What Inventors Should Know About the Patent Reform Act

Experienced inventors exist in great numbers. They’ve most likely filed a number of patent applications and know generally how patent filing works. Nevertheless, with growing technologies and changes to invention paradigms, the US government has had to keep patent law up-to-date. The US Patent and Trademark Office (USPTO) often has rule changes, and they do their best to inform the public what the changes are. However, every now and then the US Congress makes large changes to patent law. In 2007, the Patent Reform Act was reported, containing many alterations to patent rules. A summary of the changes are listed.

The First-to-File Rule

Prior to 2007, the United States was the only country in the world that would evaluate patent applications in the order of the creation of the invention, rather than the date of patent filing. The change introduced here would make the USPTO evaluate patent applications chronologically based on the date of filing. The benefits of doing this would be to a) conform to international processes of patent handling and b) reduce legal costs and court time related to the length of each evaluation. Opponents to this change see a potential problem of inventors rushing through patent applications in order to file their patents earlier than competitors.

Approximation of Damages

In the past, inventors who recognized patent infringement could sue the infringer for royalties equal to the amount that their whole invention could sell for. In the Patent Reform Act of 2007, a change was made to this rule: the patent holder would only be able to claim royalties for the invention they created, and not the sales related to the improvements that the infringers made. This clarification was made in order to reduce the amount of frivolous litigation that has been apparent in recent years with high-technology instrumentation and software. Those opposed to the changes claim that the market value of the changes would be difficult to estimate, and would tie up the courts longer when a patent infringement case occurs.

Inventors Oath Changes

In any patent application, there is an oath that an inventor must sign to declare that the application is true to the best of his or her knowledge. The Patent Reform Act adds leniency to this rule. If the inventor is dead or disabled, and cannot sign the application, an assignee can sign the patent application in the inventor’s absence.

Interlocutory Appeals

Large companies who are frequently targeted legally during the patent process are always looking for ways to reduce their legal costs. With this change, a case which revolves around an incorrect interpretation of a patent can avoid a full appeal which leads to a second trial. Due to the fact that around two-thirds of incorrect interpretations are found through a full trial, an interlocutory appeal would increase courtroom availability. Although this idea would shorten court time, the interlocutory appeal would have to come from the Federal Circuit Court of Appeals, and would take up a significant chunk of their time.

Third Party Opposition

Anytime a patent is issued, it’s unclear how the patent will affect the world around it. As a result, the Patent Reform Act changes the rules so that an opponent to a particular patent can file an infringement lawsuit up to twelve months after the patent was granted, assuming that the patent caused the person or group significant economic harm. Arguments made against this change focus on the idea that twelve months was too much time, and would allow for frivolous lawsuits. The change also proposes the creation of a new part of the USPTO, the Patent Trial and Appeal Board, who would look over these legal actions.

Prior Use Defense

Before 2007, the prior-use defense, which protects companies from losing revenue gained before a patent or trademark was issued to them, was only applied to business methods. While this rule could essentially invalidate the purpose of the patent, it favors small businesses that do not have the know-how about patenting their trade secrets. In the Patent Reform Act, the prior-use defense is applied to all types of patents issued by the USPTO.

These were the most crucial changes to patent law introduced by the bills. Currently the Patent Reform Act is still being evaluated by the Senate, but in general, the support of these changes is significant.

Pharmaceutical Patent Application Specifics

In your laboratory, you and your colleagues have developed a novel new drug that has shown promise in some clinical trials. Chances are you’ve burned through many millions of dollars of venture capital in order to get this compound on the market. You know you’ve got quite a bit of steps left to convince the Food and Drug Administration (FDA) that your compound is viable, and that can quite easily saturate your mind. What you don’t want to forget about is that once your compound is approved by the FDA, it’ll be open for reproduction. Generic companies will want to sell it for cheap. Since they didn’t put the work into discovering the compound, they shouldn’t reap the initial revenue from selling it. Therefore, you’ll need to get a patent on that compound.

