Roland Tong, Senior Patent Attorney, Brooks Kushman, PC
Patent law is one of the most complicated areas of law. Not only does a patent combine both law and technology, patent laws are also developed from many sources, such as the US Patent and Trademark Office and the federal courts from all over the US. It is only natural that many inventors and entrepreneurs are confused with its nuances and complexities.
Below are some of the common misconceptions about patents:
1. If I obtain a patent, I have a right to use and sell the invention.
A patent provides the right to exclude others from making, using or selling the patented invention. Many companies find this very valuable, as they can expand or preserve their market shares, demand licenses or royalties, and prevent competition. A patent does not provide a license to use, make or sell a product. Having a patent does not guarantee that you will not be exposed to any liability for infringing other peoples’ patents. You do not need a patent to manufacture or sell a product. However, you will not have any exclusivity, and any company can compete with you. Many investors do not like to invest in non-patented ideas or businesses of start ups, as they are afraid that bigger and well established companies can freely compete against them.
2. I must have a prototype before I can apply for a patent.
If you can describe your invention such that a person skilled in the art listening or reading your description can make and use your invention without much experimentation, then you are ready to apply for a patent. Obtaining a prototype may be good in terms of refining the manufacturing process or ironing out any flaws of the concept, but it can be very expensive and can take some time. Many companies that file patent applications do not have working prototypes.
3. I can stop an infringer with a “patent pending.”
A patent pending merely means you have a pending patent application that still needs to be examined by a patent examiner. Since your invention has not been proven to be novel and to meet the other requirements to obtain a patent, you really have not perfected or cemented your exclusive rights. Your patent pending may, however, allow you to seek for retroactive damages if you obtain a judgment for patent infringement against infringers, for instance, all the way back to the time your application was first published.
4. I must have a patent search done prior to filing my patent application.
A patent search is not mandatory. However, it is worthwhile to do, as it may save you time, resources, and money. The patenting process can be expensive and can take over three years. You should try to determine your chances of obtaining a patent. After all, you do not want to spend the time, resources, and money only to find out that your idea has been practiced before.
5. All patents are the same.
Whether you are trying to protect your invention or you are trying to make sure you do not infringe on another’s patent, you need to know what each type of patent means. Design and utility patents protect different aspects of an invention, and they provide different scopes of protection. Design patents only protect the way articles look, their shapes, configurations, or their ornamentations. Utility patents, on the other hand, protect the way articles are used and the way they work. From the standpoint of protecting your invention, design patents may be very easy to be avoided and thus offer very limited protection. From the standpoint of making sure you do not infringe on another’s patent, utility patents may require that you consider various types of infringement. They may require that you review their file histories and consider their related counterparts, such as continuation and divisional applications.
6. If I modify a patented product by 10, 20, or 30 percent, I will be free from patent infringement liability.
There are various ways a patent can be infringed — literally, by equivalents, or by contributory infringement. Literal infringement means the claim language of the patent directly corresponds to the infringing product. Thus, if you do not review the claims of a patent, you may never know whether you infringe it regardless of how much you have modified your product. Even if you have reviewed the claims and believe that there are differences between the claims and your modified product, you may still infringe by the doctrine of equivalents. Under the doctrine of equivalents, if your modified product contains elements identical or equivalent to each claimed element of the patented invention, your product still infringes the patent.
7. As an owner of the company or as a research supervisor, I should always be listed as an inventor to my employees’ inventions.
It is crucial to name the right inventors on a patent application. A patent can later be invalidated if it did not include the right inventors. An inventor in the patent sense must have contributed to the conception of the invention. Patent owners and inventors should not be confused. If the idea was conceived by an employee, you should have the employee assign his rights to the company. This is the proper way of making sure that the company will own the rights to the invention, and not by adding yourself as an inventor simply because you own the company. If the idea was conceived by a lower ranking employee, it does not mean that you have to list the employee’s supervisor as the inventor. The key is to determine who contributed to the conception of the invention that is claimed in the patent application.
Because there are many misconceptions about patents, it is important to seek the advice and guidance from a registered patent attorney.
Roland Tong is a Senior Patent Attorney at Brooks Kushman, PC and can be reached by phone at (213) 622-3096 or by email at [email protected] Brooks Kushman, PC (www.brookskushman.com) is a full service intellectual property law firm in Detroit and in Los Angeles with attorneys having advanced degrees in various technical fields.