To Patent or Not to Patent: How and Why

By James B. Hicks

Okay, so you invented the internet or some other marvelous thing, but you didn’t get elected President of the United States, and you decide to pursue a different career path. If you decide to market your invention, should you apply for a patent? Perhaps. A patent can give you a government-protected right to stop others from making, using, selling or importing an invention or design within the United States for a certain period of time, usually from 14 to 20 years, thereby creating what is in effect a legal monopoly. Take that, Bill Gates!

Patents are often confused with trademarks or copyrights. However, though there can be overlaps, they are designed to give different types of legal protection. For example, a trademark generally protects a trade name or other mark of product identity (such as the Coca-Cola name and logo), while a copyright generally protects the original expression of an idea (such as a script or an artistic design).

In contrast, a patent generally protects an invention. There are two principal categories of patents, namely utility patents and design patents. A utility patent generally protects how something is used or how it works, and can cover such things as machines (a computer, for instance), production processes (such as a method for making computers), or manufacturing or business methods (like a new way to sell computers over the internet), and also improvements to these types of inventions. The other principal type of patent, a design patent, generally protects a product’s design, i.e., its unique look. Patents are normally granted by the U.S. Patent and Trademark Office, and its Website (www.uspto.gov) has further information about both utility and design patents.

A big difference between a patent and trademarks or copyrights is that you must formally apply for a patent. If you write a play, or if you start selling a product under a distinctive mark, the copyright usually automatically attaches to the play, and the trademark generally gets immediate legal protection. (You may still want to register your copyright or trademark for various reasons, including trying to make sure your rights are not lost.)

But if you invent something, you normally have to apply to the Patent and Trademark Office to get a patent issued, or you will generally have no patent protection at all. In fact, if you wait more than a year to apply for a patent after you first offered your product for sale, you may waive your rights, so if your invention has any value and is patentable, you should seriously consider filing a patent application.

The USPTO Website (www.uspto.gov) provides basic application details, but to obtain a patent, an application should generally meet three principal requirements:

First, the invention should be “useful” rather than frivolous. This requirement is not usually a big problem, or you would not likely be applying for a patent in the first place. For instance, if you painted a picture, it would generally not be eligible for patent protection since it is probably not “useful.” (But you would still have rights under the copyright laws.)

Next, the invention should be “novel,” or new. If much of your invention was analyzed in old industry magazines or was generally known to the industry (even in foreign countries), your application may be denied. (Of course, then it would likely not be your invention.) Before filing an application, you may want to research the relevant literature in your field, to ensure the novelty of your invention and avoid obvious pitfalls in the application process. Also, it is often a good idea to maintain written records as you develop your inventions and discoveries, and to preserve models. Prototypes or dated records, even handwritten or scribbled notes, are often critical if several applicants make similar claims.

A third requirement, “non-obviousness,” is related to the novelty requirement, and your patent claim may be rejected or limited if your invention is too similar to existing products or processes (which are usually called “prior art”). The existence of prior art may not be fatal to your entire patent application; for example, if your invention consists of three elements (or “claims” in the patent application), and one of them is obvious in light of prior art, sometimes the other claims may still be patented.

One common complaint about patent applications is they can take a long time to be processed, and in fact the Patent Office sometimes takes two years or more to issue a patent. In the meantime, you can normally label your product “Patent Pending” after you file an application. Even if you cannot enforce the patent until it actually issues, at least you will put the world on notice and protect your rights in the interim. Also, after your patent is finally issued, you should generally mark your products with its patent number, or you may waive any right to seek money damages from infringers.

Many foreign countries also have patent laws offering similar protections, but you usually have to apply for separate patents within those countries to get their laws’ protection. Since United States patents generally give exclusive rights only within this country, you may want to consider pursuing foreign patent applications if your invention has value elsewhere. The Website of the World Intellectual Property Organization (www.wipo.int) has further information on foreign patents.

This article does not provide all the information you need in order to decide whether to apply for a patent at all, or if you decide to do so, how you should proceed. As a general matter, if you want to apply for a patent, you should (1) make sure you invent something really valuable, and (2) hire a good lawyer to assist you with the application.

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Ervin Cohen & Jessup LLP advises Internet and other technology businesses and entrepreneurs on trademark, copyright, licensing, contract, litigation and other matters affecting web sites, e-commerce and other aspects of their businesses.

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This article is published by the law firm of Ervin Cohen & Jessup LLP. The topics discussed are intended to present an overview of current legal trends and should not be construed as representing advice on specific, individual matters, but rather as general commentary on the subject discussed. Articles are not a substitute for the sound advice of compentent legal counsel. Your questions and comments are always welcome. Articles may be reprinted with permission. Copyright © 2000 Ervin Cohen & Jessup LLP.