Invention Mythology 101

By Gerald R. Black and George H. Morgan

Suppose, while working for your employer, you come up with a patentable idea. Further suppose you do it on company time and with company money. But when you came onboard, you never signed any sort of agreement about patent ownership. The company still automatically owns the patent, right?

Maybe not. This is an example of one of the many myths floating around about patents and patenting. In actuality, if there are no agreements, patent ownership depends on common law as defined by the given state in which the invention arose. In Illinois, for example, for such a case the company only owns the rights to use the invention in its own business. But it does not have the rights to the invention for the purpose of launching a new business. Interpreting these rights could be a “sticky wicket,” so to speak.

Another myth is that inventive individuals have no recourse but to sign away all their IP rights to their employers. One gambit we have seen is to request all the forms and paperwork to be filled out before showing up for the first day of work. That gives the new hire an opportunity to edit patent rights agreements so any inventions outside the employer’s line of business are not compromised.

All in all, there are more misconceptions and fables promulgated about patents than you’ll find about Roswell, N.M., at a UFO convention. Here are some of the biggest points of misunderstanding.

1. Myth: A patent confers exclusive rights to practice an invention.

Fact: A patent confers no affirmative rights. Instead, a patent confers the exclusive right to exclude others from making, using, or selling the invention. Also, if another party has senior rights to a component of the invention, the patent holder and the other party may find themselves in a mutually blocking position. In other words, neither can make use of their ideas without coming to some kind of understanding.

2. Myth: All new technology disclosed in the patent is protected.

Fact: The claims determine the scope of the patent. It is responsibility of the attorney/ agent to claim the invention as broadly as possible. Any technical disclosure in a patent that is not claimed moves into the public domain.

3. Myth: 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 The technology is changing so quickly that by the time a patent issues the technology will be outdated.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 will generally take at least three or more years for patent rights to mature. However, if the company plans to work in the same technology, it may be advisable to develop a patent portfolio. The patent portfolio may even let the company develop a royalty stream from competitors.

4. Myth: If our patents are allowed to lapse we can always get new ones.

Fact: In new technology, broad protection is available. As the technology develops, the scope of available patent protection narrows. Improvement patents cannot replace the broad scope available to pioneering inventions.

5. Myth: Infringement can be avoided by making small changes to the embodiments shown in the drawings.

Fact: The patent claims determine the scope of the patent coverage, not the drawings. Patents have varying scope. Some patents are so broad they cover all embodiments shown and much more. Other patent claims don’t even cover all of the embodiments shown.

6. Myth: Inventorship is not important. List the boss, a business partner, or a friend as a coinventor.

Fact: In the U.S., improper inventorship may make a patent unenforceable. Anyone who makes an inventive contribution to the subject matter claimed in a patent should be listed as an inventor or coinventor. Noninventors may participate as assignees, or investors, but not as coinventors.

7. Myth: The Patent Office would not have granted the patent if there were infringement problems.

Fact: The Patent Office only examines for patentability. It is only concerned with issues of new, useful, and nonobviousness (“inventive step” is the term outside the U.S.). An infringement search and opinion can be rendered by counsel.

8. Myth: To determine the scope of the prior art, only patents need to be investigated.

Fact: The prior art constitutes all information that has been made available to the public in any form that precedes the filing date of the patent application. It can include not just other patents but Internet publications, technical articles, trade journals, papers, and so forth.

9. Myth: If a patent search doesn’t turn up the invention, the invention must be patentable.

Fact: Only patent applications that were filed 18 months ago are available to a patent searcher. So you won’t find a patent application filed 14 months ago whether the search is done online or on-site. There is no way to search patent applications filed within the previous 18 months. The only databases that can be searched are issued other published references.

10. Myth: Individuals are powerless against large corporations.

Fact: In a settlement of a lengthy dispute, the inventor of the “intermittent windshield wiper” received over $10 million from the Ford Motor Co. for infringement of his patent. He also secured multimillion dollar settlements from a dozen other OEMs. Perseverance pays.

11. Myth: Patents are for big companies. The cost of obtaining and enforcing them is beyond the means of ordinary individuals.

Fact: Many individual inventors own patents. The cost of obtaining a patent may run anywhere from $8,000 to $14,000, depending on the complexity of the subject matter and the detail of the disclosure. Often, the cost of prosecuting a patent is borne by an investment or manufacturing partner that is given a percentage of any royalties the patent earns. Patents confer important rights that may be exercised, sold or licensed to recoup costs - and sometimes return many times the initial costs.

12. Myth: The drawings disclose the scope of the invention. Our device doesn’t look like their drawings, so there probably is no infringement.

Fact: The scope of the patent is determined by reviewing the claims and not the drawings. The drawings will show the preferred embodiment. But the claims, most likely, are broader than the drawings. The drawings are useful to determine the scope of the prior art and constitute part of the enabling disclosure of the patent. Of course, the infringing activity must take place within the country that issued the patent during the term of the patent. You need the advice of counsel if there are infringement issues.

13. Myth: 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. The dependent claim includes all the limitations of the independent claims from which it depends. If there is one limitation in either the independent or dependent claim which is absent from your variation, there is a good chance there is no infringement.

14. Myth: The teaching of a prior-art patent can be determined by examining the claims.

Fact: You must examine the complete patent specification and drawings to determine the teaching of the priorart patent. The complete teaching of the prior art can only be determined by conducting a thorough search of appropriate patents and other publications. (Teaching in the prior art refers to information that would have led someone of ordinary skill in the art to select the references and combine them in the way that would let them produce the prior invention.)

15. Myth: All claims of a patent must be infringed to constitute infringement.

Fact: There is patent infringement when anyone makes, uses, sells, or offers for sale a product that infringes any claim of the patent, during the term of the patent, within the country that issued the patent.

16. Myth: An invention which represents only a modest improvement over what is known cannot be patented.

Fact: Improvements to existing technology are patentable if they are new, useful, and non-obvious to those having ordinarily skill in the art. Therefore, improvements which require something more than ordinary skill may be patentable. It is this “something more than ordinary skill” that separates the patentee from the rest of his/her colleagues that the patent law seeks to reward.

17. Myth: 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. The disclosure in the patent application must satisfy two requirements: It must teach a person familiar with the technology how to practice the invention and it must disclose the best manner of practicing the invention known by the inventor or coinventor when the patent application is filed.

18. Myth: If there is no similar product on the market, the invention is patentable.

Fact: Prior art includes everything known that precedes your invention. Frequently, an invention will have been patented or published in a technical journal or paper but never became a commercial success. An applicant must be able to distinguish the claimed invention over all such prior art to obtain a valid patent.

19. Myth: The first inventor is the only one who may obtain a patent.

Fact: Under U.S. law, the patent is awarded to the first to invent. All other countries award the patent to the first inventor to file a patent application. Hence, patent rights may be awarded to one inventor in the U.S. and to a different inventor outside the U.S.

20. Myth: Patents are expensive. Our company is better served spending the money on R&D than in filing patent applications that may not vest for several years.

Fact: Yes, patents are expensive. But if you have assembled a strong R&D team, you better protect its work. 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, your company must not be defenseless. If you don’t have patent rights in your arsenal, your company will soon be looking for new products, new markets, and new management.

Finally, there’s the old “poor man’s patent” saw: Mail yourself a disclosure of the invention to prove inventorship. This won’t prove a thing and is a widely held misconception. It presumes the judge will think the inventor was smart enough to come up with the invention, but too dumb to know how to steam open an envelope.