Leadership Laboratory

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.

Other Related Articles in Leadership Lab: Intellectual Property Series

What Is a Patent?

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. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant."[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 November 2007, the US Patent Trade Office (USPTO) put new rules into effect for continuing applications.[4] Part of the rule change was to restrict continuing patent applications because the system could be abused by acquiring too broad a protection. The poster child for that was 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]

In 2011, the USA changed from first to invent to first inventor to file. This puts us in line with every other nation in the world, but it does increase the importance of securing sensitive information related to a pending patent.[7] So these dates are very important both the filing date and also the "priority date, sometimes called the "effective filing date", is the date used to establish the novelty and/or obviousness of a particular invention relative to other art."[8]

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/.

Application of patent information for an Information Security Manager
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.

References: Links valid as of December 3, 2012
1 http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp#heading-1
2 http://www.ftc.gov/speeches/other/dvisraelin.htm
3 http://en.wikipedia.org/wiki/Patent_application
4 http://www.perkinscoie.com/files/Publication/e87fe5d9-7fe6-47e2-974b-2c058e8141e7/Presentation/PublicationAttachment/67dbe29b-bc79-4be1-a045-9377660d448a/New%20PTO%20CON%20Rules%20Summary.pdf
5 http://aimgermany.aimglobal.org/members/news/templates/template.aspx?articleid=533&zoneid=26
6 http://www.mhia.org/downloads/industrygroups/isc/technicalpapers/Prosecution_Lemelson_Patent_Enforcement.pdf
7 http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=2a5d1c67-7407-433a-8cdb-8094ec620379
8 http://www.patentlens.net/daisy/patentlens/2343.html