Patent coverage Featured

8:00pm EDT October 26, 2007

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 cdavis@bakerdonelson.com.