When it comes to inventing a drug, the regular rules of patent protection are slightly more complicated. First of all, a patent on a drug lasts 20 years. The 20 years is guaranteed so you can replenish your company’s resources, please shareholders and potentially explore another drug paradigm. After the 20 years has expired, generic companies can easily get hold of your compound and sell the compound to consumers at a greatly reduced price. You won’t be able to capitalize on your invention nearly as much.

Unlike other inventions, novel chemical entities (NCEs) as drugs must be characterized in a patent application by particular chemical properties. Describing the NCE’s purpose is not necessary, as it is in the FDA approval process. Instead, the US Patent and Trademark Office (USPTO) is more interested about what makes it novel. There are particular characteristics of the compound that it is most interested in:

1) If it is an analog of a previously patented compound: particularly if it is an isomeric, enantiomeric or crystalized version.

2) If its solubility and particle size is conducive to its bioavailability. Smaller, more soluble compounds are considered favorably by the USPTO.

3) If the compound can be separated into ‘selection patents’, where a particular group of atoms – or a selection – of a compound can be considered novel. In many cases where compounds are developed using combinatorial chemistry, ‘selection patents’ may be applicable.

4) If the compound produces particular metabolites in the body. If it does, and the metabolite has not yet been characterized by the USPTO, there may be an opportunity to both patent the compound and the metabolite it forms.

5) If it requires a prodrug. Prodrugs are active compounds in an organism that can work with a compound to produce a therapeutic response. If a prodrug is involved, then many inventors choose to include it on the patent application.

In addition to clarifying these chemical properties, inventors of NCEs may be able to patent already-existing drugs by changing certain characteristics of them. For instance, a dosage change on an already existing drug may treat another malady. Or, perhaps an inventor discovered an easier, more cost-effective way to produce a natural product artificially. In any case, these method changes, dosage changes or any other changes must be properly described on the patent application. It’s always good measure to be very fluent in describing chemical properties and formulation terminologies before you attack a patent application. It may be beneficial when going after that drug patent to contact a pharmaceutical patent lawyer to make sure you’ve covered all bases. Your investors will most likely celebrate that decision.

All about Patenting a Business Method

Just about everyone in the United States has been on – or at least seen – the web. Internet marketing, although it’s only been around for around twenty years, seems like it’s been around for much longer than that. The internet bubble has burst, and companies that are selling on the web have settled down and have grown their reputations. Amazon, iTunes, and many other similar companies have gone through their adolescence and have established themselves as businesses ready for the long haul. What many people don’t know about these companies is that they have patents related to their simple web applications. Amazon’s one-click ordering method is unprecedented and something that many other web businesses admire and aspire to. Even online prescription refilling is a rather new and fascinating mechanism. These are well-protected trade secrets, but there’s no telling if a disgruntled employee or a computer hacker could get hold of the programming behind the method. That’s where patents come in.

Many think that a patent can only be granted to machinery. The cotton gin, the television and the cellular phone all have been patented. However, there are many things that can be patented, including business methods like the ones listed above. Companies that develop these methods can own the exclusive intellectual property rights for them for 17 years. That may not seem like a very long time, but in today’s rapidly changing world, new technologies are being developed all the time that would make the methods seem retro in comparison. Although business methods seem to be vastly different from machines, they do fall under the same classification in the universe of patenting: a utility patent is what the US Patent and Trademark Office (USPTO) will grant an inventor that develops them. In general, both a machine and a business method complete a utility, so in essence, they’re very similar. A key difference between the device-related patent and the business method-related patent is that the business method could only be considered exclusive intellectual property after 1998.

Entrepreneurs today are often looking to the web for marketing an idea. They may have a new software application or feature that they’d like to unveil to the public, and plan to do so on the internet. When they go about it, they must be careful that it doesn’t get copied. Obtaining a utility patent for their business method is the best way to protect their idea. The utility patent can be used for a business method in two ways: a) to allow a business method to effectively and safely compete against a possibly inferior program; and b) to protect a business method from infringing on someone else’s discovery. You’ll notice that on the internet there are many ways of displaying ads. Two advertising business methods that are always in competition with each other are pop-up advertising and scroll-over advertising. Although both types of business methods may be generally accomplishing the same thing, they are fundamentally different in their methods and the patent owners for either one won’t have to sue for intellectual property infringement.

