Leadership Laboratory
- Leadership Lab: Intellectual Property Series
This series of essays can help the IT manager learn how to identify and protect intellectual property and intangible assets.
Trademark Infringement - The Likelihood of Confusion - Updated October 27th, 2008
Valuation of Intellectual Property Case Study - IPWatchdog.com -
What is Intellectual Property - March 14th, 2007
Creative Commons and Intellectual Property - May 1st, 2007
What Is a Patent? - April 7th, 2007
Copyright - April 7th, 2007
Digital Rights Management - April 7th, 2007
Trademark and Brand - April 7th, 2007
Trade Secrets - April 7th, 2007
The Value of IP - April 7th, 2007
Licensing and Franchising - April 3rd, 2007
10 Steps to Protect IP - March 13th, 2007
What Is a Patent?
April 7th, 2007
By Stephen Northcutt
Patents are tools that grant legal intellectual property protection to inventions, an object, process, or technique that is novel.
According to the US
Patent Trade Office, "A patent for an
invention is the grant of a property right to the inventor, issued by
the Patent and Trademark Office. The term of a new patent is 20 years
from the date on which the application for the patent was filed in the
United States or, in special cases, from the date an earlier related
application was filed, subject to the payment of maintenance fees. US
patent grants are effective only within the US, US territories, and US
possessions. The right conferred by the patent grant is, in the
language of the
statute and of the grant itself, the right to exclude others from
making, using, offering for sale, or selling the invention in the
United States or importing the invention into the United States. What
is granted is not the right to make, use, offer for sale, sell or
import, but the right to exclude others from making, using, offering
for sale, selling or importing the invention."1
Once again, we see this concept of a limited power of monopoly.2 The degree of uniqueness (novelty) is the key to having a patent application approved. The degree to which the invention mimics other objects, processes or techniques is called prior art. If your organization is fairly large, you may have a patent division. If you work for a smaller organization and wish to protect your intellectual property with a patent, expect to spend a considerable amount of money on an experienced patent attorney when applying for a patent. Obtaining a patent can be a complex, lengthy process.3
The dialog between the inventor and the patent attorney is crucial. The patent attorney must describe the essentials of the invention in such a way that if the patent application succeeds and the patent is granted, it will be clear if an infringement on the patent occurs. One of the biggest challenges in the patent process is to be approved for all of the protection the invention deserves. Sometimes the initial application is too specific or narrow in scope. Then, to improve on the application continuing applications are filed.
In January 2006, the US Patent Trade Office (USPTO) announced that they wanted to change the rules for continuing applications.4 Part of the proposed rule change is to restrict continuing patent applications. The system can be abused by acquiring too broad a protection. The poster child for this is Jerome Lemelson, who managed to corral the bar code reader even though bar codes were in use in business (prior art).5 "Much of the criticism of Jerome Lemelson and his patents has stemmed from the controversial, secretive methods by which he obtained some of them. Applying for many of these patents around 1960, Lemelson kept his applications alive for approximately 30 years by submitting a series of applications, and resubmissions, to the U.S. Patent Office."6
How Do We Know if Something is Patented?
U.S Patent and Trademark Office search tools can be found at http://www.uspto.gov/main/profiles/acadres.htm.
You can also search for international patents using WIPO's web page,
http://www.wipo.int/patentscope/en/.
The PCT, while signed by a
number of nations, doesn't give the exact same protection all over the
world. You can search for a patent in Australia using:
http://www.ipaustralia.gov.au/.
The primary responsibility of the security leader is to protect the information from the time it is invented until the application is filed. In addition, information security would need to ensure any ongoing dialog between the inventor and the patent attorney is protected. If your organization does not have internal patent attorneys, ensure that the email and voice communications between inventor and attorney are encrypted. In addition, it would be wise to assist the attorney with tools to encrypt the material on their hard drive. Additionally, if your organization has an intellectual property incident handling capability, you may be able to detect and report infringing patents.
1 http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
2 http://www.ftc.gov/speeches/other/dvisraelin.htm
3 http://en.wikipedia.org/wiki/Patent_application
4 http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html
5 http://www.sfgate.com/cgi-bin/article.cgi?f=/n/a/2005/08/20/national/a152207D74.DTL&hw=lemelson&sn=001&sc=1000
6 http://www.mhia.org/psc/pdf/Prosecution_Lemelson_Patent_Enforcement.pdf