Brinks Hofer Gilson & Lione
Ann Arbor, Mich.
Legal protection for inventions is increasingly important in today’s business world. Often, considerable time, effort, and money go into converting an idea into a useful invention. The U.S. patent system provides an incentive for inventors and businesses to invest in R&D by providing limited rights of exclusivity for new innovations. In particular, a patent provides a government-granted monopoly for an extended period that excludes others from making, using, selling, or importing the invention without the patent owner’s permission.
I have interacted with the patent system both as an inventor during my engineering career and as a patent attorney. Some of my patented inventions were commercially implemented and are quite valuable to my previous employers, including a vehicle instrument panel with an integrated air bag and a method for laminating flexible electronic circuits to rigid substrates. Not all of my patented inventions were commercialized, but many still play a vital role in realizing the investments spent on R&D.
For example, patents often prevent others from expanding into protected areas, forcing the competition to focus elsewhere. Alternatively, patents may be useful to other parties, thereby encouraging them to license the technology from the patent owner. Therefore, the legal protection provided by patents fosters innovation whether or not an invention goes commercial.
Two main types of patents are utility and design patents. Utility patents are most common. They focus on a process, machine, article of manufacture, or composition of matter and provide legal protection for 20 years from the filing date.
Inventors usually file nonprovisional utility patent applications, but may also initially file provisional applications. Provisional patent applications are not examined by the U.S. Patent and Trademark Office (USPTO) for patentability, but instead establish an early filing date. It gives the inventor one year to further develop the invention, investigate potential success in the market, or obtain licensing agreements with lower initial costs. However, a nonprovisional application must be filed within 12 months to obtain a patent.
Design patents are granted for 14 years from date of issue for new, original, and ornamental designs for an article of manufacture. Design patents protect the aesthetic appearance of a product as opposed to its structural or functional aspects. This includes shape, color, and surface ornamentation. Design patents issue relatively quickly, are not subject to maintenance fees, and are generally much-less expensive than utility patents.
Preparing a patent application often includes conducting a patent search to gauge the competitive landscape, though it is not required by the USPTO. A skilled patent attorney or patent agent knowledgeable about recent court decisions and who is registered with the USPTO usually drafts the application. After review by the inventor, the practitioner files the application and typically acts on the inventor’s behalf to negotiate the application through the patent system. If approved by the USPTO, it is then issued as a patent.
As companies continue to seek a competitive advantage, don’t overlook the benefits of patents as part of a corporate strategy for differentiation and success.
Brinks Hofer Gilson & Lione (www.usebrinks.com) specializes in intellectual property and unfair-competition litigation, patents, trade secrets, intellectual asset management, and technology licensing agreements.
Edited by Kenneth Korane