As part of our ongoing series examining the ecosystem necessary to bring technology to market, David French, a senior Canadian patent attorney with 35 years of experience, now provides a further of his commentaries on the importance to a company of protecting its Intellectual Property.
By David French
In the previous postings in this series we have focused on issues relating to patents, and particularly on obtaining patents which are meaningful. Too often people say, “This is too complicated; make it simpler.” Accordingly, in this posting we will address our 10-point summary of important issues.
1. Key background fact
Without the existence of a patent, copyright or trademark right, everybody is entitled to copy. Because patents, copyrights and trademarks are everywhere, we often forget this principle. But it is true. It is essential to remember – in the case of a patent, what a patent doesn’t cover is freely available for anyone else to use.
2. What is a patent?
A patent is an exclusive right granted by the government that permits the holder to stop others from doing certain things. It is not permission to do something. It is the power to stop others. In particular, a patent is most useful when it stops other people from competing with you, taking away sales, and forcing you to lower your prices.
3. Why obtain a patent?
A patent helps you charge higher prices for your products. It’s as simple as that. You don’t have to lower your prices if you have a patent which is effective to stop competitors from competing with you. But you must have a product that people want to buy, for which they are willing to pay the higher price. Without that, the patent is not worth very much. In fact, it may be worth nothing at all. In other words, good patenting always starts with good inventing.
4. Who can get a patent?
All around the world, patents are only granted to, or through, an individual who has invented something. A company can file for a patent, but only if the inventor has assigned his rights to the company. If you hear of an idea from someone else, you cannot file a patent. You will not qualify as being an inventor. If a person who is not an inventor obtains a patent, the patent will be invalid.
There is another requirement, namely that a patent can only be issued for something that is new. But we will discuss this further under a separate heading after we discuss what can be patented.
5. What can be patented – the thing that is patented
A patent is always issued for something which is useful. This is the thing that can be patented. This can be a tool, a machine, a new chemical or medicine, or a method of making or using something useful. You don’t actually patent the entire thing. Your patent focuses on a feature which is part of your machine, medicine, process, etc. It is this feature which has to meet the novelty requirement that is essential under patent law.
6. What can be patented – novelty requirements
The following comments on patent novelty requirements apply in most countries around the world and represent the principles behind U.S. patent novelty requirements. The present U.S. patent law differs in details, but a bill signed by President Obama on September 16, 2011 will change the U.S. law to parallel world standards.
A patent can only be issued for something which is new and inventive. For most countries in the world, an invention is only new if it has never before been made “available to the public.” This means made available in any manner, anywhere, at any time prior to the filing date of a patent application. Patents are always directed to a feature and it is this feature which must be new and inventive. “Inventive” means not “obvious” as of the filing date of the application.
There’s no point in filing for a patent on a feature which is not new or which would be obvious. It simply does not qualify as a patentable invention. If you do have something, a special feature which is new and inventive and which will help you sell your product, then you should file an application. And you should do so soon before someone else discloses your idea publicly. In most countries a prior disclosure by others will bar your right to obtain a patent because the idea would no longer be new.
7. Whether you should patent
This is a question which is not addressed often enough. There is no point in filing for a patent on a feature for a product which will not succeed in the marketplace. If people won’t buy it, don’t patent it. People may not buy the product if it’s too expensive or if competitors offer alternatives which are just as attractive. If a competitive alternative already exists, it’s probably not worthwhile filing for a patent.
If you think you might have a winner, and if the feature which makes a difference in the product qualifies as being both novel and inventive, then you should seriously consider filing for a patent. But it’s not essential to have a patent in order to start a business or sell a product. You can enter the marketplace without obtaining a patent.
8. What is the patenting procedure?
The patent process requires the applicant to file with the Patent Office a description of the invention so others can build it and a proposed definition of the exclusive rights that will be granted by the patent. It is the job of the applicant to define the proposed exclusive rights. As addressed above, that definition of exclusive rights must not describe anything that was previously “available to the public;” nor can it describe anything which would have been obvious, as of the filing date, in view of whatever was previously “available to the public.” That is the Golden Rule of patent law.
The examiner will check the description of the invention to ensure that it gives enough information to allow others to make the invention when the patent expires. And he will try and check the proposed definition of exclusive rights to see that it passes the novelty and inventiveness tests. If he cannot find a prior disclosure which would bar the granting of a patent, then the patent will be allowed. But a patent can be cancelled after it has issued if it turns out that it shouldn’t have been issued.
In particular, an issued patent can be cancelled if the definition of its exclusive rights extends to anything that was previously available to the public. If you try to claim a monopoly on something that was available previously, then that claim is invalid. Many patents are invalid because they violate the Golden Rule.
9. Effect of the new law passed by the U.S. Congress
The new U.S. patent law, the “America Invents Act,” will come into force on March 16, 2013. This law will change U.S. novelty requirements to those of “absolute novelty.” Then the U.S. novelty standard, at least with respect to strangers, will be the same as that of Europe and Canada. Special provisions will protect an inventor in cases where he/she discloses the invention before filing a patent application.
An inventor’s own disclosures will not count against a subsequent application for up to one year. But after one year you will not be able to patent what you have disclosed publicly. And if someone else discloses the invention publicly, then it will be too late for anyone, (except for the inventor who relies on the inventor-originating grace period) to file for a patent.
10. Consequences
One of the consequences of the new law is that it will be imperative for inventors in the United States to “file early and file often.”
This is the same recommended procedure that has applied in Canada since 1989. Special procedures are in place to facilitate this policy. These procedures can be discussed at a later date.
David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.
David French is available to lead a discussion group in Ottawa, a Quality Patenting Forum where people can discuss Intellectual Property issues relating to business startups. If you are interested in participating, please e-mail David.French@secondcounsel.com.
