Intellectual Property: A Guide for Engineers - American Bar Association

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one of the oldest of federal agencies, having been established in 1836 to provide an orderly and systematic examination of patent applications by professional examiners, all of whom are either engineers or scientists, and many of whom in addition have legal education and experience. The U.S. PTO is a key agency of the U.S. Department of Commerce employing more than 2500 examiners. Each of those, in turn, is assigned to examining patent applications in a very narrow area of technology. This organization permits each examiner to become an expert very quickly in his or her specific area of technology.

      A U.S. patent is a formal legal grant by the federal government that gives the inventor a legally enforceable right to exclude others from practicing the invention described and claimed in the patent. The federal government grants this right, for a term ending 20 years from the date of filing of an application for a patent, to encourage the public disclosure of technical advances and as an incentive for investing in research and development and commercializing the results. Thus, the overall progress of technical innovation is favored, while at the same time inventors are rewarded for their specific contributions. Like other forms of property, the rights symbolized by a patent can be inherited, sold, assigned, licensed or rented, mortgaged, and even taxed. Patents are national in character. Thus, a U.S. patent is enforceable only in the United States and its territories. If a company wants to practice an invention in foreign countries, separate applications must be filed in those countries or in regional patent offices that serve specific foreign countries. As pointed out later in the section on International Protection of Intellectual Property, the United States is a member of international treaties that facilitate the filing of patent applications in foreign countries.

      Congress has specified that a patent will be granted if the inventor files a timely application that adequately describes a new, useful, and unobvious invention of proper subject matter. The following conditions must be met.

       ✓ To be timely, an application must be filed within one year of certain acts, by the inventor or others, which place the invention in the hands of the public, i.e., patented or published anywhere in the world, on sale or in public use in this country.’1 This one-year grace period, however, is not available in most foreign countries. A U.S. inventor who wants to obtain corresponding foreign patents must first file an application in the U.S. before any disclosure, whether in written or oral form, of the invention to the public.

       ✓ The description of the invention in the application must be complete enough to enable others to practice the invention (“enablement”). Moreover, the application must describe the best manner (“best mode”) known to the inventor of carrying out the invention.

       ✓ The described invention must be new, i.e., not invented first by another or identically known or used by others in this country or patented or published anywhere in the world before the actual invention date (not the application filing date). \Z\ The invention also must be useful, i.e., serve some disclosed or generally known purpose.

       ✓ Finally the invention must be unobvious, i.e., the differences between the invention and the prior public knowledge in its technical field (known as “prior art”) must be such that a person having ordinary skill in this field would not have found the invention obvious at the time it was made.

      The proper subject matter of a patent is very broad — in the words of the Congress and the U.S. Supreme Court, “anything under the sun that is made by man.”2 Specifically included is any product, process, apparatus, or composition, including living matter such as genetically engineered bacteria, plants, or animals. Special provisions also permit patents directed to certain distinct and new varieties of plants (Plant Patents) and new original and ornamental designs for articles of manufacture (Design Patents). A recent decision of the Court of Appeals for the Federal Circuit, the court that hears all appeals in patent-related cases, specifically held that business methods implemented by computers constituted patentable subject matter.3

      Most inventors seek a patent to obtain the actual or potential commercial advantages that go along with the right to exclude others. Given the high cost of research and development, the opportunity to recoup these costs through commercial exploitation of the invention often is the primary justification for undertaking research in the first place. Patent rights can be commercially exploited in two basic ways:

       directly, by the inventor’s practice of the invention to obtain an exclusive marketplace advantage (where the patented technology results in a better product or produces an old product less expensively); and/or

       indirectly, by receiving income from the sale or licensing of the patent.

      It is important to note that a patent (i.e., the right to exclude others) does not give the inventor the right to practice the invention. The inventor can practice his or her invention only if by so doing does not also practice the invention of an earlier unexpired patent. While only one patent can be granted on a particular invention, it is easy to see how more than one patent could be infringed by making a single product. For example, consider that A has a patent on a new type of door and B invents an improved door of this type with a special lock. B could not sell the improved locking door since A’s patent broadly covers all doors of this type. On the other hand, A could not incorporate the improved lock in his basic door since B’s patent covers this combination. in these circumstances both A and B can be free to practice the best technology (locking door) only if each grants a patent license to the other.

      The indirect exploitation of a patent may be exclusive, e.g., by selling all rights in the patent or granting an exclusive license. Licenses can also be nonexclusive, allowing many parties, including the inventor, to practice the invention simultaneously. A patent may also provide commercial advantages in addition to the potential for an exclusive market position or licensing income. A patent often lends business credibility to start up ventures and can open doors to both the technical assistance and financing necessary to bring a new product to market. An improvement patent may also provide the barter necessary to cross license any basic patents held by others that block the path to market.

      Patents are obtained through a complex administrative proceeding in the U.S. PTO. Since the legal rules that govern this proceeding are quite extensive and often complicated, it is strongly recommended that an inventor seek the assistance of an experienced patent attorney before beginning this process.4

      Before actually applying to the PTO, there are several important preliminary steps that should be followed to prevent possible loss or damage to future patent rights.

       Proper Record Keeping. One of the most important of these preliminary steps is proper record keeping. Since United States patents are granted to the first inventor, it may become necessary to prove when, prior to the filing of an application, the invention was made. This is best accomplished by making a complete record of the invention from the first fdea right up through development of commercial products. The invention record should clearly describe the invention with words and pictures (photographs, sketches, drawings, etc.) and should explain fully how it operates or is used. Each page of the invention record should be signed and dated in ink by the inventor. The record should also be reviewed as it is made by at least one other trustworthy person who is capable of understanding the invention, who should sign and date the record under the notation “read and understood by . . ..”

       Preliminary Evaluation of Patentability. Another important preliminary

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