologicals, etc.

My friend invented a software program that he wants to patent, & during it's development, I assisted him by providing suggestions. Am I a joint inventor of the invention even though the program was not my idea & my friend did most of the work?

An inventor is someone who creates an original device, idea or process, pursues its development, and whose contribution is essential to the development of the invention. A person may be considered a joint inventor with one or more other persons, even though that person did not make the same type or amount of contribution to the invention. If your assistance consisted of conceiving of an idea or strategy that was essential to the development of the invention, then you are a joint inventor, notwithstanding that your friend thought of the idea for the invention and spent more time on its development designs for an article of manufacture (e.g., an ornamental faucet). These patents are good for 14 years from grant and the drawings in the patent define the protected invention. Plant patents protect asexually reproduced plant varieties, such as new and distinct geraniums. When someone speaks of getting a patent for his or her invention, he/she is usually referring to a utility patent.

What is a design patent, and how is it infringed?

Under U.S. law, a patent may be granted for “any new, original and ornamental design for an article of manufacture…”. Design patents are directed to ornamental features (as opposed to functional) for a term of 14 years from issuance. The test for determining infringement is based partly on an 1872 Supreme Court decision: “If in the eye of an ordinary observer…two designs are substantially the same…as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first…is infringed by the other.” For a design patent to be infringed, the accused design must appropriate the novelty in the patented design which distinguishes it from prior art. Thus, even though the two items are compared through the eyes of the ordinary observer, infringement requires similarity to be attributed to the novel aspect that distinguishes the patented design from prior art.

When and how should I identify my product as being patented?

The words “patent pending” or abbreviation “pat. pend.” may be included on a product for which patent protection has been applied but not yet obtained. That marking can provide a marketing advantage and legal notice of a patent that may issue in due course. Once the patent issues, the product (or its packaging) should be marked with the word “patent” or the abbreviation “pat.”, together with the patent number. Marking a product with a patent number provides a mechanism for giving notice to the public that a product is patented. If a product is not properly marked with the patent number, no damages will be awarded for infringement of the patent, unless the infringer was notified of the infringement and continued to infringe even after such notice.

I plan to sell my business. How do I place a value on the patents my business owns?

There are several methods used for the valuation of intellectual property assets, such as patents. One method, the cost approach, determines the value of a patent by determining the cost to obtain the patent. Another method is the market approach. This method provides an indication of value by comparing the price at which similar patents were exchanged between willing buyers and sellers. Finally, the income approach method assumes that the manufacture and the sale of goods would entail payment of reasonable royalties if the manufacturer itself did not own the patent. The value of the patent depends on the present value of future royalties derived from ownership. Ideally, more than one of these approaches should be used in patent valuation, and the calculations should always be verified by an accountant.

Obtaining a patent seems like a lot of work and expense. What if we just keep our invention a secret?

An invention that is kept secret and provides its owner with a competitive advantage is called a trade secret. A trade secret is protected under the law against misappropriation. However, to establish misappropriation, you must show that you made diligent efforts to keep the invention secret, for example, by utilizing confidentiality agreements and limiting access to your facilities. The owner of a trade secret does not have an exclusive right to the invention; someone else may independently develop or reverse engineer the invention. On the other hand, a patent requires full disclosure of your invention, but it gives you the exclusive right to exclude others from using the invention for 20 years from the patent application filing date. Considering the expense and effort required to protect a trade secret and the potential for independent invention by others, pursuing and obtaining a patent may actually be a better choice.