Please Protect Your Intellectual Property – Part II: Patents

THIS IS THE SECOND IN A FIVE PART SERIES ON INTELLECTUAL PROPERTY.

“Do you have a patent for that?”

The U.S. Patent and Trademark Office says that a patent is:

PATENTS are a property right granted … to an inventor ‘to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States’ for a limited time in exchange for public disclosure of the invention when the patent is granted. There are three types of patents: 1) Utility patents …; 2) Design patents …; and 3) Plant patents.”

They go on to define the three types of patents:

1) Utility patents – 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 – a new, original, and ornamental design for an article of manufacture; and
3) Plant patents – invents or discovers and asexually reproduces any distinct and new variety of plant.

Examples of a utility patent are a new functional design of a steering column in a car, an athletic shoe support system, or the circuit of a mobile phone. Design patent examples are the appearance of high heels, front grills on cars or computer hardware cases. Plant patents could be a new variation of corn or tomatoes.

The design of an industrial product or its components are frequently covered by utility or design patents. “Intellectual property is only valuable if the owner is willing and able to defend it.” That includes patents and can be a daunting task. There are large companies who fend off charges of patent violation, by a small inventor, by countering with a mountain of patents held by the large company.

Another complication can come from products or components originally designed under Independent Research and Development and then integrated into defense products.  The U.S. Government claims a set of rights, in this situation based on agreements with its research partners.

There are four “tests” for a utility patent:

  1. Statutory-class
    1. According to the statute, your invention must be a process, machine, manufacture, composition or a “new use” of any one or more of them.
  2. Utility
    1. The thing being invited must be deemed useful.
  3. Novelty
    1. There has to be a feature that sets this invention “apart from previous inventions and is unknown to the public.”
  4. “Unobviousness”
    1. Obvious implies that the invention or its features are not obvious to anyone who might encounter it.

Companies often own the patents for products designed by its employees. Many companies have employees sign a document like a pre-invention assignment agreement at the time of employment to solidify the transfer of ownership while the employee retains the title of inventor. Some employees cannot see the fairness in the company owning their creative work in the invention. Most companies rest their argument to retain ownership in the fact that they paid the employee’s salary for the entirety of their employment, even when they were not inventing. The company accepted the risk, they want the reward.

Businesses need to identify the information that is valuable to them and then seek the advice and counsel of qualified professionals to implement a plan to protect that valuable information.

Copyrights, trademarks, and trade secrets will be explored in the third through fifth parts in this series of blog postings.


ABOUT THE AUTHORS: 

STEVE CZERNIAK – Mr. Czerniak retired after a successful career that culminated in fifteen years of experience as an internal consultant and “change agent.” He is currently an Expert-in-Residence at the Macomb-Oakland University Incubator and a volunteer with the Troy Historic Village and Historical Society.

ROBIN LUCE-HERRMAN for BUTZEL LONG – Founded in 1854, Butzel Long is one of the oldest firms in the Midwest United States and has offices in Michigan, New York, Washington, D.C., and alliance offices in Mexico and China. Since our inception, we have played a prominent role in the development and growth of many industries in Michigan. Our firm has over 3,000 geographically diverse clients that are active in national and international markets. These clients come from many sectors, including advertising, automotive, banking and financial services, construction, energy, healthy care, insurance, manufacturing, media, pharmaceuticals, professional services, publishing, real estate, retail and wholesale distribution, technology, transportation, and utilities.

REFERENCES:  1) http://www.uspto.gov/learning-and-resources/glossary#sec-i; 2) http://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-2; 3) https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=9&ved=0ahUKEwiF4IDFxpHOAhUl7IMKHavjBdcQFghgMAg&url=https%3A%2F%2Fwww.entrepreneur.com%2Fencyclopedia%2Fpatents&usg=AFQjCNEIFGeuVkKDL917Od-IzYPRtiWiYw

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