Patent & Invention Basics

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Patent Basics

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The U.S. Patent and Trademark Office grants patents in three categories:

Utility Patents: Most common patent -- for machines, articles of manufacture, composition of matter, and methods of making and doing things. Animal patents fall within this category.

Design Patents: This patent protects only the ornamental appearance of the device. A very simple application to fill out because there is only one claim.

Plant Patent: Any plant produced by budding or grafting, i.e., asexually reproduced. When you buy a rose plant, for example, note that it is most probably patented.

Elements of a Patent
A patent application consists of five elements:

1. A declaration that attests to the fact that you are the true inventor. It is like swearing that you did not copy the invention from someone else.
    
2. Filing fee.
    
3. All drawings -- if drawings help explain the invention. The drawings do not have to be perfectly executed, initially. They should, however, show all of the parts of the invention, because nothing can be added later. The drawings must be perfected at the time the PTO decides to grant a patent.
    
4. Written specifications -- a description of the invention, referencing the drawings, such that someone skilled in the art can understand what it is, how it works, how it is assembled, and what its attributes are.
    
5. At the end of the specification are the claims -- the legal part of the patent. They specifically define what the improvement is. The claims are the basis for your suit for infringement if ever you need that resort. The suit cannot be based on the drawings or the description. The claims are the legal part.

The Patent and Trademark Office also requires the submission of copies of any other patents or relevant published materials similar to or related to your invention. But the application itself consists of only the five elements above.

What is a Patentable Invention?
To be eligible for a utility patent, an invention must be either:

• a machine (e.g. a mechanism with moving parts);
• an article of manufacture (e.g. a hand tool);
• composition of matter (e.g. plastic or alloy);
• a process (technological methods);
• a new use of or improvement to an existing invention. Living organisms or other natural matter that is modified or isolated may be potentially patentable.
• Intangible ideas or objectives are not patentable.
• In addition to fitting into one of these classes, an invention must also be: "novel", i. e., it was not previously known or used by others in the U. S. or described in a printed publication anywhere; "unobvious" to a person having ordinary skill in the relevant art; "useful", i. e., it has utility, actually works, and is not frivolous or immoral.

Patentability Determination
In addition to a review of the relevant literature for "prior art", a patent search can be conducted, using the resources of the Patent & Trademark Depository Library Program at the Clemson University Library, that will provide a reasonable assessment of the patentability of a particular technology. A disclosure of a similar concept or device in an earlier U. S. patent can prevent an inventor from obtaining a patent on his/her invention. A patentablity search may reveal this kind of earlier disclosure. If the results of a search are generally unfavorable, the inventor may not wish to pursue a patent application. Alternatively, the search may be helpful in preparing the patent application and predicting the scope of protection. Another benefit of a search is an indication of whether the invention may potentially infringe on another patent.

Patent Duration
Utility patents expire 20 years from the date of filing with the U. S. Patent & Trademark Office, if maintenance fees are paid. Plant and design patents do not require maintenance fees. Design patents expire 14 years from grant. A patent cannot be renewed. After a patent expires, anyone may use the invention without the inventor's permission.

Inventorship
Inventorship has a strict legal meaning under the laws and regulations of the U. S. patent system. The law specifies that only those who have made independent, conceptual contributions to an invention are legal inventors. An inventor is one who, alone or with others, first invents a new and useful process, machine, composition of matter, or other patentable subject matter. The most important consideration in determining inventorship is initial conception of the invention. The courts have ruled that, unless a person contributes to the conception of the invention, that person is not an inventor. Conception of the invention under patent law has been defined as the "information in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice." An invention is complete and operative "if the inventor is able to make a disclosure which would enable a person of ordinary skill in the art to construct or use the invention without extensive research or experimentation".

A patent application consists of three parts:

1. its specification including one or more claims - a narrative presentation of the invention, including prior art;
    
2. drawings, where necessary to help describe invention;
   an oath by the applicant(s), as specified by law.
    
3. Legal determination of inventorship is made in relation to patent claims. The test of inventorship is whether a person has made an original, conceptual contribution to at least one of the patent's claims.

