There are three types of patents-plant patents,
design patents and utility patents. Unless you dabble in genetically engineered
fruits or vegetables, you don't need to be concerned with plant patents. However,
you should be knowledgeable of design patents and utility patents.
As the name implies, design patents cover not the
technology behind a product, but the actual design--its exterior appearance and
what makes it look different from another product that may do the same or
similar things. The purpose of a design patent is to protect a product that has
a unique look. It is not uncommon for manufacturers to periodically give a
product a facelift of sorts to improve sales. There might be no significant
change to what the tool, device, machine or other item does, but improving its
appearance can give sales a lift, and it might make sense to patent the new
Utility patents constitute more than 90 percent of
all patents issued.† A utility patent
covers the technology behind a product or service. If the invention is "novel"
(i.e., it is new and not a product or service that is already being
manufactured or offered for sale) and it is "non-obvious" (i.e., it is not
something that someone could easily figure out on his own), it may qualify for
a patent. Any truly new technology should be patented to protect this
potentially valuable intellectual asset.
Brands and Logos
Both patents and trademarks are issued by the U.S.
Patent and Trademark Office (an agency of the Department of Commerce), but they
are very different. If a product's design includes the use of a brand name
and/or the company's logo, it would not normally qualify for a design patent
unless there were other unique aspects of its design. However, the company logo
should definitely be trademarked and, if the manufacturer or designer of a
product has a unique brand or name for the product (Sears' DieHard battery and Apple's
iPod are two good examples), the brand or product name should also be
trademarked. Unlike a design patent that only refers to the exterior appearance
of a product, a trademark covers use of the logo, brand or product name.
If you're wondering whether or not you should file
for a design patent, a utility patent, or a trademark, the answer is clearly
"Yes!" Each new product you develop, and each improvement or updating of a
product, needs to be considered on a case-by-case basis for each of these forms
of intellectual property protection. While a product that uses a new technology
(and really is an invention) should probably be patented, another product that
is simply an update to a previous technology might not be applicable for patent.
The DieHard battery was not a new technology or even an improvement to a
previous technology, so it was not the subject of any patent applications.
However, the DieHard trademark very effectively created a distinct brand and
image for Sears' high-end batteries, and the trademark has since been extended
to cover other products. While iPod was trademarked by Apple, the device is
also covered by a slew of patents.
Filing for a Patent
Any company seeking to patent an invention should
seek the services of a patent practitioner--a patent agent or patent attorney. These
are professionals in what is known as "patent prosecution," which is the
process of applying for and ultimately receiving a U.S. Patent. Both are
licensed by the U.S. Patent and Trademark Office to assist patent applicants. Each
patent agent and patent attorney specializes in specific scientific areas such
as electrical engineering, chemistry or physics.
It currently takes about three years to receive a
patent, so the sooner you file your application, the sooner you will receive
your patent. You can file what is called a "provisional" application that
essentially establishes a point in time at which your invention entered the
patent application process, and doing so could give you an advantage should a
competitor file for an identical or very similar patent at a later date.
Consult with your patent agent or patent attorney as to whether or not this is
the right strategy for you.
There is an alternative to filing for a patent for
an invention, and that is to keep it a trade secret. If your invention can
easily be reverse-engineered--that is, a competitor can pretty easily figure out
how you did what you did by just buying your device or getting a schematic of
it off your Website--you definitely want to patent it. If, however, you believe
it would be very unlikely that a competitor could reverse-engineer your
invention, and it is equally unlikely that someone would independently invent
your invention on his or her own, you can keep your invention a "trade secret,"
and you are not required to divulge your invention and its intricacies. This is
what Coca-Cola chose to do with the formula to its popular drink. Despite many
efforts, no one has been able to re-invent the formula, so this turned out to
be a wise decision by Dr. John Pembert, the Atlanta pharmacist who invented Coca-Cola,
founded the company and died very rich. Had Pembert filed a patent on the
formula, it would have expired around 1907 or 1908.
Once a patent has been issued, if a competitor
brings to market a product that infringes on your patented invention, you have
several courses of action. You can sue the infringer for damages, and that
includes what the infringer would have had to pay you in royalties to license
the patent. In some instances, you may be able to recover lost profits on the
products the infringer sold, if you can prove that you lost sales due to the infringer
making those sales. In some cases, you may even be entitled to what is called
"injunctive relief." The court may order the infringer to cease sales of the
infringing product. So, for making public your invention you receive in return
a patent that provides a level of protection for your intellectual property. It
is important to understand that patent infringement is still infringement
whether it is willful or unintentional. It is entirely possible that a
competitor could independently--and very innocently--re-invent what you invented.
But since you have a patent, your invention is protected and the competitor's
Every industrialized nation has its own patent
system, and the European Union has a patent system that covers all the E.U. member
countries. A U.S. Patent only protects you in the U.S. A company in Germany, for
example, could produce an infringing product, sell it all over Europe, Asia,
Africa and South America, even Mexico and Canada, and you would have no
recourse until the company started selling the product in the U.S. And in that
case, you could only sue for damages for U.S. sales of the product. If you
are likely to sell the products that use your new technology in other nations,
and especially if you have competitors in those nations, you should also file
for patents in those countries.
Since patents are not permanent, the process of "reexamination"
can take place. This is a reconsideration of a patent by the Patent Office, and
it most often occurs when an alleged infringer demands that the patent be
reexamined in the hope that it will be invalidated, putting an end to the
patent infringement litigation since there is no longer a patent to enforce. A
patent can be invalidated by finding prior art (documentation that proves, or
at least suggests, that the invention for which the patent was issued actually
existed previous to the patent application).†
Not all prior art is invalidating, and during reexamination it is the
patent owner's job to prove that the prior art does not invalidate the
Ingham is director of licensing at General Patent Corporation.
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