Business is more international than
ever, and more competitive. With so
many companies, both in the U.S. and overseas, vying for a piece of the pie, the
potential for copying a product and infringing on a patent is even greater.
Today, companies need to know exactly
what a patent constitutes and whether
something is patentable in regard to bringing a new product to market. That’s where
Carl Davis, a member of the Intellectual
Property Group of Baker, Donelson,
Bearman, Caldwell & Berkowitz, PC,
comes in. As a patent attorney, he sets
companies on the right path to the complex process of achieving a patent.
Smart Business spoke with Davis about
how a patent is achieved and what issues
exist with bringing one to market.
How does a patent attorney evaluate whether
something is patentable?
The patent attorney considers information, i.e. a disclosure, from the inventors,
which describes or illustrates the invention
and may include a prototype. It is helpful if
the inventors explain features believed to
be new or important; the why, or what I call
the ‘magic’ of the invention. The patent
attorney compares the invention with prior
art or knowledge that the public already
has. Prior art includes publications that are
dated before the inventor’s conception or
the mental thought of the invention. It can
also include activities by the inventor. For
example, offering to sell products made in
accordance with the invention may be
prior art.
Typically, the patent attorney obtains
prior art information through a search for
patents and publications that involve subject matter related to the invention.
Searches are made at the United States
Patent and Trademark Office or at other
patent offices around the world, such as in
Japan or Europe.
The patent attorney studies the disclosure information and the prior art in order
to understand the invention and the prior
art. Based on that understanding, the
patent attorney determines if the invention
is novel and nonobvious. The invention
must also be useful. If an invention is not
useful for something then, patentwise,
what’s the point of making a product?
Utility is a fairly low threshold.
If a single prior art reference shows the entire invention, the invention isn’t patentable even though the invention was
‘new’ to the inventor. The patent laws try to
encourage new thought and new developments, and the patent system doesn’t
reward the invention of ideas or developments already known to the public.
Even if the invention is new, it must also
be ‘nonobvious’ or patentably different
from the prior art. This is a subjective evaluation, and the patent attorney and patent
examiner are looking for the differences
between the invention and the prior art.
Those differences have to be such that the
claimed invention, as a whole, would not
have been obvious to a person of ordinary
skill in the subject matter of the invention.
What are some of the issues to be considered
in bringing a new product to market?
Patentability is one consideration. That
is, whether a patent granting the right to
exclude others from making, using or selling the invention can be obtained. Another
important issue is whether someone else
has a patent with claims that cover the
product. In other words, the product, while
including a new feature, may nevertheless
infringe claims of a patent granted to
another. Thus, in bringing new products to
market, a manufacturer would want to
have a ‘right to practice’ search conducted
to consider whether the new product infringes patent rights of others. Another
issue involves whether the new product
includes trade dress or ornamental appearances [nonfunctional features] associated
with or designating the product as coming
from another source or supplier.
What about foreign patent coverage for an
invention?
A separate application must be filed in
each country in which patent coverage is
desired. However, most foreign countries
require the invention to be novel as of the
effective filing date of the patent application. The initial patent application would
have to be filed prior to making the invention public. Under international treaties,
the foreign application can then be filed up
to one year later, or six months for a
design, and the effective filing date in those
foreign countries is the earlier actual filing
date of the initial application.
How should a business owner have employees document new ideas?
Employees should make written records
of developments and improvements. These
records should be dated and maintained in
an organized manner. For example, persons involved in new product development
should use bound, numbered record books
dated daily. Periodically, others under an
obligation of confidence should review the
books, mark the pages ‘read and understood,’ and date and sign. These ‘others’
should be persons who weren’t involved in
the particular development work recorded
in the book so as to provide corroboration
of the recorded developments. Periodically, new developments should be presented to decision-makers for evaluation
for patent coverage. Factors to be considered include identifying the new features
— the ‘magic’ as to why the feature is
important — as well as evaluating the marketing, production and legal issues
involved in the development for possible
commercialization.
CARL DAVIS is a shareholder in the Atlanta office of Baker,
Donelson, Bearman, Caldwell & Berkowitz, PC, and a member of
its Intellectual Property Group. Reach him at (678) 406-8703 or
[email protected].