To be a sole inventor, a person must be responsible for the conception of the invention as described in all the patent claims. Each co-inventor is considered to have the same legal interest in a joint invention as any other co-inventor. For legal reasons, the status of co-inventor may not be conferred merely as a reward for hard work, friendship or even outstanding science. This means that colleagues, students, research assistants, technicians, etc., and those who supervise them, even though they may gather essential data or construct a practical embodiment of the invention, are not inventors unless they have made an inventive contribution.

What is the inventor's (author) commitment in the patenting/marketing process?

Although most of the marketing and patenting (copyright) functions will be performed by the Technology Transfer staff, considerable input is usually required from the inventor (author), especially in the patent applications process and, to a lesser extent, for copyright applications.

What about publications?
If a technology has commercial potential and should be protected and marketed, it is advantageous to disclose the technology to the Technology Transfer Office for review of the technology's patent potential well in advance of any "public" disclosure of the invention (abstracts, papers and dissertations may be considered public disclosure). If public disclosure occurs prior to filing a U.S. patent application, valuable foreign patent rights may be lost. It is also encouraged that grant proposals be labeled "confidential" upon submission to avert any potential "disclosure" questions. Disclosure of the invention to the Technology Transfer Office should be far enough in advance of public disclosure as possible.

Protecting your technology
It is important to keep thorough records in the form of lab notebooks that record your ideas and experiments and note independent witnesses to verify successful results. As such:

• Inventors should keep good research notes in indelible ink in a bound notebook, with numbered pages. The notebook is a record of progress, what was done and when, what parts were bought, what was thought of when -- and includes sketches.
   
• Leave no blank pages or large blank spaces.
   
• Date and initial every page; if possible, have witnessed.
   
• Identify and cross-reference non-notebook material, i.e., tapes, biological materials, x-rays, scans, etc.

In the U. S., if anyone else also files a patent application that is essentially the same as yours, the inventor that can prove that he or she was the first inventor -- by date of conception -- will win the patent grant.

The old "letter mailed to yourself" method is not deemed advisable because, legally, it is weak evidence.

The courts want corroborating witnesses. They want to see periodic dated signatures on the notes from a colleague (not a close relative or someone you supervise). The corroborating witness must be someone that can read and understand what you've accomplished.

Team studies: Secure written verification of authenticity of data provided by every person involved, including faculty, graduate students, post-docs, visiting scientists, technicians, etc.

A Confidential Non-Disclosure Agreement is highly recommended before you discuss your invention with a company or before you send unpublished confidential information to a company. This provides a measure of protection for the concepts and claims embodied in your invention.

When submitting a proposal to a Federal or state agency or a private/corporate foundation, notification of proprietary content should be included in the transmittal letter and all pages containing proprietary material should be embellished with the words "Confidential, Proprietary Information".

Additionally, a Materials Transfer Agreement (MTA) is strongly encouraged when sending proprietary samples (e.g. biological materials) to a company.

Can Marketing Begin Before the Filing of a Patent?
A patent is not required in order to sell an invention; the product may be sold before filing a patent application. A patent conveys no rights to make/use/sell an invention. It allows the holder to stop others from so doing. An inventor can do anything with his/her invention, without a patent, unless it infringes on someone else's rights. So, the only way you can be precluded from making, using or selling a product is if someone else has a patent on it and stops you from doing so. An application need never be filed. However, the patent is the inventor's protection against competitors -- which is the main purpose of a patent grant.

You must be cautious of making, using, selling, or showing an invention publicly before filing a patent application. The one-year rule applies:
If more than one year passes between the time an invention is first publicly shown and the time the patent application is filed, a patent cannot be issued. This is true even if you are the first-to-invent, it is a really great invention, and it is truly novel -- no one can get a patent, including the inventor. This is called the one-year publication bar.

Filing a disclosure document within one year of publication is not good enough. The actual patent application must be filed within the year; otherwise, one is barred from obtaining a patent.

A Confidential Non-disclosure Agreement should always be signed before you discuss your invention with any company. This provides a measure of protection for the concepts and claims embodied in your invention.