Establishing trusting relationships with all clients is what makes the Law Office of Jason H. Rosenblum, PLLC stand out as the best choice in protecting your Intellectual Property.
A patent essentially gives the owner the right to preclude others from practicing, making, or selling an invention. One of the most common misconceptions is that a patent protects an idea. This is not accurate. Ideas are not protectable; inventions are. For example, the idea of a flying car is not protectable, but if you invent the rockets that provide the lift for the car, that could be one invention, the mechanism for steering the car could be another invention. And so on.
Protection afforded under a patent is generally much more specific than most people would expect.
What is an invention?
An invention is any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
A product like a cell phone, for example, has several patents that cover it and protect it because there are a number of inventions within the phone itself that allow a cell phone to work. There are patents covering the technology that enables the touch screen, the 4G and 5G technology, the ability to click on a phone number in an email and call that number, etc., as well as separate design patents that cover aesthetics of the phone including the icons on the screen, the shape of the phone, the placement of buttons, etc.
Most products have numerous potential patents that are covering all the inventions that are within the product.
Benefits and Limitations of Patents
The benefit of owning a patent is that it allows you – for the length of the life of the patent1- to stop anyone else from making, practicing, selling, and importing the invention that is claimed in the patent. Once the patent expires, however, the invention is in the public domain. That is essentially the agreement you make during your negotiations for the patent with the USPTO: you receive a limited monopoly over the invention so that others can learn from the patent and expand on it.
Another limitation is that you need to meet the statutory requirements for obtaining a patent and prove that the invention is new, useful, and non-obvious, which may be a much higher standard than you think.
Can Anything be Patented?
For an invention to be patentable it must be of patentable subject matter, and a new, useful, and non-obvious invention.
More often than not, clients come to us with an idea they think is unique, but once we start doing searches, we see that there are others who have disclosed an identical or very similar invention. In terms of “newness,” if anyone ever disclosed your invention, anywhere, it is no longer new. They do not have to make, sell, or even patent the invention. This anyone includes you as the inventor. That is, if you disclose your invention in any way in a public forum (whether for sale or not) prior to applying for a patent, your patent may be barred. Disclosures prior to patenting an invention, whether in the form of another’s patent, a patent application, blog post, advertisement, etc. are all considered prior art and if revealed in a search would prevent another too similar work from attaining a patent.
Another hurdle is obviousness. What that means is that a patent examiner can look at two or more prior disclosures and find a link that would have been obvious to a person of ordinary skill in the relevant industry to combine the teachings of those two together.
When we work with clients, one of the first and most important steps is figuring out what they believe their invention is and then, in most cases, doing a search to see what, in their invention, we think may be patentable based on the search.
The distinction between an invention and an idea is an important point we address in initial discussions with a client as well. As noted above, ideas are not patentable. Many times, clients come to us with an idea but they have not delved deeply enough into the intricacies of their invention to figure out how they actually plan to implement an idea and come up with something that is potentially patentable as an invention.
What is a Design Patent Application?
Design patents cover the aesthetic design rather than the functionality of a product (i.e. what the product actually looks like). A design patent does not protect how that product actually works. An application for a design patent is commonly used for our clients with a product that has a unique look compared to competitors’ products. It is often used by clients in the field of fashion, sporting goods, consumer goods, and for graphical user interfaces of software.
The Importance of a Due Diligence Search
Ideally a business owner should do as thorough a job as possible of conducting their own due diligence before investing in their invention. It is best if a business owner becomes an expert in the field in which they plan to file a patent application or disclose an invention in order to make a truly informed decision.
For patents, the due diligence we conduct on behalf of a client includes a detailed prior art search and critical assessment of the invention itself. Although it is impossible to say that with this due diligence and insight in the field, an invention will definitely lead to a patent once the application is filed, it will assist us and our client in assessing the probability of obtaining a patent and assist us in being advocates for our clients before the USPTO. We will also be able to understand, and therefore help our clients understand, how strong their patent might be, what it will protect, what is already known in the field as general knowledge, or what is covered by another patent.
With this information and with our assistance, a client can make an educated decision as to whether the always costly patent application process is worth it now or at some point in the future.