Protecting Your Patent


PATENTS
What is a patent? Patent law deals with the protection of the mental concepts or creations known as inventions. The authors of the U.S. Constitution wrote a provision specifically empowering the federal government to implement a patent system. The laws and rules that govern patent law can be found in Title 35 of the United States Code, Title 37 of the Code of Federal Regulations, Manual for Patent Examination and Procedure, Official Gazette, and the United States Patent Quarterly. These sources can be found in the government section on the lower level of the MSU main library. 

A United States patent is a grant by the government giving a patent owner the right, for a term of years, to prohibit others from making, using, or selling the discovery or invention described in the patent document. A patent is considered personal property and may be licensed or assigned by the owner to others, which permits those others to make, use, or sell the invention.

Who can obtain a patent?
Patents are granted to the true inventors (researchers) of patentable inventions, and the inventors are listed as such in the patent document.

What can be patented?
To be patented, an invention must possess the following qualities:

Novelty. The invention must be new -- that is, it must be different from "prior art" (see below). In other words, it must be slightly different from that which is already known to the public. Novelty also means that you, the inventor, cannot have published the invention, put it in public use, or offered it for sale more than one year before applying for the patent.

In addition, you cannot get a patent for someone else's invention.
 
Utility. The invention must be useful. Some level of benefit must be provided by the invention.

Nonobviousness. The invention must not be obvious to anyone knowledgeable in the area at the time the invention was made. An invention that solves a known problem is nonobvious if others attempted to solve the problem but failed.

In short, anything that is made by an inventor is patentable, excluding such things as principles of science and laws of nature. Whether your invention possesses the above qualities often requires an opinion from a patent attorney. To receive a patent, you must disclose enough information in the patent document to allow one knowledgeable in the area of the invention to use it. The U.S. government sees the granting of patents to an inventor as an incentive to disclose inventions fully and thus a way of promoting the advancement of science and disclosure of that science to the public.

What is prior art? The novelty requirement means that you cannot patent anything that is not new. This means the invention must be different from all earlier inventions. Prior art is the total amount of technical experience and knowledge that exists in the field pertaining to your invention.

How can I protect my invention?  Keep accurate records of the development of the invention from conception of the idea through each stage of research. A permanently bound, detailed research notebook is an important part of documenting the inventive progress.  Include sketches and detailed written descriptions of activities. Each entry in your notebook should be read, dated, and signed by an individual who understands the invention and its development. Witnesses cannot be co-inventors. It is best to have the same person who witnessed the original conception of the invention witness later developments. Witnesses should be people who are technically capable of understanding the invention. Possible witnesses might include the department chairperson or a fellow researcher who is not a part of the project. Retain all correspondence pertaining to the invention, as well as all receipts for materials purchased or services performed by others. Gather together all technical information, literature, and documentation relevant to your invention. Avoid disclosing the invention.  Premature public disclosure of your invention can cause you to lose the ability to obtain a patent. Keep an accurate record of important dates. A record of dates is very important to the process. It should include:

- the date the invention was conceived
- the date on which the first written description, sketch, drawing, or model of the invention was given to others
- the date the invention is reduced to practice, i.e., by making a working model
- the date the invention is first put in public use (this does not include laboratory testing but may include field testing)
- the date the information is first published--this is, disclosed in a "printed publication"
- the date the invention is first offered for sale
- the date the invention is first sold

Once any of these occur, there is a time limit of one year in which you may file a patent application.
 
It is particularly important to remember that a patent application must be filed within one year from the date of first disclosure in a "printed publication." As defined by patent law, "printed" can mean printed, typed, or handwritten, and "published" simply means made available to the public, including oral presentations. "Public" means anyone who is not a co-inventor, a trusted witness.  The disclosure of an invention to the public more than one year before application for patent is made will be considered a bar to the issuing of a patent.

       


When should a patent application be filed? A patent application can be filed upon conception, before the invention has been made in the laboratory, or even before preliminary or exploratory laboratory work has been done. It must be filed before the one-year anniversary of the invention's public disclosure. A patent attorney will help to determine the appropriate filing time for the invention.

In which patent category will my invention be placed? The U.S. government grants the following three types of patents:

Utility Patents. Utility patents are granted for any new or useful process (how to do something), machine, article of manufacture, or composition of matter or any new and useful improvement thereof. This is the most common type of patent, and the one that will almost certainly be applicable to your invention. Some examples of utility patents are new instruments, tools, accessories, new uses or methods of producing compounds, and transgenic animals and plants.
 