Like any other invention, a business method can get a patent if the following conditions are true:

1. The business method must be original. That means it cannot significantly resemble any other technology that has been patented in the past. Paradigms can be copied, but there must be enhancements included in the new business method.

2. The business method must be useful. There isn’t a purpose to granting a patent on an item that won’t be thought of again. For example, you may develop a program that displays pictures of toasters all over your screen, but what would the point of protecting that program be?

3. The business method must be non-obvious. Non-obvious is a patent buzzword that means that a person who might have some general knowledge about the discovery wouldn’t be easily able to come up with the idea themselves.

4. The business method must be realistic. All existing laws of nature must be followed. This may seem a bit strange, but the USPTO cannot issue a patent if there’s no regulation that goes along with the science behind it: the patent would be nearly impossible to enforce.

Before the application for a business patent can be approved, fees must be paid and an examination of the marketplace must be conducted to see if the business method already exists. Once it’s finished, the patent can be granted and protect a business method.

All about Design Patents

Chances are, somewhere close to where you’re seated, you’ve got a box full of CDs. Take a look through them. If you’re like the average computer user, you’ve got CDs sitting in plastic cases that are square or round, made of hard plastic or soft plastic. Some are yellow, some are clear, and some cases they may even be made of paper. The utility of a CD case is the same: to cover the CD so outside sources do not scratch or ruin it. Nevertheless, all of these variations on the general CD case most likely have different patents for their design, based on a single, previously filed utility patent.

A design patent, in the most simple of terms, is assigned to a fundamental decorative change to an object that does not change its overall usage. To understand how a design patent differs from a utility patent, consider a simple pair of black sunglasses, which has been patented. An inventor that decides to change the sunglasses so that they are rounder with green rims would be granted a design patent. An inventor that adds nose clips to make the glasses more comfortable would be granted a utility patent.

Similar to any other patent, a design patent specifically protects the product from being sold or imported by any unauthorized individuals. The design patent is only held by the US Patent and Trademark Office for 17 years. This is less than the 20 years granted to a utility patent, but the design patent holder will not need to keep the patent alive by paying regular fees. What’s more is the application itself is much simpler to fill out. There’s no need to clarify what the usage of the patent is, or draw out the creation’s functionality. The USPTO does require the patent applicant to describe how it’s original and ornamental. The application must compare the invention to prior-art, or patented products that may look very similar to the creation. What the USPTO is most concerned with is the quality of the pictures representing the aesthetic changes, and they expect the pictures to be thorough. They react favorably to applications containing photographs in this case.

Design patents can be difficult to differentiate from utility patents sometimes. An ornamental change may arguably also be a utility change. In addition, a first time designer may be confused about whether they need to apply for a patent, a trademark or a copyright. It’s likely they’ve seen all in use and associated to something decorative, so they may think initially that their invention may require one of the three, or maybe all three. What they will need to consider is that a decorative change to an existing item cannot fit the definition of a trademark because a trademark refers to the name associated to a product. It also cannot fit the definition of a copyright if it isn’t related to a type of document.

Some of the lesser known things that could arguably earn a design patent are fonts and computer icons. In fact, the very first design patent to be granted was on a font. Both computer fonts and icons, in order to be patented, must be actively used. In any case, if you’re an artist and have a fantastic idea about how to make a product more marketable, you may find that applying for a patent will be one of the greatest things you’ve ever done.

Software Patents Across the World

When people think of inventions, their minds often travel to the likes of Thomas Edison or Alexander Graham Bell, who invented two of the most important machines in history. What they don’t realize is that the big money in patenting and inventions is now intelligence-based. Things like pharmaceuticals, chemical processes and software can all be patented. Patents for these items have been prolific during the past thirty years.

