Patent Law for the General Practitioner

• Publication year: 2003
• Pages: 0001
• Citation: Vol. 9 No. 1 Pg. 0001

Georgia Bar Journal Volume 9.

GSB Vol. 9, No. 1, Pg. 1. Patent Law For the General Practitioner

Georgia State Bar Journal
Vol. 9, No. 1, August 2003

"Patent Law For the General Practitioner"

By Larry Roberts

If you are a general practitioner, sooner or later one of your clients is going to come to you with an invention and seek your advice as to whether he or she can (or should) get it patented. Would you know how to help your client determine whether an invention is potentially patentable? How can you help your client decide whether he or she needs a patent attorney? Is there anything your client should be doing before meeting with a patent attorney? Here are some tips to help you through that first meeting

WHAT IS A PATENT?

Patent law is one of the few areas of law that is actually provided for in the U.S. Constitution. Our founding fathers were sufficiently convinced of the benefits of a patent system that the Constitution authorizes Congress "to promote the progress of - [the] useful Arts, by securing for limited Times to - Inventors the exclusive Right to their - discoveries."1

How does a patent promote the "useful arts?" There are several ways. First, there is an incentive for inventors to invest their time, efforts and resources to innovate because an inventor will be granted a period of exclusivity within which to practice his or her invention. The public thus benefits from the availability of inventive products from the patent owner or the owner's licensees. Second in return for that period of exclusivity, the inventor must disclose to the public how to make and use the invention.2 Third, the inventor also must disclose the best way known to him or her for carrying out the invention.3 Accordingly, once the patent has expired, anyone can make and use the invention of the expired patent by following the inventor's own instructions. In addition, even before the patent expires others can read the patent and use the knowledge thereby obtained as a "springboard" for designing around the patent, adapting the technology to other fields of use or developing new technology. Overall, in return for a patent the inventor contributes to the sum total of public knowledge, and the public benefits both from this knowledge and from the innovation that this knowledge spurs.

It is important to note that a patent grants the patent owner only the right to exclude others from making, using, selling or offering to sell the patented invention - it does not grant an affirmative right to the patent owner to practice his or her own invention.4 It is entirely possible to obtain a patent for an improvement to an existing product that cannot be practiced without infringing a dominant patent for the existing product.5 For example, an inventor might be able to get a patent on a toaster with a timer on it, but not be able to practice his or her patented invention because someone else has a patent on the basic concept of a toaster.6

DOES YOUR CLIENT REALLY NEED A PATENT?

Just as obtaining a patent does not grant an affirmative right to practice the patented invention, it also is not necessary to patent a product before it can be brought to market. The majority of new products brought to market today probably do not qualify for a patent because they are merely obvious modifications of known products. Nevertheless, these unpatented products can generate a tremendous amount of revenue.

Patents are not inexpensive. There are government fees for filing the application, and if the application is successful, there are government fees for having the patent issued.7 Patent attorney's fees can run $6,000 and up for preparation and filing of a patent application for even a simple invention, and these fees climb even higher for more complex inventions. Once the application is filed, the fees for the patent attorney to review and respond to official actions from the patent examiner in an effort to get the application allowed can add several thousand dollars more. There also is the possibility that an applicant might spend all of this money only to find out that the invention is not patentable, or that it is only so narrowly patentable that the patent can easily be circumvented by designing around it. If the patent does issue, then maintenance fees that can run upward of several thousand dollars must be paid every four years in order to keep the patent in force. Finally, if a competitor is infringing a patent, then it is up to the patent owner to enforce his or her patent rights, and patent infringement litigation can be very expensive.8

Some inventions are better protected by maintaining them as "trade secrets," rather than by patenting them. As its name implies, trade secret protection relies upon keeping the invention secret in order to protect the technology. Trade secret protection, however, cannot protect against competitors buying a product on the market and reverse-engineering it (i.e., taking it apart and finding out how it functions).9 Further, trade secret protection will not guard against another person independently inventing the same invention.10 Nevertheless, for certain types of technology, such as manufacturing processes, trade secret protection can be superior to patent protection because trade secret protection does not lapse after 20 years. Trade secret protection also has the added benefit that it costs little or nothing to obtain; the inventor need only take appropriate steps to protect the technology as a secret.

With all of that said, there can be significant advantages to having a patent. First, a patent can be used to carve out a niche for a product in the marketplace and make it difficult for others to enter the market with a competing product. Second, a patent protects against others independently developing the same technology.11 Third, a well-drafted patent will not only prevent competitors from copying the patent owner's product but will also prevent them from "designing around" the patent by making only minor changes. Fourth, a patent can help the patent owner secure the financing that he or she may need to bring the product from inception to market. Finally, even if the patent owner does not have the resources to bring a product to market, he or she can license the patent to others, or sell the patent outright to a company that is in a position to exploit it. Overall, there are many advantages to patenting an invention, but the inventor must approach the patenting process with reasonable expectations and eyes wide open.

WHAT IS PATENTABLE?

Subject matter that can be patented includes machines manufactured articles, compositions of matter and processes, as well as improvements on these four classes of subject matter.12 It is not...