Section Review

What every lawyer must know about patent law

Inna Shtivelband Landsman is a registered patent attorney. She offers a free multimedia Web seminar entitled "From Idea to Patent: A Roadmap for Protecting Intellectual Property with Patents," which can be downloaded from http://www.sciencelawyer.com.
This article originally appeared in the Boston Bar Association Solo & Small Practice Committee newsletter.

Why should a non-specialist care about patent law? Because your clients may trigger patent law traps even before they retain a patent attorney. Inventors commonly lose the right to patent their inventions by engaging in avoidable activities. With some basic knowledge, you can help your clients promote their interests by avoiding these traps.

1. What is a patent?

A patent is a set of exclusive rights granted by the United States Patent and Trademark Office ("Patent Office"). It gives its owner the right to exclude others from making, using, selling, offering to sell or importing the patented invention. These rights are created when the patent is granted. They last until 20 years from the "effective" filing date of the patent application that became the patent.

2. What is patentable?

A patent can be obtained for virtually anything that does not exist in nature, and that is novel, non-obvious and useful. Patentable inventions range from the highly technical to the recreational. For example, I recently secured patent protection for X-ray security equipment (Patent Number 6,628,745) and also for a device for walking on water (Patent Number 6,764,363, featured in the Aug. 2, 2004, New York Times business section).

3. Who owns a patent?

A patent application is filed in the name of the inventor. It can be assigned or licensed by contract.

Who owns patent rights to an employee-conceived invention? Often, employees sign agreements by which they agree to assign their intellectual property to the employer. When there is no such agreement, the employee is usually the owner of patent rights in his invention (with some exceptions). If you represent an employer, it is critical to make sure their employees execute appropriate agreements before any inventions are conceived.

4. How does one get a patent?

The first step to securing patent protection is filing a patent application in the Patent Office. The Patent Office examines the application to determine whether the invention is entitled to patent protection.

5. Easy ways to lose the right to patent an invention

As part of the examination process, the Patent Office determines whether the invention is novel and non-obvious as compared to the "prior art." Generally speaking, "prior art" encompasses what was known in a given technical area before the invention date or application filing date. Prior art can be created by an inventor as well as by other people. This section discusses common but avoidable prior art traps.

A. Sales and offers to sell

Pursuant to 35 U.S.C. 102(b), an invention cannot be patented in the United States if it was "on sale in this country ... more than one year prior to the date of the application for patent in the United States." The phrase "on sale" has been defined very broadly in this context. For example, an offer to supply or manufacture the invention may place it "on sale." Similarly, an inventor's offer to sell or even lease the invention may put it on sale under certain circumstances. Most of the rest of the world does not provide this one-year grace period, and, hence, public disclosure of the invention will often lead to the immediate loss of foreign patent rights. Caution your clients against engaging in commercial activity before they have consulted a patent attorney.

B. Printed publications

According to 35 U.S.C. 102(b), an inventor is barred from obtaining patent protection for an invention if it "was described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for a patent in the United States." (Again, most countries require absolute novelty and do not provide this one-year grace period.)

Printed publications under this section encompass more than just articles and books. They include meeting abstracts, Web site contents, television broadcasts and even one copy of a doctoral thesis that is filed and indexed in one library but never read. The key considerations in determining whether a printed publication can serve as prior art is whether the reference was publicly accessible more than a year before the application filing date and whether it provides sufficient information to enable a person skilled in the relevant arts to understand and re-create the invention.

C. Other types of prior art

Other types of prior art include foreign patents and domestic public use of the invention that precede a patent application by at least one year. A person cannot get a patent for an invention if the same invention was known or used by others in the U.S. before the person conceived the invention. Similarly, a person cannot get a patent for an invention that was adequately described in any printed publication or patent that predates the person's conception of the invention.

D. Patentability of inventions

Any single piece of prior art can be used to show that an invention is not novel, while multiple pieces of prior art can be combined to show obviousness. Hence, even partial disclosure of an invention or sale of an invention component can lead to the loss of patent rights if it makes the invention obvious. A specialist should be retained to determine whether an invention is likely to be patentable since the required analysis is often complex and counterintuitive.

Conclusion

This article discusses some of the many traps that can lead to the loss of patent rights. Fortunately, many of these traps are avoidable. Since these traps are time-sensitive, those interested in patent protection should seek the advice of a competent patent attorney as soon as their invention is conceived.

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