Software is perhaps the most challenging of all inventions that the US Patent and Trademark Office (USPTO) has had to regulate. There are so many variations on software creation that the rules seem endless. In fact, the USPTO’s regulations are different from those found in other worldwide patent organization. Are you looking to patent some of your software? You’ll need to consider the different methods of obtaining a patent across the globe.

The United States

One of the first software patents obtained came from the groundbreaking US Supreme Court decision for the case Diamond vs. Diehr, in 1981. In it, the Supreme Court decided that a computer process invented to improve the quality of cured rubber could be patented. This decision, along with other landmark decisions, brought the USPTO to a patent-regulation revolution: how can software be patented? Put quite simply, the definition of a software patent is muddy. Due to the many different kinds of software out there, many different languages, the opportunities for new software paradigms are endless. Therefore, arguably a software patent can be given to any new computerized business system that’s useful and tangible. The USPTO will always be enforcing its general requirements for inventions; particularly the software must be significantly different from prior art and must have a clear use. Some famous software patents include Google’s web searching algorithm or Amazon.com’s frequent buyer program.

Europe

Although Europe has formed an international organization dedicated to regulating European patents – the European Patent Office (EPO) – it does not currently have a clear definition of what is eligible for a software patent. In 1973, the European Patent Convention – which created the EPO – indicated very clearly that the EPO cannot allow for patents on computers or computer programs. The United Kingdom is not part of the EPO, but its patent office follows similar rules. Nonetheless, due to the ubiquity of software programs and the likelihood of intellectual property being copied, rules in these countries are being reexamined.

Japan

Like the United States and countries in Europe, Japan has a very lucrative software market. As a result, the country has taken steps to protect software-related intellectual property. Unlike the strict rules found in Europe, Japan has set up very clear and very easy-to-follow patent rules for software and for any related hardware. Many companies who have difficulty protecting their software creations in Europe go to Japan to obtain a patent.

India

In the past two decades, the software industry in India has grown exponentially. As a result, the demand for software patenting has become so defined that pressure grew on the Indian Patent Office to support such patents. Nevertheless, India made the decision to regulate software similar to the ways that Europe does, with one minor change: a software application itself – not the purpose of the application – can be patented.

Although there is no concrete method for patenting software across the globe, an inventor would find it best to search international databases to see if their idea has been patented in some way, shape or form. It may prevent a headache or two.

Frequently Asked Questions about Patents

Getting a patent isn’t an easy process. There are many factors to consider and the average inventor may be concerned about making a mistake due to ignorance. Listed are a number of commonly asked questions about patents.

Q: What is a patent?

A: A patent is a protection of intellectual property granted by a national governing body over a period of time.

Q: Who can obtain a patent?

A: Virtually anyone can obtain a patent, assuming that they are the owner or inventor of an idea that is original, useful and has not yet been patented.

Q: Why should I obtain a patent?

A: If you’ve invented a product and have begun to market it, it’s very likely that an opportunist may copy your product and sell it at a competitive rate. A patent will ensure that the invention is yours and it stays yours for quite awhile, and that you or the owner of the patent are the only ones who can capitalize on its existence in the marketplace.

Q: How do I get a patent?

A: A patent can be obtained from your country’s patent office. In the United States, the US Patent and Trademark Office (USPTO) is in charge of issuing patents. They have an extensive website where you can download an application and instructions about how to fill out an application. A completed application must be turned in to the USPTO along with the payment of a fee. This will ensure that your invention will be reviewed for patent approval.

Q: When will my patent expire?

A: A patent will expire a number of years after the filing date. Depending on the type of patent you filed, the expiry date could be anywhere from 14 to 20 years in the United States.

Q: I’ve invented something on my company’s time, using my company’s resources. Whose name will appear on the patent application?

A: Yours. You are responsible for the completion of a patent application and the signature on the application must match your own.

