Can I Patent That?

As discussed here, two vehicles are commonly used to protect inventions – patents and trade secrets. Patents typically are better suited for protecting inventions that can be easily copied or reverse-engineered, for example, many products. Trade secret protection may be a better option for inventions that can be practiced in secrecy, for example, processes or formulas.

Let’s start with the legal effect of a patent. A patent is what we call an exclusionary right, not an affirmative right. What does that mean? A patent gives its owner the right to exclude others from “practicing” (making, using, selling, offering to sell, or importing) the invention covered by the patent. A patent is not a license giving its owner an affirmative right to practice that invention, because some aspect of the invention could be covered by a patent owned by someone else.  

For example, let’s say somebody obtains a patent on a cellphone, so that any cellphone would infringe that patent. You later invent and obtain a patent on a cellphone that identifies different callers with unique ringtones. Although you can prevent others, including the owner of the cellphone patent, from using your ringtone technology, you are not free to practice your own patented ringtone technology without permission from the owner of the cellphone patent. Freedom to practice any technology, including patented technology, is an issue separate from patentability of that technology.

Patents rights are issued by the U.S. government and other governments around the world. Because patents are government-issued, a patent has legal effect only in the country that issued it. This means that an inventor seeking patent protection in several countries might need to obtain a patent in each of those countries. Under various international treaties, it generally is possible to piggyback a foreign patent application onto a U.S. patent application within a certain time period (usually one year or less) from the U.S. application’s filing date. Each country applies its own law in determining patentability.

Patent rights are time-limited. With few exceptions, a U.S. patent expires 20 years after the date the patent was applied for. When a patent expires, so does the owner’s right to exclude others from practicing the patented invention. Once that right has expired, the public is free to practice the invention.

The principal criteria for patentability require that an invention be novel and non-obvious. “Novel” means new and not generally known to the public, and “non-obvious” means not readily apparent to one skilled in the relevant technical field.

Novelty, and the right to obtain a patent, can be destroyed by public disclosure of the invention before applying for a patent or selling or offering the invention for sale, whether publicly or privately. Common novelty-destroying activities include publishing an article describing the invention, selling or offering to sell a product embodying the invention, and discussing the invention with persons not bound to keep the invention secret.

Under limited circumstances, public disclosure of an invention less than a year before the filing of a patent application is not a bar to patentability under U.S. law. In most other countries, however, any public disclosure of an invention before the filing of a patent application is an absolute bar to patentability. As such, if an invention is to be patented, particularly in a foreign jurisdiction, it is important to keep the invention secret until a patent has been applied for.

Non-obviousness is often the most difficult criteria to demonstrate when seeking a patent. Importantly, it is measured from the viewpoint of one of ordinary skill in the relevant field, not one of advanced skill or one with no skill. What is often viewed by an inventor as “obvious” may not be legally obvious because the inventor is often one of more than ordinary skill. A common pitfall we see is that inventors fail to appreciate their own inventive contributions and often overlook the opportunity for patent protection.

A patent application must include a complete written description of the invention and any drawings that might be necessary to understand the invention. The disclosure must be sufficiently detailed to enable one skilled in the relevant field to readily practice the invention. The best way of practicing the invention also must be disclosed. With limited exceptions, a patent application is published about 18 months after its filing date. In any event, if a patent is granted from the application, the application’s disclosure will be published in the granted patent. We’ll discuss patent applications and the application process in more detail next time.

Because the patenting process necessarily publicizes the underlying invention, and because patent rights are time-limited, a patent might not be the best vehicle for protecting every invention. An invention that can be practiced secretly and that cannot easily be reverse-engineered, for example, a manufacturing process or formula, might be better protected as a trade secret.

This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.

Barnes & Thornburg LLP is a large, full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.


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Joe Paquin is a partner with Barnes & Thornburg, a national full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business. Joe represents business clients in litigation, patent portfolio development, risk avoidance and exploitation on a national and global scale. Mark Vrla is a partner with Barnes & Thornburg, a national full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business. Mark counsels clients on various issues concerning patents, trade secrets, trademarks, unfair competition and copyrights.