As a business owner, you have a right to protect your inventions.
“Intellectual Property” (“IP”) is an amorphous area of the law built to protect inventions or creations. The subsections of IP include trademarks, patents, copyrights, and trade secrets. Each subsection focuses on a different type of asset and allows business owners to earn recognition or financial benefits from the applicable asset.
What is a patent?
A patent is a technical asset that protects inventions, corporate products, and service products for the business inventor. Patent protections allow a business inventor to exclude other from making, using, offering, or selling the invention within the U.S. and from importing the invention into the U.S.
Patents publicize the schematics and designs of an invention for a period of 20 years from the date of when the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.
There are three types of patents:
| Utility Patents | Design Patents | Plant Patents |
| Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof | A new, original, and ornamental design for an article of manufacture | Asexually reproductions of any distinct and new variety of plant |
| Example: | Example: | Example: |
| Electrical circuit boards; Apparatus for network-based electronic transactions; 3D Printers; GPS Bluetooth | Statue of Liberty; iPod Shuffle; Crocs Bench design; Messenger bag; Toy bank (toilet shape) | New breed of rose; New type of mushroom |
What can I patent?
Patents are, generally, for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement” of these categories.
The word “process” refers to a process, act, or method. The focus of this category is industrial or technical processes for businesses.
The term “machine” refers to articles that are made and manufactured for the purposes of technical machinery.
The term “composition of matter” relates to chemical compositions, which includes include mixtures of ingredients and chemical compounds.
A key component of the patentable subject matter is that is “useful,” which refers to whether the invention operates for its intended purpose.
For example, INVENTOR develops WIDGET for the purposes of providing X-RAYS. While developing WIDGET, he discovers it is also effective as a bird feeder. INVENTOR files patent for WIDGET as a bird feeder, rather than for X-RAYS. Was INVENTOR’S widget pass the “useful” bar? No! WIDGET fails to meet its manufactured purpose, as it does not operate to perform its intended purpose and therefore will be denied a patent.
Another key component is that patentable subject matter is “novel” as defined under patent law. This means an invention must be new, useful, and non-obvious. While seemingly straight forward, an invention is considered “novel” if it is not the subject of a prior patent application or printed media. If your invention has been previously disclosed, there is a grace period of up to one year from the original date of publication, which provides one year to file for a patent.
While practically all human invention can be patented, certain inventions cannot be patented such as:
- inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon;
- laws of nature;
- facts;
- physical phenomena; and
- abstract ideas.
How do patents work?
Patents are enforceable only within the United States, U.S. territories, and U.S. possessions.
As stated previously, patents provide the right to exclude others from making, using, offering for sale, selling or importing the invention. A patent holder does not have the right to make, use, offer, sell, or import the invention! Such rights are granted via assignment or license agreements.
Patent protections are subject to time limitations. Utility patent last for 20 years and design patents last for 15 years. Once a patent expires, the invention falls into the public domain. At this point, anyone can make, sell, use, and import the patented invention to the U.S. without having to obtain permission.
To obtain a patent, the application discloses everything known about the invention, including how to make the invention, how the invention works, and how the invention is used by the end-user. Therefore, even before a patent expires, the public nature of a patent means that individuals can view your patent documentation, create improvement, and file new patent applications based upon your original patent.
If patents are limited and public, why would I want a patent instead of a trade secret?
While trade secrets protect confidential business information to provide a competitive advantage, patents offer protection specifically to inventors over their invention, machines, process, or design.
To maintain trade secret protections, a business must ensure that the invention or process remains confidential and cannot be reverse engineered. As technology progresses, reverse engineering has become more accessible. Therefore, if a third-party reverse engineered the schematics or designs of your inventions, they would be able to sell a competing product that is identical to your invention. With patent protections, a business could stop this competitor from using, making, and selling the exact copy of the patented product!
Similarly, if a business seeks to protect an invention solely through trade secrets while also selling it commercially, the business will still be required to file a patent application to protect that invention within 12 months of first offering the invention or product for sale. Otherwise, the invention will be considered “prior art” and no longer be eligible for patent protection.
Typically, patent protection is superior to trade secret protection when you are offering a product to the public as trade secret protection is limited to protecting against “misappropriation.”
Where do I start?
Before filing a patent application, business inventors must take special care to not render their invention or idea unpatentable. As such, it is important to consult a licensed attorney prior to filing a patent application.
Drafting a patent application is a deceptively difficult task. A licensed attorney can conduct a prior art search prior to filing a patent application and help the business inventor decide on which type of patent the invention falls under and which type of application is right for the inventor. A licensed attorney will also have access to draftsman who will be necessary for creating the requisite schematics and designs for the patent application.