Q: A partner of mine and I developed an invention that we’d like to patent. How do we fill out the patent application so that we both own the patent?

A: There is a patent application available to those who would like to share the responsibility for a patent. However, this can only be used if the invention contains the ideas of both parties.

Q: I’ve invented something great and I’ve already started to manufacture and sell it. However, I didn’t think to get a patent for the item. What happens if someone steals my idea?

A: The best move for you to take is to immediately file a patent application for the idea. If the patent is approved, it’s likely that you can sue for patent infringement using the ‘prior-use’ defense. At article generation time, the prior-use defense could only be used for business methods in the United States, but the government is looking to validate it for all patent types.

Q: I’ve heard that it’s possible to file for international intellectual property protection. Is this true?

A: Yes and no. When you file your patent application, your country will be in charge of determining whether the invention is patent-worthy, and your patent will be good in your country only. However, there are international treaties that define laws that can be enforced if someone in another country infringes on your patent.

Q: How can I make sure that my invention isn’t infringing on anyone else’s patent?

A: In order to make sure you’re making something original, you’ll need to conduct market research. Patent lawyers and agents can help you out with that. In addition, there are databases available via the web that you can search to determine what inventions out there are like yours.

Q: How much does getting a patent cost?

A: There are two costs involved with getting a patent. First of all, when you file a patent application, you will need to pay a fee to cover the costs of evaluation. Secondly, in most cases, there is a fee involved with keeping a patent alive. The fee is paid to the government body that issues the patent.

Can Your Idea Be Patented

It’s very likely that you’ve dreamt vividly about interesting concoctions, and might have had a fleeting desire to take the idea into reality. It’s also very likely that during one of your couch potato moments, you came across a commercial for a product that you wish you had thought of. And, it’s also likely that you have thought about how you could create something to make your life or your family’s life easier, and then had seen someone else capitalize on the idea afterward. If all three of these phenomena have come true, then you might benefit from thinking about trying your hand at invention.

Great inventors are both perceptive – they recognize when and where an improvement could be used – and resourceful. One of the world’s most famous inventors, Dean Kamen, watched people close to him go to the hospital regularly to have drugs delivered over a period of hours. This led him to develop the drug delivery pump, which is widely used today. Although not every idea is going to be well-received – many inventors go through a number of inventions before they have a successful one – just the practice of inventing something can increase your skills with originality.

Nevertheless, an aspiring inventor must be realistic about what he or she can patent. If the inventor is looking to reinvent the wheel, he or she will most likely be disappointed by failure. Things like time travel, teleportation, and other science-fiction advents aren’t things that can be patented. If the United States Patent and Trademark Office (USPTO) has not put regulations in place for a particular invention, you won’t be able to get the idea patented. Since science has not come far enough to allow for things like teleportation machines, it’s safe to say that the USPTO has not set up regulations for them. In addition, although genetic engineering has brought about a whole new world of potential creatures, the USPTO has no regulations set up for patenting clones, and will not accept them.

This leaves a veritable cornucopia of things you can patent. The amateur or professional physicist or engineer may create something that could be considered a machine or a product that can be manufactured. An example of a successful machine that has been patented is the surge protector: it takes a technology that’s already in use, and compounds on it. Keep in mind that if a new paradigm in power is invented, this cannot be patented.

The chemists who play it safe but can create new substances used in cleaning, lubricating or just about anything else can get a patent. One very recognizable name in substances is Oxyclean, which is heavily advertised on television. Even the popular drink Gatorade was patented in 1967.

Finally, a particular process or method can be patented. This could be a chemical method to treat wood so that it can be used for a particular operation, or it could be a process that cleanly prints on unorthodox surfaces.

In addition, if you invent the next big product and want to ‘reinvent’ it so it’s got more appeal, the enhancement can be patented. One example of this is the recent generation of the sweetener Splenda, which was recently released with added fiber.

In any case, the opportunities the aspiring inventor has to patent something are as endless as the drive for the inventor to create.