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Patent Protection

Tags:Commercialization, Marketing

A patent is defined as a grant by the United States federal government that permits its owner to exclude others from making, using, or selling a claimed invention (United States Patent and Trademark Office, 2003). A patent does not give the owner the right to make, use, or sell his invention, nor does the issuance of a patent imply that there is a market for the device. A patent represents a judgment made by the USPTO that your invention is new and unique.

Getting a patent means that no one else can claim the technical method in which your invention performs its function, as defined by your patent claims.

Patents are the most complicated, expensive, and difficult way to get IP protection. They are often far too costly for an independent inventor, and are more frequently pursued by companies and universities with more substantial funding. In addition to filing costs, the services of a patent attorney are recommended. There are many issues that must be addressed when considering whether or not to pursue a patent for your intellectual property.

Filing a patent in the U.S. does not guarantee use of the patent worldwide. Many inventors choose to file patents to cover large potential markets in the rest of the world. For example, a high technology innovation may be patented in the U.S., Europe, Japan, Korea, and Australia. The choice of where to patent internationally depends on factors such as market distribution, patent costs, type of technology, and ability to defend patents. Maintaining and defending international patents may be quite costly.

Types of Patents

There are three types of patents: utility patents, design patents, and plant patents. Researchers/developers in special education will primarily be using utility patents as they generally seek to invent new devices, as opposed to new designs (i.e., graphics or ornamental designs) or new varieties of plants (i.e., botanical inventions). However, design patents are often used to patent the “look” of a tool. Utility patents filed after June 8, 1995 are valid for a term of 20 years from the first U.S. filing date for the patent. Once a patent expires you cannot apply for a patent on the same design. However, if improvements or changes are made, you can seek a patent on the new design.

Example

Developers of education technology usually seek patents for hardware devices, such as the Intellikeys® Keyboard (IntelliTools®), the halfkeyboard™ (Matias) or the Reading Pen® by Wizcom. When IntelliKeys was developed, two patents were awarded. One is a design patent and the other patent, a utility patent, protects the exclusive capabilities of the original version of IntelliKeys.

[D352,280 issued November 8, 1994] A design patent was issued to IntelliTools for an ornamental design of a keyboard stand. Utility patents were issued to IntelliTools for:

1. The original process involved in the computer recognizing the input code through a keyboard cable from various different overlays (Sept, 1995; Patent # 5,450,078 ); and
2. The process of creating “hot spots” on the screen that provide access to educational software for children with disabilities unable to use a mouse to point. The hot spots are read as keyboard commands by the computer (Nov, 1997; Patent # 5,692,140).

What can be patented?

The question “What is patentable?” is a complicated one. Simply put, in order to be patentable, an invention must pass four tests:

1. The invention must fall into one of the five “statutory classes” of things that are patentable: processes, machines; manufactures (i.e., objects made by humans or machines), compositions of matter, or new uses for any of the above.
2. The invention must be “useful.” One aspect of the “utility” test is that the invention cannot be a mere theoretical phenomenon.
3. The invention must be “novel,” that is, something that no one has done before.
4. The invention must be “unobvious” to “a person having ordinary skill in the art to which said subject matter pertains.” This requirement is the one on which many patentability disputes hinge.

The function of a technology cannot be patented

There may be many devices that perform similar functions, such as computer keyboards. The processes, materials, or mechanisms that make the device unique are eligible for patent protection. For example, the Frogpad’s letter layout and alogorithm are both patented in FrogPad’s one handed keyboard from FrogPad and the patent on cordless and battery-free tablet technology was secured through Pen Table from Wacom.

IP owners may also choose to patent software in cases where the software application is truly unique or the improvement provided by the newly developed software application is novel and “not obvious” to someone experienced in the field. When your patent claim is accepted, you are provided with a Patent Number containing seven digits. This is sometimes found on the packaging but may not be obviously displayed. In the example below, Adobe Acrobat clearly displays all patent numbers as well as patents pending.

There is a great deal of controversy surrounding the legality of patenting software applications. Many say that software does not fit into the five “statutory classes” of patentable items. Wikipedia offers a thorough discussion on the topic with a review of both the pros and cons of software patents. Copyrights are traditionally used to protect software. Because copyright protection cannot be afforded to certain aspects of computer programs (i.e., algorithms, program logic, and systems) it would be worthwhile to protect these aspects of new programs with a patent. However, not all software applications will contain these new developments.

For more information about what can be patented, visit the United States Patent and Trademark Office (USPTO).

Example

Important Note - Challenges on Originality. If you successfully obtain a patent on your invention, you may still be challenged on its originality. In some cases, the patent owner may be forbidden from using the invention, usually due to the existence of another patent, or sometimes due to other legal restrictions. The freedom to operate is not guaranteed by the issuance of a particular patent. To illustrate this principle, consider the following hypothetical case:

Bob patents an invention,an apparatus comprising a portable spell check application. Jennifer later patents an improvement to the invention, an apparatus comprising a portable spell check and dictionary applications. Larry hopes to make an apparatus comprising a portable spell check with dictionary and thesaurus capabilities. In order to make, use, or sell the improved invention, he may need permission from both Bob (due to the patent on the original invention) and also permission from Jennifer (due to the patent on the improvement). Or he could wait for Bob’s patent to expire; then permission is needed only from Jennifer. Still another choice is to wait for both patents to expire.

The U.S. Patent Office publishes a brochure about patents entitled General Information Concerning Patents.