Patents
Walker & Jocke prepared the patents that cover the seals that connect the modules on the International Space Station, as well as the design for the solid rocket booster joints that were last used on the U.S. Space Shuttle.
What is a Patent?
A patent is a grant of rights from the government. The owner of a patent is granted the exclusive right to prevent others from making, using, selling or offering to sell the invention covered by the patent. The utility patent owner has these rights for the life of the patent, which is generally 20 years from the date the patent is applied for in the United States.
What Can Be Protected with a Patent?
Patents can be obtained on “inventions." Inventions include any new and useful machine, process, article of manufacture, composition of matter (such as a new chemical composition) and improvements on any of these things. Virtually anything that is new and made by man is subject matter eligible for patent protection.
Certain things have been held not to qualify for patent protection. For example, most “works of authorship”, which are protected by copyright, are not patentable. Also, trademarks, which are words or symbols that identify the origin of goods and services, cannot be protected by patents. Other things that would not qualify for patent protection are abstract ideas, pure mathematical manipulations of numbers and laws or products of nature.
Computer software was originally considered not patentable. However, in recent years the law has changed so that software inventions are often patentable.
Types of Patents
There are three types of patents granted by the U.S. Patent Office:
UTILITY PATENTS
The most common type of patent is a “utility” patent. A utility patent covers what an invention is or how it functions. A utility patent is effective from the date it is issued and generally lasts for 20 years from the date it was applied for.
DESIGN PATENTS
A design patent covers the ornamental features of a manufactured item. Design patents cover only how something looks, not how it works. The term of a design patent is currently 15 years from the date it is granted.
PLANT PATENTS
Plant patents cover asexually reproduced plants. Fruit trees and other flowering plants are the most common subject for plant patents.
Patent Investigations
There are usually two reasons patent investigations are requested. The first is to find out if a new invention is patentable. The second type of patent investigation is done to avoid infringement problems by finding out if something that you plan to make or do is covered by an effective patent owned by someone else.
Patentability Searches
Patent searches are useful for determining if an invention is patentable. Usually before incurring the expense of preparing and filing a patent application, a patentability search is conducted. The search results are analyzed to determine the likelihood that the invention is patentable.
However, many technical people know “the state of the art” and often recognize that an invention is a significant advance without conducting a patent search. In those cases, a patent application will often be prepared and submitted to the Patent Office without conducting a patentability search.
Deadline for Filing a Patent Application
The current law is that a U.S. patent application must be filed before any public disclosure or offer for sale of the invention. However, the law has some exceptions. Certain qualifying public disclosures before a patent application is filed will not bar receiving a valid patent, provided that a patent application is filed within one year of the public disclosure. If a patent application is not filed in time, the right to obtain a patent is lost.
The law regarding when a U.S. patent application must be filed was changed in 2013. The rule until March 16, 2013 was that a U.S. patent application had to be filed within one year of the date the invention was first publicly disclosed or offered for sale.
With the law not being as favorable to inventors as in the past, it is important for inventors to carefully control public disclosures and offers for sale or other commercial activities before filing a patent application to avoid losing the opportunity to obtain a patent.
Recordkeeping Related to Inventions
Until U.S. patent law changed on March 16, 2013, U.S. patents were granted to the “first inventor” of a new invention, provided that the inventor filed their patent application before the end of the one-year grace period that was allowed at that time. For U.S. patent applications that were filed prior to when the new law took effect, the “first inventor” rules still apply. It may be important for inventors who filed their patent applications under the prior law to retain documentation that shows when they first came up with the idea for the invention, developed prototypes and took other steps related to the development of the invention.
By enacting the current law, the U.S. adopted a “first inventor to file” system. Under the current law, the date the inventor first thought of the invention, made the first prototype, and took other actions to develop the invention, are generally not important. The filing date of the inventor’s patent application that discloses the invention is the key date for purposes of having priority over someone else who develops the same invention and who also files a patent application. The general rule is that to obtain a valid U.S. patent, the inventor must file his or her patent application before either making a public disclosure or offering to sell something that includes the invention.
There is an exception to the general rule. The exception is that an inventor who makes a public disclosure of his or her invention before filing a patent application, may still file a valid U.S. patent application provided that the application is filed within one year of the first public disclosure. Inventors who rely on this exception should keep records regarding the public disclosure they made before filing the patent application. Such records may include documenting the circumstances of the disclosure (particularly what was disclosed), the manner of disclosure and the persons to whom the disclosure was made. Having documentation about a public disclosure before a patent filing may be helpful in the event that someone else files a patent application on the same invention after the public disclosure and before the inventor, who made the first public disclosure, makes his or her patent filing.
Documenting information about the development of an invention can also be helpful in the event that someone steals an inventor’s idea and files a patent application claiming that they are the inventor. In such circumstances, having good records may show the Patent Office who is the actual inventor.
Patent Infringement
Patent infringement occurs when someone makes, uses, sells or offers to sell something covered by the claims of someone else’s unexpired patent without authorization. It is a common misconception that if you have obtained a patent on your invention, you cannot infringe someone else’s patent. The Patent Office does not screen for infringement when it considers patent applications. It only looks to see if the invention claimed is novel over the prior art. Of course, a patented (or unpatented) device cannot infringe a patent on something that was invented after the accused device is already being sold. Any patent that would cover the “prior art” is invalid.
Possible infringement should be a particular concern when designing a product similar to one known or believed to be patented by someone else. In such cases, it is wise to conduct a "right to make" patent study.
U.S. patents are usually not effective to stop someone overseas from doing things that would constitute infringement if done in the U.S. However, a U.S. patent can be used to stop the importation of such products into the U.S. As a result, a U.S. patent may be used to protect against foreign and domestic competitors.
A successful lawsuit may result in the award of damages against an infringer. The damages may be tripled if the infringement is “willful.” Willful infringement may occur if a person knows about a patent and does not take steps to avoid infringement. Further, someone who does not infringe, but causes or induces someone else to infringe, may also be held liable for infringement. Because the penalties for patent infringement may be substantial, prompt legal advice should be obtained whenever a potential infringement situation arises.
Intellectual Property Audits
Many businesses only think about protecting their patents, trademarks, copyrights or trade secrets after they have encountered a problem. It is much less costly to have a plan for protection of your valuable “intellectual property” so that problems can be avoided.
One approach to avoiding problems is to have an “intellectual property audit” conducted. An intellectual property audit involves having an attorney, experienced in intellectual property, review the business activities and the protection you currently have. Such reviews usually uncover areas in which protection can be improved at a very low cost. Just like an annual physical checkup by a doctor, an annual review of intellectual property protection may avoid serious problems later.