There are many common myths and misconceptions about the patent system. The patent bar must do a better job of advising scientists, engineers, inventors, and entrepreneurs about the intricacies of the patent system. Some common fictions are:
1. FICTION: A Patent confers exclusive rights to practice an invention.
FACT: A Patent confers no affirmative rights, but rather is the right to exclude others from making, using, or selling the invention.
2. FICTION: A U.S. employer owns the rights to inventions made by its employees by nature of the employer-employee relationship.
FACT: In the U.S., Patent rights belong to the inventor unless the employee assigns such rights to the employer. This is problematic as technology-driven companies need to own the technology that they develop. To avoid this complication, many such companies require employees to assign their patent rights made during the employment term when the employees are first hired.
3. FICTION: If we get a U.S. Patent, my patent rights can be enforced anywhere in the world.
FACT: Patents are territorial in nature and cannot be enforced in a foreign court. If you want patent protection outside the U.S., you will need to file Patent Applications in foreign countries. However, a U.S. Patent does give the patent holder the right to prevent others from making, using, selling, or importing infringing products, into the U.S. from any other country.
4. FICTION: If a U.S. company hires a consultant to write a computer program, once the consultant has been paid the U.S. company owns the copyright to the program.
FACT: Authors own the copyright to the works that they create. As such, the consultant and not the company owns the copyright — and has the exclusive right to produce copies of the original work, to sell such copies, and to create derivative works. Of course, these rights can be transferred to the company by written contract.
5. FICTION: The U.S. Patent Office would not have granted the Patent if there were infringement issues.
FACT: The U.S. Patent Office only examines a Patent Application for patentability – is the subject matter new, useful, and nonobviousness. Counsel will need to be engaged if there are infringement issues.
6. FICTION: I can save money by getting a Provisional Patent.
FACT: There is no such thing as a Provisional Patent. However, a U.S. Provisional Application is a cost-effective tool in establishing an early filing date. The U.S. Provisional Application is defers many patent costs while preserving Patent rights. The inventor has “Patent Pending” status for 12 months after the Provisional Application has been filed. However, a Patent Application will eventually need to be filed before a Patent can issue.
7. FICTION: There’s no competition for my product line, so there’s no reason to spend money on Patents.
FACT: You may not now have competitors for your products now, but be assured if your products have commercial value, competitors will find you. By securing a Patent, you have a right to prevent others from making, using, or selling a product that would infringe your Patent.
8. FICTION: All of the claims of a Patent must be infringed to constitute an infringement.
FACT: There is infringement of a Patent when anyone makes, uses, sells, or offers for sale a product that infringes any single claim of the Patent, during the term of the Patent, within the country that issued the Patent.
9. FICTION: An inventor has no rights to a Patent.
FACT: In the U.S., the inventor owns the Patent absent a contract where the inventor’s rights have been assigned or otherwise encumbered. And, if there are co- inventors listed on the Patent, each co-inventor has a right to make, use, or sell the patented technology without any legal obligation for an accounting to the other co-inventors (although there may be a moral obligation).
10. FICTION: An inventor must build a working prototype of the invention to obtain a Patent.
FACT: There is no longer a requirement for a working prototype or model. However, the patent disclosure must satisfy two basic requirements: (1) It must teach a person familiar with the technology how to practice the invention; and (2) It must disclose the best way of practicing the invention known by the inventor at the time the Patent Application is filed.
11. FICTION: If our Patents are allowed to lapse, we can always get new ones.
FACT: In new technology, broad patent protection is available. As the technology develops, the scope of available patent protection narrows. Improvement Patents cannot replace the broad scope of coverage that is intially available. As maintenance fees increase for your core technology, it will be tempting to abandon the older Patents – but beware.
12. FICTION: All new technology disclosed in the Patent is protected once the Patent is granted.
FACT: The Patent Office grants a patent monopoly for the inventor’s contribution. The patent claims define the scope of the patent grant. It is the responsibility of the attorney/agent to claim the invention as broadly as possible. Any new technical disclosure in a Patent that is not claimed moves into the public domain.
13. FICTION: If I have a Patent, then I have the exclusive right to make, use, or sell my invention.
FACT: The scope of the Patent is determined by the patent claims. If another holds a Patent to a key component of your invention, the other may prevent you from making, using or selling your own patented invention.
14. FICTION: Inventorship is not important. List the boss, a business partner, or a friend as a coinventor.
FACT: In the U.S., improper inventorship may render a Patent unenforceable. Anyone who makes an inventive contribution to the subject matter claimed in a Patent must be listed as an coinventor. Noninventors may participate as assignees or investors, but not as coinventors.
15. FICTION: The first inventor is the only one who may obtain a Patent.
FACT: Under current U.S. law, the Patent is awarded to the first to invent. However, under the new law, the U.S. is transitioning to a first-to-file system. It is believed that once this transition is complete, U.S. inventors will be on a level playing field with their counterparts all over the world.
16. FICTION: We don’t need a Patent. The technology is changing so quickly that by the time a Patent issues the technology will be outdated.
FACT: It now takes an average of 27.8 months for the USPTO to issue a first Office Action on the merits for a new patent application. However, by using the new prioritized examination program, either allowance or final rejection is determined within 12 months of filing in most cases. Otherwise, it will generally take three or more years for a Patent to issue, and if your company plans to work in the same technology, you may be well-advised to develop a patent portfolio. The patent portfolio may even enable your company to develop a royalty stream from competitors or be useful as a bargaining chit in a pending lawsuit against you.
17. FICTION: Even though our technology really gives us an edge over our competition, it isn’t patentable.
FACT: The U.S. Patent Office has granted Patents for new life forms, new business methods, technology based upon new computer algorithms, and a variety of other technical advances that go far beyond what was initially envisioned by the founding fathers. If you have unlocked one of life’s mysteries that the best minds in the world had heretofore failed to uncover, unless it is based upon a law of nature or involves something that contributes to public immorality, counsel can generally devise some way to protect it.
18. FICTION: Patents are expensive. Our company is better served spending money on R&D than in filing Patent Applications that will not issue for several years.
FACT: Yes, Patents are expensive. But if you have a strong R&D team, you may be well-advised to protect the technology that is developed and that the company is funding. There are effective ways to preserve patent rights worldwide while deferring patent-related costs. And, when your company receives the proverbial “knock on the door” from a competitor to discuss patent infringement, you must not be defenseless. If you don’t have Patents in your arsenal, your company may soon be looking for new products, new markets, and a new management team.
19. FICTION: If someone violates the single sentence of a dependent claim, the Patent is infringed.
FACT: A dependent claim, by definition, depends from an independent claim and includes all of the limitations of the independent claims from which it depends. If there is one limitation in either the independent or dependent claim that is absent from the suspected infringing device, there may be no infringement.
20. FICTION: I can keep information about my Patent a secret.
FACT: In order to obtain a Patent, U.S. Application must include (a) an enabling disclosure – a guide as to how to practice the invention; and (b) the best mode — the best way that the inventor knew of practicing the invention at the time the Application is filed. However, if a better mode is discovered after the Application is filed, there is no requirement to refile the Application unless patent protection is sought for the better mode.