Design Patents. Design patents are concerned with the appearance of an article of manufacture. They are granted for any new, original, and ornamental design, such as toys, furniture, and containers.

Plant Patents. Plant patents are granted for any distinct and new variety of plant that the inventor has produced asexually, such as flowering plants and fruit trees.

Who writes and files the patent application? A patent attorney writes and files the patent application. The application is sent by the attorney to the U. S. Patent and Trademark Office (PTO). Upon receipt, the PTO assigns a serial number and records the date of receipt. This process is referred to as "filing" a patent.

How much will I be involved in patent application preparation? As the inventor, you must supply all basic information to the patent attorney and may be asked to supply additional information. Drafts of manuscripts, abstracts, and various reports are often useful when drafting the patent application. The attorney may also need copies of related articles that you or others in the field have published. You will be expected to review the application and seek revisions until satisfied the application correctly identifies the invention.

What is the content of a patent? The actual patent document contains numerous items: the patent number, the date the patent was issued, the title of the invention, the name of the inventors, and the assignee. The filing date of the patent application is also included as well as cited references, such as U.S. patent documents and other publications related to the invention. The patent also contains an abstract, which is a detailed one-paragraph summary of the invention, figures, tables, schematics, and drawings that show how the invention is put together. Following the abstract and drawings is a detailed description of the invention and the object of its use.

The most important part of the patent is contained in the "claims." A claim basically defines the extent of the subject matter of the invention or discovery for which patent protection is afforded. Thus, no matter how broadly or how extensively an invention is disclosed in the body of the patent, only what is claimed is actually patented.
 
What does "patent pending" mean? The term "patent pending" is a means of informing the public that a patent application is on file in the U.S. Patent and Trademark Office. The law imposes a fine on those who use this term falsely to deceive the public.

What happens after a patent application is filed with the U.S. Patent and Trademark Office? If the application is complete, the U.S. Patent and Trademark Office (PTO) will give the application a sequential serial number and a filing date.

The application will be examined by the PTO group in charge of the technical class to which the invention belongs.

Within six to eighteen months, the individual who examines the patent sends the first "official action" to the patent attorney specified to receive correspondence. If all the claims are patentable and MSU has paid the appropriate fees, the patent will be issued.

Typically, the application is not accepted as is, and some of the claims may have to be modified or eliminated. In this case, the patent attorney may need assistance in amending the application. The amended application is resubmitted and the process begins again.

How long does it really take to get a patent? The length of time it takes to get a patent varies depending on the complexity of the invention and the prior art that already exists in a particular field. Sometimes, patents have been received as soon as one month after filing, and as long as two years or more from filing. On average, it takes approximately eighteen months from filing to issue to obtain a utility patent. Design patents take longer.

How much does a patent cost the inventor? Several fees are required to obtain and maintain an issued patent. A typical application for a patent can cost from $4,000 to $5,000 to draft, depending on the complexity of the invention. It includes a basic filing fee and additional fees if an application exceeds the specified number of claims included in the basic filing fee. If the Patent and Trademark Office (PTO) disputes the application, the external patent attorney may have to persuade the PTO to accept the application or amend it to satisfy the PTO, which may add $1,000 to $5,000 to the bill. If the PTO allows the patent to issue, an issue fee is due. In addition, maintenance fees are due periodically throughout the patent's life; if any of these fees are delinquent, the patent will lapse and all rights will pass to the public. In summary, the basic investment in a patent, including patent attorneys fees and maintenance fees will be at or near $10,000 to $20,000.

How long does patent protection last? Assuming all maintenance fees are paid and the patent is not permitted to lapse, the protection given to utility or plant patents will last twenty years from the filing date. A design patent will last fourteen years from the date the patent was issued.

What does a patent protect? A patent grants to its owner the right to file and maintain a lawsuit against anyone who makes, uses, or sells the owner's patented invention without the owner's permission. When anyone other than the owner makes, uses, or sells the owner's invention without permission, it is called patent infringement. A patent owner may sue for compensation of past infringement and may obtain a court order preventing further infringement.

How is patent protection enforced? Many conflicts involving patents are settled by negotiation. If negotiation fails to produce a resolution, a lawsuit may be brought in a federal district court located where the infringer resides or where infringement occurs and the infringer has a regular and established place of business. The objectives of bringing suit are to recapture damages (i.e., legal fees, back royalties, cash, etc.) and obtain an injunction to prohibit further infringement.

