Patent Protection Pointers
Product development is difficult enough, whether it is a new invention from the proverbial drawing board or a modification of an existing product. One of the key issues facing corporations today is how to protect developments for new machines, products, foundry processes, etc.
Additionally, there are times that the “when” question is just as important as the “how,” because obtaining patent protection includes a number of statutory deadlines.
Patent protection is essentially a grant of a right to exclude others from practicing an invention in exchange for providing a full disclosure of how to practice the invention. In almost all cases, patent protection extends 20 years from the original filing date. In other cases, the inventor or business can use trade secrets in search of longer lasting, perhaps perpetual, protection for the invention.
Two types of patent applications that are most used in the manufacturing world are “non-provisional patent applications” and “provisional patent applications.” The non-provisional patent application provides a full disclosure of an invention, includes claims that define the invention, and can eventually lead to a patent after claims are found allowable during examination by a patent examiner.
In contrast, provisional patents do not require claims, are never examined, and are often used to hold a date of application at the United States Patent and Trademark Office (USPTO).
The differences here are significant, as the America Invents Act of 2011 changed the U.S. patent system from a “first to invent” system to a “first inventor to file” system. As such, many businesses and inventors prefer to file a provisional patent application with a brief disclosure in order to more quickly plant a flag in Washington D.C. to obtain an earlier filing date, thereby gaining superior rights to others who later file applications for the same or similar inventions.
Subsequent filing of non-provisional patent applications within one calendar year claim priority to the provisional patent application to maintain the filing date claim.
While this system change has the good intention of simplifying the previous system of determining who was the first to invent a particular machine component or casting process, patenting decisions are now accelerated along with the research and development decisions and commitments.
This timeline acceleration can bring manufacturing operations into a legal minefield of confidentiality and disclosure rules. Keep in mind that in both the new and old patent systems, there is a twelve-month window after disclosure for the applicant to file the patent application at the USPTO.
After the 12-month grace period, American patent rights are extinguished. Perhaps more problematic is the fact that most foreign countries require that there be no previous disclosure prior to filing a patent application. As a result, even an errant disclosure on social media or at a trade show by an eager and well-intentioned employee can sink hopes of foreign patent protection.
With these pitfalls, it is important to remember that protection of your inventions is not all that difficult to put into place. Here is one example of how an operation can provide better protection for its inventions:
First, have every applicable employee in the company sign an appropriate confidentiality agreement, a non-compete agreement, and an assignment of “inventor’s rights” to the company so there will be no questions in the future as to invention ownership and confidentiality.
Second, if vendors are involved in the development project, it is best to have an agreement between the two parties to define both confidentiality and non-disclosure. The agreement should also make the vendors specifically acknowledge and agree that every part of their contribution to the project is assigned to you (the manufacturer or the casting supplier), along with any present and future patent rights. These agreements should include not only the products and inventions being developed, but also any follow-on products and inventions that might be future offspring of the project.
Third, any “field testing” programs are designed and implemented with trusted customers who also agree in writing to confidentiality. Results of the field testing must be used to judge the product in question.
Finally, if there is not a way to develop and test a product without a public disclosure, you have exactly 12 months from the disclosure date; therefore, make sure your patent lawyers are involved as early in the project as possible. This will help ensure that when the product gains commercial viability, a solid patent application is already in the works.