Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
extensive advertising budget required to convince the public of the reasons they should buy a new product, and to change their buying habits to accept the new product, is important. The size of the market for the new product and profitability studies are also important factors.
While the commercial importance of an invention is probably the most important consideration as to whether to obtain a patent, the credibility granted to the inventor(s) associated with an invention is a primary factor in assisting the inventor to convince his/her employer to commercialize the invention. A successful inventor requires credibility in the same way that a successful artist or author does. If the inventor has no prior successes to advertise, the inventor must establish credibility by proving that the product embodying the invention is worthy of the investment of resources. A favorable sales history for a patented product also builds credibility. All of these factors make it easier for the inventor to span the gap between a conceived idea and actual commercialization of the embodiment of that idea.
The inventor must also determine whether the public is ready for the invention. For example, a variety of economic, production, and management factors may come into play to shift the period of patent protection away from the period when the invention is commercially important. Several of my clients have attempted to interest companies in licensing their inventions, and a frequent response was that the company had no further funds available that year to introduce new products. This can be disappointing to the inventor, and not because the invention did not have a high profitability forecast. An example is heavy industries, where actual production methods may lag behind current available technology by a period that is much longer than the life of a patent. Thus, the value of a patent can be greatly influenced by the patterns for change that exist for specific products in given industries. Anecdotal information reveals that many inventors often underestimate the cost and difficulty of commercializing their inventions, and overestimate the market size and expectations of purchaser acceptance. The inventor must be prepared to face and overcome numerous difficulties before an invention returns a monetary award, and the inventor must be willing to work hard and not be dissuaded in the face of negative responses to move the invention to market before he/she realizes any reward. In other words, keep pushing your idea, and—above all—be patient!
3.4 BROADLY, WHAT DATA GOES INTO A PATENT
3.4.1 Describing the Background and Essential Elements of the Invention
An article or process patent begins with a title generally describing the invention, followed by a short paragraph comprising a broad statement of the field of technology to which the invention relates. This is immediately followed by a more specific statement as to the subject matter of the invention.
The specification next sets forth a statement of the background of the invention, including an explanation of the problems in the existing art to which the invention is directed towards solving, and the known relevant prior art that can be shown to have failed to specifically solve these problems. The prior art is that which the inventor is aware of, or has obtained from a pre‐examination novelty search (see Chapter 8 for searches). The patent at this point may also state briefly what the various prior art reference patents disclose, followed by one or two statements indicating what the reference patents lack, compared to the details of the subject invention.
The background of the invention section may also include a statement of the objects of the invention. These are usually broad statements setting forth the results achieved by the invention that are different from and superior to the results obtained by using the devices or methods disclosed in the prior art, without setting forth the details concerning the structure and functioning of the invention's elements to achieve those results. This latter information appears later in the patent document.
Next, the patent includes a summary of the covered invention, which is a short statement of the elements of the invention, how they relate to each other, and a statement of the functions of those elements. Also included is a statement setting forth how the invention will meet the objects or results set forth in the previous paragraph.
The background of the invention is followed by a brief description of the drawings or illustrations, where present, describing the view depicted of the device in each figure.
After the brief description of the drawings is the all‐important detailed description of the illustrated embodiment of the invention, which sets forth a complete explanation of the invention’s structure, the relationships between all structural elements, and the operation/function of the structural elements of the invention shown in the drawings. This description includes only the essential features of the invention, eliminating descriptions of features that are non‐essential. In this portion of the patent specification, each essential element of the inventive structure is named, numbered, and the numbers coordinated with the illustrations in the drawings. The accuracy of this particular section of the application is important, since it must enable a person skilled in the art to replicate the invention once the patent expires without undue experimentation. The description must be a full, clear, concise, and exact description of the invention. Common terminology in the industry or trade is used to describe the invention, with the patent attorney having some latitude in using broader language than that normally used to describe an element or function of the invention. Where a process or method is described and no illustration is necessary to understand the invention, a detailed description of the process used, including examples, is set forth.
3.4.2 Claiming the Invention
The patent concludes with one or more numbered single‐sentence statements, or “claims,” which particularly point out and distinctly claim the subject matter that the applicant regards as the invention. These claims form the “heart” of the patent, and are normally written in “non‐prose” terms that the average reader may find cumbersome to read. The claims define a specific point or points of novelty embodied in the invention. The claims must also recite the specific non‐novel structure necessary to properly “locate” or support the elements of novel structure of the invention. As will be discussed in Chapter 10, the objective of a patent’s claims is to define the elements of the invention in terms such that the claims cover any related or competitive device or method developed in the future falling within the same product or process category, and at the same time each claim must not cover or “read on” the vast body of relevant prior art, or prior technology, that preceded the invention. Therefore, the claims set forth the narrow point of “invention” that is fenced off to define the exclusive rights of the inventor.
3.5 WHAT A PATENT IS NOT
As discussed previously, a patent is not a trademark or copyright or trade secret, these being distinct additional elements of intellectual property protection ostensibly having little to do with one another. Whether goods are patented or not has nothing to do with the rights afforded by trademark law, and the same can be said of the interface between copyright and patent law.
A copyright permits the copyright owner to exclude others from copying the copyrighted material, such as books, plays, music, sculptures, motion pictures, television programs, computer programs, etc. Copyright protection does not extend to an underlying invention which, for example, might be described in the copyrighted material. Thus, a copyright could be used to prevent others from copying a book describing an invention, but the copyright cannot be used to prevent someone from using the knowledge set forth in the book and then making, using, or selling the invention. That restriction would have to be found in a patent.
It is also very important to understand that owning a patent on an invention does not confer the right to make, use, sell, offer to sell, or import the invention. What is granted is strictly the legal right to exclude others from doing so. For example, a patent may be obtained on an invention, the manufacture and sale of which can infringe a different patent owned by someone else. This is an important concept. You may obtain a patent on your invention—however, your invention may also infringe a broader patent of a prior inventor.