Does a U.S. patent protect an invention worldwide? No. Patent rights are limited to the boundaries of the country that granted the patent. A U.S. patent is enforceable only in the United States, its territories, and its possessions. To be protected in another country, an invention must be granted a patent in that country. 

Foreign patents may differ from U.S. patents. For example, in the United States, you may file for a patent on an invention up to one year after publishing or selling the invention. In most foreign countries, you cannot get a patent if the invention has been disclosed anywhere in the world before filing a patent application in that particular country. Therefore, if an invention is disclosed anywhere before the date of filing in the United States, patent protection is not available in foreign countries. In addition, if an invention is important to U.S. security, has military value, or relates to sensitive technologies, the U.S. government will not allow foreign patent applications to be filed.

What is the relationship between patents and publications? United States patent law permits an inventor to obtain a patent if a patent application is filed within one year of the date of the first publication that disclosed the invention. In order to obtain a patent, the inventor must fully disclose the invention. Thus, in some ways, the act of patenting ensures publication. If a faculty member or researcher starts the patent filing process at the same time that he or she submits a manuscript for publication, it is likely that the patent application will be filed (in three months) before the manuscript is published (usually more than six months). It is not a matter of having to choose between patents and publications; both are feasible and desirable.

What if my invention is not patentable? Inventions that are not patentable may still be valuable. There may be a great deal of "know-how" about your invention. Basically, know-how is "knowing how" to do something using this knowledge. The university could market this know-how or it could return the invention to you.



TRADEMARKS

What is a trademark? Trademark law deals with the degree to which the owner of a name, word, or symbol used in marketing goods or services will be afforded a monopoly over the use of the name to identify and distinguish his or her goods or services from others. The laws and rules that govern trademark law can be found in Title 15 of the United States Code and Title 37 of the Code of Federal Regulations. These sources can be found in the government section, lower level, of the MSU main library. 

A trademark is any word, name, symbol, logo, device, or combination of these adopted and used by a manufacturer or merchant to identify its goods and to distinguish them from those manufactured or sold by others. TIDE, KLEENEX, and PILLSBURY DOUGHBOY are examples of trademarks.

What is a trade name? A trade name is the name of a business, corporation, company, etc., that distinguishes one business entity from another. For example MICHIGAN STATE UNIVERSITY, CHRYSLER, FORD, and GENERAL MOTORS are examples of trade names.

What is a service mark? Service marks are the same thing as trademarks except that they identify and distinguish services rather than products. For example WENDY'S, BLUE CROSS & BLUE SHIELD, and UNITED AIRLINES are examples of service marks.

What is the scope of protection for a trademark? Trademark rights in the United States are fundamentally concerned with:

Deception. Protection of the public from confusion, mistake, or deception as to the origin and/or quality of goods, services, or commercial identity arising from the use of a confusingly similar mark or name on the same or similar goods/services.

Goodwill. Protection of an owner's investment in goodwill associated with the mark or name.

What do trademark laws protect? Trademark laws protect the owner's commercial identity in its established trademark against confusingly similar use by a newcomer's trademark. From an economic viewpoint, trademark law protects the value of the trademark owner's reputation and his or her investment in advertising.

Why trademark an invention? Trademarking an invention affords double protection, allowing the owner of a trademark and invention to obtain broader protection for the invention, realize greater royalties, and obtain more recognition for the invention.

LICENSING

Inventions, patents, trademarks, and know-how are made available to the public through contractual arrangements called licenses. The following questions/answers provide a preview of the brochure "Marketing Your Invention," the next in our intellectual property educational series.

What is technology transfer? The transfer of technology from the academic environment into the commercial market is a main interest of the Office of Intellectual Property. This transfer consists of taking a technology invented at Michigan State University and seeking a licensee from industry who can bring the technology to market.

What is the purpose of licensing? When a patent is licensed, Michigan State University retains patent ownership, but allows another to make and/or use and/or sell the invention. A license agreement is a contract between parties and includes any provisions agreed to by the parties.

Typically, a license agreement details what use may be made by the licensee (the industrial company) of the invention (made, used, or sold), what length of time this use may be made, and what payment will be made to the licensor.

How does the licensing of trademark rights work? Trademark licensing follows traditional contract principles, but the licensor must control the nature and quality of the licensee's goods or services to protect the licensor's rights in the mark.