By Craig M. Scott, Partner, Duffy, Sweeney & Scott, Ltd., [email protected]
Patents can offer a strategic and competitive advantage to a company and be a significant source of its inherent value. A United States patent may issue for any new and useful process, machine, or composition of matter. Products and things as diverse as light bulbs and business processes are patentable. These types of patents are often referred to as utility patents, and the term of a utility patent is 20 years from the date of application.
Design patents, in contrast, protect the ornamental features associated with an article of manufacture (e.g. the novel shape of an electric guitar), and are akin to copyrights that we featured in the last edition. The term of a design patent is 14 years from the date of issuance. Both design and utility patents confer a legal monopoly upon the owner to exploit the claimed invention.
To Patent or Not to Patent? But just because an invention may be patentable, should it be? A patent is a public document, intended to advise the world as to the current state of the art so others may improve upon it. Would your company be better served maintaining the invention as a trade secret, such as the method to manufacture a product in a more economical manner? Some companies patent everything they possibly can but engage in little or no analysis as to the costs and benefits of seeking patent protection in the US and abroad.
The following is a list of considerations that a company should discuss before applying for a patent:
Is the invention owned by the Company? Does your company have written agreements signed by your employees and consultants requiring them to assign rights to any invention to the company?
Is a patent the best form of protection? There is an intersection between trademark, copyright, and patent rights. Algorithms and computer software, for example, may be patented and/or copyrighted. Certain ornamental features of a product may be trademarked (referred to as "trade dress") or patented. There is a dramatic difference in cost between copyrights (relatively inexpensive) and patents. Other rights arise as a matter of law (trade secrets), and no registration is required to maximize your rights and remedies.
Companies often utilize a multi-prong approach to maximize intellectual property protection through broad patent claims, provisional patent protection, and continuation patents. This is called the "Picket Fence" approach to protecting IP. However, your company should understand all its options before deciding on the best approach to protect its intellectual property. Here are some factors to consider:
Consider not "Picket Fencing" your Invention. Consider not "picket fencing" your invention based on your company’s particular requirements. The following is a list to help guide this process:
What does your market research tell you? Can you commercially exploit the invention? In other words, will it sell?
Is the shelf life of the invention short or long? If short, weigh the costs and benefits of a patent.
Is there an equivalent structure in the public domain? In other words, is your invention an improvement over what is available for free?
Can similar technology be licensed or acquired?
What is the cost of domestic and/or international prosecution of the patent?
Will your company enforce its patents rights in each of these countries?
Due Diligence. Prior to filing a patent application, consider having patent searches performed to determine the novelty of the invention and other inventions (prior art) that my influence your decision making.
Opinion Letter. Depending on the results of the searches, consider commissioning a formal, comprehensive clearance opinion prepared by a patent lawyer.
Provisional Patent Protection. Consider filing a provisional patent application to obtain the earliest possible date of invention. Provisional patent protection establishes your priority to the invention. Get your place in line.
If the company decides to proceed, consider the Picket Fence approach to maximize your company’s patent protection.
For more information, please contact Craig M. Scott, Esq., Partner, Duffy Sweeney & Scott, Ltd., [email protected] and feel free to visit our web site at http://www.duffysweeney.com/content/scott.htm.
