It is important for business owners to consider how patents relate to their business, in terms of protecting their inventions and avoiding infringement. Below is a general overview of the patent system. However, you should consult with a patent attorney on how patents may impact your specific business.
WHAT CAN BE PATENTED: Patents protect new and useful machines, articles of manufacture, compositions, industrial designs, plant species and processes. Patents are different from trademarks and copyrights, which protect other types of intellectual property. Trademarks protect brand names or logos applied to goods and services, while copyrights protect creative expressions such as literary, audio and visual works.
THE APPLICATION PROCESS: To obtain a patent, an application is filed that describes the invention. The patent office examines the application and determines if it qualifies for a patent. Due to costs and various rules, the invention should be sufficiently described in the application when filed. If your invention is merely conceptual, it may be premature to apply.
For U.S. patent applications, the examination process usually takes three to five years. A U.S. patent provides protection only within the U.S. and its territories.
OWNERSHIP: In the U.S., the inventor is the owner of a patent unless those rights have been transferred. An employer may require its employees to assign their patent rights to the employer via a written agreement.
COSTS: Depending on the complexity of the invention and length of the examination process, a patent can cost between about $10,000 to $30,000 to obtain. However, the value added from a patent can be well worth the investment. For example, patents can be used as an effective marketing tool to attract customers and investors.
ENFORCEMENT: A patent gives you the exclusive right to practice your invention for the term of the patent. The term of a U.S. patent is either 20 years from its filing date for utility and plant patents or 15 years from the filing date for design patents. The patent owner may transfer or assign such patent rights to other parties but also is obligated to enforce those rights or risk forfeiture.
It is important to understand that even if you have a patent, your invention could still infringe an earlier patent. For example, your invention may consist of a new machine, but certain components or functions of that machine may have been invented and patented by someone else. Ownership of a patent does not guarantee freedom to practice your invention over all other patents.
LOSS OF PATENT RIGHTS: The ability to patent your invention may be lost if, before filing an application, you or your agent publicly discloses the invention or offers it for sale. To prevent this, actions may be taken such as recording the date and content of information that is disclosed to a third party and requesting that the 3rd party sign a CDA/NDA (confidential disclosure agreement/nondisclosure agreement). Discuss any previous disclosure made or any planned disclosure with a patent attorney beforehand to understand the consequences.
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Bryan Fink is a partner at Pearne & Gordon LLP in Cleveland. His practice includes preparing and prosecuting patent applications before the U.S. Patent and Trademark Office, as well as researching and drafting opinions for clients on infringement, invalidity and patentability.