« Castings – Part 2: An Introduction | Main | What is Draft? »
Vital Patent Info for Inventors
By Mark L. Casey | October 7, 2011
Inventors are faced with a lot of legal questions about how to protect their inventions. Late night television is a frequent place for companies to sell you on using their services to protect your invention. We thought we would ask a true expert in the field.
James Babineau is an intellectual property (IP) attorney with Fish & Richardson P.C. in Austin, TX. Artful Sourcing asked Jim a few questions that may be helpful to you.
AS: Jim, what rights do I enjoy if I am granted a patent from the USPTO for my new widget, and for how long?
JB: The grant of a US patent is only the grant of the right to ask a Federal court to order an infringer to stop using your invention without permission, and to recover damages for past infringement. The first common misconception about patents is that they are self-enforcing. If you find someone infringing your patent, there is no US bureau of patent enforcement that will go tell them to stop. You have to file a civil suit, at potentially great expense to both you and the infringer, to enforce your patent right. The second common misconception is that your patent gives you the right to practice your invention yourself. But to the extent that your invention is an improvement on an earlier invention, practicing your improvement may necessarily require practicing the earlier invention, and thus require a license from that inventor. It is not the job of the patent office to determine infringement, and granting you a patent does not mean that they’ve concluded that practicing your invention isn’t blocked by an earlier patent.
This is easier to understand when you keep in mind that the USPTO doesn’t grant patents for widgets per se. They grant patents for inventions. Any given widget may embody dozens of separate inventions. A data processing chip is a good example of a small ‘widget’ likely subject to multiple patents.
AS: How new, special, or different does my widget have to be in order to be granted a patent?
JB: In all countries, the grant of a utility patent requires that the invention be not only new but exhibit something more than just novelty. In the US, the real hurdle for most inventions is that they must claim inventions that are non-obvious in view of everything that preceded them. The standard for non-obviousness is murky, even to a patent attorney, examiner, or Supreme Court justice. The only sure bet is that ‘obvious’ in the world of patent law does not mean the same as ‘obvious’ in everyday speech. There are many ways to consider patent-related obviousness, and the best advice I can give is to enlist the help of a patent attorney in making such determinations. I have seen patents granted and enforced that to a layperson seem to be claiming trivial inventions. And I have seen patent examiners hesitate to grant patents for seemingly game-changing advances.
AS: Can I patent an idea?
JB: All patents are to ideas. Utility patents are the type of patent that most people think of, in which the invention is an idea you can articulate in words. Every utility patent ends with numbered sentences starting with the words “I claim” or “We claim” that are the ‘claims’ defining the invention – much like the plot lines on a deed establish the bounds of a real property right. The idea expressed in those sentences is what is being protected. A law professor once encouraged me to think of patents this way: every utility patent claim can be boiled down, essentially, to the statement of the realization of a cause and effect, like “if I do X, I get Y.” Such an idea may enable countless embodiments, or examples, in the form of widgets, or methods of making or using widgets, for example.
AS: Once my patent is issued in the USA, does it protect me in China or any other country?
JB: Patents are issued by sovereign governments and are only enforceable with respect to acts occurring within their territory. So no, a US patent is not enforceable in China. Some countries have banded together to share patent office duties, such that their combined organization issues patents that may then be validated in the individual countries in order to be locally enforceable. The European Patent Convention, for example, established the European Patent Office that issues patents that may be validated in various European countries. If such a patent is not timely validated anywhere, it is of no commercial significance.
AS: I always see “Patent Pending.” What does that mean?
JB: ‘Patent Pending’ simply means that you have applied for a patent. The value of such a mark is merely as a warning to would-be infringers, that if you do get a patent they may be forced to shift course. A pending patent application is not enforceable.
Topics: Intellectual Property, Inventors/Inventions, Legal, Patents | 1 Comment »
One Response to “Vital Patent Info for Inventors”
Comments
You must be logged in to post a comment.
October 11th, 2011 at 9:32 am
[...] You can find that interview at my Artful Sourcing blog here. [...]