Question 1

What types of inventions cannot be patented?

Accepted Answer

Some types of inventions will not qualify for a patent, no matter how interesting or important they are. For example, mathematical formulas, laws of nature, newly discovered substances that occur naturally in the world, and purely theoretical phenomena-for instance, a scientific principle like superconductivity without regard to its use in the real world-have long been considered unpatentable. This means, for example, that you can't patent a general mathematical approach to problem solving or a newly discovered painkiller in its natural state. In addition, the following categories of inventions don't qualify for patents: processes done entirely by human motor coordination, such as choreographed dance routines or a method for meditation most protocols and methods used to perform surgery on humans printed matter that has no unique physical shape or structure associated with it unsafe new drugs inventions useful only for illegal purposes, and non-operable inventions, including "perpetual motion" machines (which are presumed to be non-operable because to operate they would have to violate certain bedrock scientific principles).

Question 2

What makes and invention novel, non-obvious and useful?

Accepted Answer

In the context of a patent application, an invention is considered novel when it is different from all previous inventions (called "prior art") in one or more of its constituent elements. When deciding whether an invention is novel, the PTO will consider all prior art that existed as of the date the inventor files a patent application on the invention or, if necessary, as of the date the inventor can prove he or she first built and tested the invention. If prior art is uncovered, the invention may still qualify for a patent if the inventor can show that he or she conceived of the invention before the prior art existed and was diligent in building and testing the invention or filing a patent application on it. An invention will flunk the novelty test if it was described in a published document or put to public use more than one year before the patent application was filed. This is known as the one-year rule. To qualify for a patent, an invention must be non-obvious as well as novel . An invention is considered non-obvious if someone who is skilled in the particular field of the invention would view it as an unexpected or surprising development. Figuring out whether an invention will be considered non-obvious by the PTO is difficult because it is such a subjective exercise what one patent examiner considers surprising another may not. In addition, the examiner will usually be asked to make the non-obviousness determination well after the date of the invention, because of delays inherent in the patent process. The danger of this type of retroactive assessment is that the examiner may unconsciously be affected by intervening technical improvements. To avoid this, the examiner generally relies only on the prior art references (documents describing previous inventions) that existed as of the date of invention. Patents may be granted for inventions that have some type of usefulness or utility , even if the use is humorous. However, the invention must work-at least in theory. Thus, a new approach to manufacturing superconducting materials may qualify for a patent if it has a sound theoretical basis--even if it hasn't yet been shown to work in practice. But a new drug that has no theoretical basis and hasn't been tested will not qualify for a patent. The inventor need not show utility to qualify for a design or plant patent.

Question 3

What is involved in enforcing a patent?

Accepted Answer

Once a patent is issued, it is up to the owner to enforce it. If friendly negotiations fail, enforcement involves two basic steps: making a determination that the patent is being illegally violated (infringed), and filing a federal court action to enforce the patent. Because enforcing a patent can be a long and expensive process, many potential patent infringement suits never get filed. Instead, the patent owner often settles with the infringer. Frequently, an infringer will pay a reasonable license fee that allows the infringer to continue using the invention. To decide whether an inventor is violating a patent, you must carefully examine the patent's claims (most patents contain more than one of these terse statements of the scope of the invention) and compare the elements of each claim with the elements of the accused infringer's device or process. If the elements of a patent claim match the elements of the device or process (called "reading on" or "teaching" the device or process), an infringement has occurred. Even if the claims don't literally match the infringing device, it is possible that a court would find an infringement by applying what's known as the "doctrine of equivalents." In these cases, the invention in the patent and the allegedly infringing device or process are sufficiently equivalent in what they do and how they do it to warrant a finding of infringement. A patent owner may enforce the patent by bringing a patent infringement action (lawsuit) in federal court against anyone who uses the invention without permission. If the lawsuit is successful, the court will take one of two approaches. It may issue a court order (called an injunction) preventing the infringer from any further use or sale of the infringing device and award damages to the patent owner. Or, the court may work with the parties to hammer out an agreement under which the infringing party will pay the patent owner royalties in exchange for permission to use the infringing device. Bringing a patent infringement action can be tricky, because it is possible for the alleged infringer to defend by proving to the court that the patent is really invalid (most often by showing that the PTO made a mistake in issuing the patent in the first place). In a substantial number of patent infringement cases, the patent is found invalid and the lawsuit dismissed, leaving the patent owner in a worse position than before the lawsuit.

Question 4

What is a patent and what can be patented?

Accepted Answer

A patent is a document issued by the U.S. Patent and Trademark Office (PTO) that grants a monopoly for a limited period of time on the right to manufacture, use, and sell an invention. What types of inventions can be patented? The PTO issues three different kinds of patents: utility patents, design patents, and plant patents. Design patents last for 14 years from the date the patent issues. Plant and utility patents last for 20 years from the date of filing. To qualify for a utility patent-by far the most common type of patent-an invention must be: a process or method for producing a useful, concrete, and tangible result (such as a genetic engineering procedure, an investment strategy, or computer software) a machine (usually something with moving parts or circuitry, such as a cigarette lighter, sewage treatment system, laser, or photocopier) an article of manufacture (such as an eraser, tire, transistor, or hand tool) a composition of matter (such as a chemical composition, drug, soap, or genetically altered life form), or an improvement of an invention that fits within one of the first four categories. Often, an invention will fall into more than one category. For instance, a laser can usually be described both as a process (the steps necessary to produce the laser beam) and a machine (a device that implements the steps to produce the laser beam). Regardless of the number of categories into which a particular invention fits, it can receive only one utility patent. If an invention fits into one of the categories described above, it is known as "statutory subject matter" and has passed the first test in qualifying for a patent. But an inventor's creation must overcome several additional hurdles before the PTO will issue a patent. invention must also: have some utility, no matter how trivial be novel (that is, it must be different from all previous inventions in some important way), and be non obvious (a surprising and Significant development) to somebody who understands the technical field of the invention. For design patents, the law requires that the design be novel, non-obvious, and non-functional. For example, a new shape for a car fender, bottle, or flashlight that doesn't improve how it functions would qualify. Finally, plants may qualify for a patent if they are both novel and non-obvious. Plant patents are issued less frequently than any other type of patent.

