You’ve heard of patents, but you ask:
Patent is often considered a luxury to a small and midsize business. More often than not, you find out about the importance of patents after someone accuses you of a patent infringement. It could be a cease and desist letter or a service of process.
The problem with a patent lawsuit is that it’s so expensive that most small businesses can’t afford it. What happens then? You enter into a settlement agreement to avoid going to the courthouse. In fact, this can be cheaper than winning the lawsuit after costly legal proceedings.
Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s). Roughly speaking, it should be an all-inclusive manual for your invention.
You're disclosing your invention to the public, and in exchange you'll be granted a monopoly for a limited time. To ensure fairness in this deal, you're required to fully and comprehensibly disclose your invention without hiding anything.
If you want to hide something from the public, you're free to do so by opting out from disclosing it, in which case you shouldn't claim it either. However, you shouldn't attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.
For example, let's say you know two ways to make your invention. You know one works better than the other, but you don't want people know about the better one. If you disclose the other one only, the patent will be held invalid.
You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can't patent it.
Although you can learn a lot from the patent applications you found during your clearance search, it's still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don't need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).
Talk to the lawyer who reviewed your claim(s).
Patent is an intellectual property right, which is not aimed to boost the economy but intended to advance science and technology. So, many business-minded people will struggle with the basic concept of patent and how it should be used for their business.
On the other hand, patent is recognized as the most reliable and strong intellectual property right in business. You probably heard about its importance even if you really don’t know much.
The hurdle for small businesses in developing a strong patent portfolio is the expense. Does it have to be prohibitively expensive? Well, it doesn’t have to be. The more you know about the patent, the more likely you will find a solution for your business yourself.
If you started using a name, logo, image, or even a sequence of musical notes as a symbol that stands for your product or service, you already have a trademark. Trademark registration is a way to give an affirmative notice to the public that you are using the mark. The registration offers some perks, which are very helpful for your business, but the intellectual property right is not created by it.
On the other hand, a patent right is created when the government issue you a patent because your creative work doesn’t itself create a property right. If you invented something, you have a choice. You can disclose the ins and outs of the invention in exchange for an intellectual property right or just keep it under your sleeve.
A patent application usually discloses something you want to hide from the public as the law requires that (usually after 18 months from the application date) your application be published. In other words, everyone in the world will be able to access the disclosed information in the patent application.
If you have a technology that is immune to reverse-engineering and you are confident that you can keep the secret, getting a patent is probably more of a public service than a business move. Of course, there are instances that you want to open your technology to make it an industry standard. In this case, you patent the technology so people can learn about it, and you promise that you won’t withhold this patented technology unfairly (like demanding unreasonable license fees to discriminate your competitors).
On the other hand, if your technology is not immune to reverse-engineering or you know others will soon catch up your progress, you likely need a patent protection. It will deter copycats and protect your business from an instance where someone else is issued a patent for the same technology and sues you. This situation can be also prevented by disclosing your work to the public in advance because the means for disclosure doesn’t have to be a patent application. Though, in this case you’re simply giving up your rights to the invention.
There's utility patent, which is basically what you think patent is. And there's design patent, which is somewhat unpopular but got the attention when Apple sued Samsung for infringing its design patent.
These two types likely cover all your needs. If you want to protect the cosmetic features of your product, consider design patent. For all other cases, you'll be thinking a utility patent.
To add, if your design feature has a utility in it (i.e. when design serves a special function), then you will probably have to go with a utility patent.
Even if nobody really patented an idea, the idea might be known to many as a common sense or to a small number of people known as experts or scholars. It doesn't matter how many people know it.
When you go into detailed analysis, it gets more complicated. Let's say your company is the first to sell a mouse pad made of bamboo and you want to patent it.
Unfortunately, it's not. The law will not only look at the things that already exist but also guess what can be done with existing technology and skills. I mean bamboo is a sturdy and hard material that can be easily shaped into a small plate. The law will likely say that your new idea of making a mouse pad with a bamboo was obvious. Basically it's saying that "we don't need an inventor to do that."
The law provides a short list: process, machine, manufacture, or composition of matter. If you think about it, it's pretty broad. In the above example, we discussed a bamboo mouse pad as a manufacture, which we concluded not patentable.
However, you may have a ground-breaking manufacturing method to process a raw bamboo tree into a large plate that can be easily cut into any shape of mouse pads. Well, that might be a patentable "process".
We can go further. If you designed and made a machine for the processing of raw bamboo trees, you may patent the machine as long as it satisfies other requirements. As you can guess, inventors often patent a manufacture, the process of making it, and the machine that performs the process at the same time.
This is usually not a concern because the law doesn't ask for a good one. If you can find a single use for your invention, that'll be fine. The use doesn't have to be new or better than others. In fact, even if your method of processing bamboo turned out to be too expensive to make economic sense, it still has a utility in the eye of the law.
Patent clearance search is called a Freedom-To-Operate opinion because it reveals others' patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.
For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle's body design. Without the body, you won't be making a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can't practice your right.
You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).
What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there's a patent lawsuit, the court may side with either your attorney or your opponent's attorney.
However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let's say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney's advice that there's no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else's right). The penalties can increase the damages up to three times.
Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that's in the public domain.
Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can't be imported into the U.S. Of course, the other way around is true.
When there's a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.
Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim "patent pending" from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.
You discloses something other people don't know, and in exchange other people can't use it for a limited time period (about twenty years) unless you allow them. It's a win-win. You don't have to worry about someone else stealing your idea, and the others can learn and improve your invention.
Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there's no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office ("USPTO") issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don't go to the USPTO (nor to a law enforcement agency) but to courts.