An Overview of Intellectual Property Concepts and Issues - Part 1: Patents

Intellectual Property is a universal term consisting of four general areas: patents, trademarks, copyrights, and trade secrets.We have written a four part series of articles as an overview of these intellectual property concepts. The first article discusses the patent process and issues involving patent infringement.Subsequent articles will probe the remaining three areas of intellectual property: trademarks, copyrights and trade secrets.

A patent is a contract between an inventor and the U.S. government under which the government grants the inventor a limited monopoly that allows the inventor to exclude others from making, using, or selling a claimed invention in the U.S. for a period of twenty years. In return for these patent rights, the inventor discloses the complete invention to the public to promote the progress of science.

A patent may be applied for by a single inventor, joint inventors, or an inventor’s legal representative. As soon as an inventor conceives an invention or actually makes the invention, the investor should record the date of this event with proper witnessing. An inventor should record in a notebook both the idea for an invention and all the physical acts subsequently performed to make the invention. The notebook should describe the invention completely and must also mention any tests performed, any equipment used and any other pertinent information.

The most common form of patents are utility patents, which are granted for inventions or discoveries that are new, useful and non-obvious over the prior art. To be new or novel, the invention must not have been known, used, patented, or published by someone other than the inventor before the Date of Invention; or used, patented, published or sold by the inventor or anyone else more than one year before the Effective Filing Date application. If an invention has a functional use, then it will generally satisfy the usefulness requirement. The non-obvious requirement for patentability deals with any differences between the claims under a new invention and the subject matter of prior art references. The Patent and Trademark Office determines the scope and content of the prior art, assesses the differences between the prior art and the claimed subject matter as a whole, and collects objective evidence of non-obviousness of the invention, such as need for the invention, and commercial success linked to the merits of the invention.

In addition to utility patents, two other forms of patents offer protection for inventions. Plant patents are granted to one who invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or plant found in an uncultivated state. A design patent is granted for a design that is new, original and ornamental. It protects only the appearance of an article, not its structural or functional features. Unlike the twenty year effectiveness of utility and plant patents, a design patent only offers fourteen years of protection.

A patent grants the inventor the right to exclude others from making, using or selling the claimed invention in the United States for its duration. The patent holder also has the right to assign or license the patent. A patent applicant also has the right to assign or license, as well as to mark an item as “Patent Pending”. However, an applicant has no right to sue for infringement.

Infringement can be literal, or determined under the Doctrine of Equivalents. Literal infringement is found when the alleged infringer literally copies the invention “exactly” as it is recited in the patent owner’s claim. Literal infringement is not found if the alleged infringer omits one or more of the elements, compounds or steps specified in the patent owner’s claim. The Doctrine of Equivalents is relevant when there is no apparent literal infringement but if one or more of the components recited in the patent owner’s claim have been omitted and substituted by the alleged infringer. The test under the Doctrine is whether the alleged infringer’s substitution performs substantially the same function in substantially the same way to obtain substantially the same result.

In addition to direct infringement, patents also protect against third party contributory infringement. To find third party liability, the party must be found to knowingly “aid and abet” someone else in a direct infringement of a patent. Four elements are required to find contributory infringement: (1) a sale of a component part for a patented system, (2) which must be a material part of the patented system, (3) that the seller knows is especially made for use in the infringement of the patent, and (4) that is not a staple article suitable for a substantial noninfringing use.

Inventions can also receive patent protection at the international level. The European Patent Convention consists of twenty-six member countries working together to provide uniform protection throughout Europe. European Patent Applications are filed in the European Patent Office located in Munich, Germany, designating some or all of the member countries under the convention. If the European Patent Application is allowed, it is forwarded to the designated European countries and a Patent will issue in each of the designated countries. Additionally, the Patent Cooperation Treaty is an international agreement that provides for the filing of patent applications on the same invention in member countries. Under the Treaty, a U.S. inventor first files a standard U.S. Patent application for a specific subject matter, and within one year the inventor can file an international patent application for the same subject matter and claim the priority date of the U.S. Patent application. The international patent application must be filed in a receiving office, such as the United States Patent and Trademark Office. At the time of filing, the international patent application must designate the member countries where patent protection is desired. Twenty months from the priority date of the international patent application, the applicant must send to each designated office of a member country any required translation and the required filing fee. Each designated office determines patentability based on its own patent laws.

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