Question 5

When does patent protection end?

Accepted Answer

Patent protection usually ends when the patent expires. For all utility patents filed before June 8, 1995, the patent term is 17 years from the date of issuance. For utility patents filed on or after June 8, 1995, the patent term is 20 years from the date of filing. For design patents, the period is 14 years from date of issuance. For plant patents, the period is 17 years from date of issuance. A patent may expire if its owner fails to pay required maintenance fees. Usually this occurs because attempts to commercially exploit the underlying invention have failed and the patent owner chooses not to throw good money after bad. Patent protection ends if a patent is found to be invalid. This may happen if someone shows that the patent application was insufficient or that the applicant committed fraud on the PTO, usually by lying or falling to disclose the applicant's knowledge about prior art that would legally prevent issuance of the patent. A patent may also be invalidated if someone shows that the inventor engaged in illegal conduct when using the patent-such as conspiring with a patent licensee to exclude other companies from competing with them. Once a patent has expired, the invention described by the patent falls into the public domain: It can be used by anyone without permission from the owner of the expired patent. The basic technologies underlying television and personal computers are good examples of valuable inventions that are no longer covered by in-force patents. The fact that an invention is in the public domain does not mean that subsequent developments based on the original invention are also in the public domain. New inventions that improve public domain technology are constantly being conceived and patented. For example, televisions and personal computers that roll off today's assembly lines employ many recent inventions that are covered by in-force patents.

Question 6

Can inventors who are employed by a company benefit from their inventions?

Accepted Answer

Typically, inventor-employees who invent in the course of their employment are bound by employment agreements that automatically assign all rights in the invention to the employer. While smart research and development companies give their inventors bonuses for valuable inventions, they aren't legally obligated to do so (unless the contract requires it). If there is no employment agreement, the employer may still own rights to an employee-created invention under the "employed to invent" rule. If an inventor is employed-even without a written employment agreement-to accomplish a defined task, or is hired or directed to create an invention, the employer will own all rights to the subsequent invention. If there is no employment agreement and the inventor is not employed to invent, the inventor may retain the right to exploit the invention, but the employer is given a non-exclusive right to use the invention for its internal purposes (this is called a shop right).

Question 7

What can I do about a patent marking that is improperly on a product?

Accepted Answer

The law provides that whoever falsely marks a product with either a patent number, the words "patent" or "patent pending," or other words or numbers implying that the product is protected by a current or pending patent when it is not, and does so with the intent of deceiving the public, "shall be fined not more than $500 for every such offense." It also provides that any person may sue for the penalty, regardless of whether or not such a person is personally harmed. Finally, it allows the suing person to receive half of the recovery from the suit, with the remainder going to the government. In a case against Solo Cup Company ("Solo"), Matthew Pequignot, a licensed patent attorney, sued Solo, the well-known maker of many disposable cups, lids, plates, bowls and utensils, for falsely markings its products with two expired patents, U.S. Patent No. RE28, 797, entitled "Lid," and U.S. Patent No. 4,589,569, entitled "Lid for Drinking Cup," and for including the phrase "This product may be covered by one or more U.S. or foreign pending or issued patents" on products that were not protected by any patent or pending patent application. As a qui tam relator he was able to bring the case against Solo and win. Individuals who have chosen to research expired or invalid patent markings and who properly file qui tam actions may obtain financial gain by suing product manufacturers who continue to mark their products with expired patents.

Question 8

How can an inventor make money with a patent?

Accepted Answer

On its own, a patent has no value. A patent becomes valuable only when a patent owner takes action to profit from his or her monopoly position. There are several basic approaches to making money from a patent. Some inventors start new companies to develop and market their patented inventions. This is not typical, however, because the majority of inventors would rather invent things than run a business. More often, an inventor makes arrangements with an existing company to develop and market the invention. This arrangement usually takes the form of a license (contract) authorizing the developer to commercially exploit the invention in exchange for paying the patent owner royalties for each invention sold. Or, in a common variation of this arrangement, the inventor may sell all the rights to the invention for a lump sum. A license is written permission to use an invention. A license may be exclusive if only one manufacturer is licensed to develop the invention or nonexclusive if a number of manufacturers are licensed to develop it. The license may be for the entire duration of the patent or for a shorter period of time. The developer itself may license other companies to market or distribute the invention. The extent to which the inventor will benefit from these sub-licenses depends on the terms of the agreement between the inventor and the developer. Especially when inventions result from work done in the course of employment, the employer-business usually ends up owning the patent rights and receives all or most of the royalties based on subsequent licensing activity. In many cases, a developer will trade licenses with other companies called cross-licensing so that companies involved in the trade will benefit from each others technology.

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