All of us at one time or another have probably thought about creating a product or inventing a process to solve a problem. The United States Patent Office receives more than six hundred thousand applications for invention protection each year.
Equally as great is the desire to police and protect existing patents. Llitigation costs on the resolution of a patent challenge will often run into the millions.
Let’s find out what we should know about patent applications and protection to keep preying vultures at bay.
WHAT YOU’LL LEARN FROM GREGORY AHRENS, INTELLECTUAL PROPERTY ATTORNEY AT WOOD, HERRON & EVANS LLP
WHAT SHOULD AN INVENTOR DO BEFORE APPLYING FOR A PATENT? (1:22 in)
In Greg’s words – Documenting their invention and the process they’ve gone through to come up with the invention and secondly some preliminary research to determine what other patents or prior inventions already exist.
Insight – The status of what currently exists plays a major role in determining the viability and scope of a patent. The first inventor to file, not when it was invented is key.
HOW LONG DOES THE PATENT APPLICATION PROCESS TAKE? (3:18 in)
In Greg’s words – It can take from several weeks to a couple of months.
Insight – The timeline depends upon the complexity of the description and drawings as well as the investigation into other patents or applications similar to the one that is to be filed.
ARE THERE LIMITATIONS TO A PATENT’S INVENTION PROTECTION? (3:58 in)
In Greg’s words – The term of the patent is 20 years from the original filing date of the patent application. The patent may have broader or narrower scope depending upon what other patents and products pre-existed at the time the invention was created.
Insight – Don’t assume a patent protects you from all competition.
HOW DO YOU DETERMINE WHETHER A PATENT IS BEING VIOLATED? (4:54 in)
In Greg’s words – Do an infringement analysis. Evaluate whether the product that may infringe has all of the required elements.
Insight – Pursuing an infringement case will probably be futile if the product in question doesn’t possess all of the required elements of the patent holder for invention protection.
HOW DO YOU DECIDE WHETHER TO TAKE LEGAL ACTION AGAINST AN INFRINGING ENTITY? (6:07 in)
In Greg’s words – It’s a business decision. How important is it to the company to police the marketplace.
Insight – Determine the value of the patent to the business versus the cost of litigation or the cost of getting an injunction to stop use.
WHAT CAN YOU DO TO PROTECT YOUR PATENT SHORT OF PURSUING LITIGATION? (8:26 in)
In Greg’s words – Companies can send a cease and desist letter. There’s one potential drawback. The recipient who has now been accused of infringement, they can then go to court and file a suit where they seek the court’s judgment that they didn’t infringe. An alternative, they can also establish a licensing program.
Insights– The goal is to prompt a dialogue between the parties in dispute. Weigh the probability of a reverse infringement lawsuit. As an alternative, consider creating a licensing program to collect royalties from others seeking to profit from your invention.
WHAT STEPS SHOULD A COMPANY TAKE IF THEY WERE ACCUSED OF INFRINGING UPON SOMEONE ELSE’S PATENT? (13:28 in)
In Greg’s words – One thing that should not be done is ignoring the notification. Determine if you have a defense. Engage in dialogue and try to seek resolution early.
Insights – Have your patent attorney do some research to assess whether you are an infringer or not. Based on the strength of your case, you may choose to go to court seeking a declaration against the charge. Or you could propose to become a licensee of the patent being contested.