Patent
From DDL Wiki
A patent is a type of intellectual property that provides a set of exclusive rights granted by a state to a patentee (the inventor or assignee) for a fixed period of time in exchange for the regulated, public disclosure of certain details of the invention, which is new, inventive, and useful or industrially applicable.
There are three classes of patents
- Utility patents: For a "useful, novel and nonobvious" invention.
- Design patents: For ornamental design only.
- Plant patents: Agricultural engineering.
The utility patent is most relevant for the DDWiki audience, and this article focuses on utility patents. This article does not provide legal advice - any party interested in applying for a patent should seek proper legal council.
Contents |
Motivation
The motivation of patent law is to provide incentive for people to create new inventions by providing a mechanism by which the inventor can recoup costs of high risk research & development and startup activities and earn profit from the work of invention. Four rationale for the patent system are:
- Public Disclosure: Patents facilitate and encourage disclosure of innovations into the public domain for the common good. If inventors did not have the legal protection of patents, they might prefer or tend to keep their inventions secret. Awarding patents generally makes the details of new technology publicly available, for exploitation by anyone after the patent expires, or for further improvement by other inventors. Furthermore, when a patent's term has expired, the public record ensures that the patentee's idea is not lost to humanity.
- Encourage R&D: Patents provide incentives for economically efficient research and development (R&D). Many large modern corporations have annual R&D budgets of hundreds of millions or even billions of dollars. Without patents, R&D spending would be significantly less or eliminated altogether, limiting the possibility of technological advances or breakthroughs. Corporations would be much more conservative about the R&D investments they made, as third parties would be free to exploit any developments.
- Encourage Commercialization: In many industries, once an invention exists, the cost of commercialization (testing, tooling up a factory, developing a market, etc.) is far more than the initial conception cost. Unless there is some way to prevent copies from competing at the marginal cost of production, companies will not make the investment.
- Encourage Improvements: Patent rights create an incentive for companies to develop workarounds to patented inventions, thereby creating improved or alternative technologies that might not otherwise have been developed.
Utility patent
Patents are for inventions, not "ideas". To qualify for a utility patent, the invention must be
- Useful: Invention must be useful to someone in some context;
- Novel: Invention must not be prior art in public domain. This also means that the invention itself must not appear in the public domain before patenting (see disclosure and provisional patents);
- Nonobvious: If the invention would be clearly evident to those with "ordinary skill in the art" who faced the same problem as the inventor, then the invention is considered obvious and not patentable. Of course, this criteria can be a source of disagreement.
Prior art
Prior art refers to any product or invention that is obvious or evident from existing products, publications, or prior patents. Existing patents are considered part of the prior art even if the product described has never been produced. The U.S. Patent and Trademark Office has a searchable database of existing patents, and Google has a new patent search interface.
Disclosure and Provisional Patents
In the U.S., a patent application must be filed within one year of the first public disclosure of an invention. In most cases, public disclosure refers to a description of the invention (at a level of detail that would enable a person "of ordinary skill in the art" to produce the invention) to an individual or group of people who are not obligated to keep the invention confidential.
Since 1995 in the U.S., it is also possible to file a provisional patent, which is relatively easy and inexpensive. This gives the inventor an additional year where the product may appear in the public domain while the inventor decides whether or not to file a full patent (which is more costly and time consuming). This time can be used for market research, solicitations to manufacturers who may wish to license the technology, etc. If the inventor applies for a full patent within 12 months of the provisional patent, (1) patentability is evaluated as though filed on the earlier provisional application filing date, (2) the resulting patent is treated as though filed on the earlier provisional application filing date, and (3) the twenty-year patent term is measured from the later non-provisional application filing date. While provisional patent applications need not adhere to the strict style requirements of full patents, "the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application."
Most international patent systems do not allow the one year grace period following public disclosure and require a patent to be filed prior to disclosure in the public domain. Many such patents may also be filed within one year of filing a U.S. patent if the U.S. patent is filed prior to public disclosure.
Claims
The core of the patent protection revolves around writing claims. Claims are a precise set of phrases that define the essential aspects of the invention. The patent only legally prevents others from producing the invention described in the claims - the remainder of the application is basically context for the claims. Care is taken to make claims as broad as possible in order to maximize coverage of the protection (ex: "tubular member" instead of "tube"), without crossing the line to become too general or infringe on existing patents. Needless to say, claims must be written very carefully, and they general require legal council.
Filing
The U.S. Patent and Trademark Office has information, forms, and an online system for submitting patent applications. A patent attorney should be consulted prior to filing a patent; however, building up documentation prior to meeting with an attorney can help smooth the process, help the attorney to quickly assess patentability, and reduce legal costs. A provisional patent can be filed without a patent attorney, but it is helpful to get advice from someone who has been through the process since the provisional patent only acts as a "place holder" for the items mentioned in the document. It is helpful to come prepared with:
- A strategy on patent type (provisional or full) and timing of disclosure and patent applications
- A survey of prior inventions, including products on the market as well as patents
- A description of the invention, including
- Title
- List of inventors
- Field of the invention
- Background of the invention
- Summary of the invention
- Drawings with brief descriptions (these need to follow special rules for a full patent, but rules are relaxed for a provisional patent)
- Detailed description of the invention
- A preliminary outline of the invention's claims
- A list of possible variants of the invention that may be disclosed defensively to prevent competitors from patenting these variants
Looking at existing patents on the USPTO or Google Patent Search websites can help provide a feel for what is expected; however, typically the legal details (such as wording of claims) require iteration with a patent attorney. The inventor's role is to be well-prepared for meetings with the attorney with appropriate documentation.
