Ciciora’s Corner - Patents in the News
Our industry faces everincreasing competition. Invention and innovation are two important tools in that struggle.
Patents have been in the news lately, big time. Google made its biggest acquisition to date in the purchase of Motorola Mobility. The trade press claims the motivation is Motorola’s 17,000 patents. Google’s Android operating system for cell phones is considered by some to be vulnerable to legal attacks from others, and Google wants some artillery to fight back. Google is also getting very interested in television.
Kodak has a portfolio of patents on digital cameras that it has lucratively licensed to stay afloat, even as their oncehuge film business declines. And Congress has been trying to revise the U.S. patent system for several years and may have succeeded as this issue of CED reaches you. There is a lot more.
Our industry faces ever-increasing competition. Invention and innovation are two important tools in that struggle. It behooves us to be innovative and inventive on behalf of our company and our industry. If you think of a clever way of doing something or building something, pursue it. If you think it can provide a competitive advantage worthy of protection, contact appropriate management.
In many large companies, the hiring process includes signing an agreement to assign the rights to any invention relating to the business to the company. You should know whether you are part of such an agreement. Some of these agreements cover the assignment of any patents to your employer; others cover only patents directly relating to the business. If you have a clever idea worthy of protection that isn’t directly related to your employer, determine your rights to any patents on the invention. If there is any doubt, get a letter from the legal department clarifying your right to independently pursue the invention. In some cases, the company may not agree with you on the value of obtaining a patent and may be willing to allow you to do it on your own. But get that in writing.
What is a patent? It goes all the way back to the U.S. Constitution. The founders of this country decided that technical innovation was an important part of the American way. They decided to grant an inventor a temporary monopoly over the use of his invention in exchange for a complete disclosure on how to practice the invention. So when the monopoly expired, the public was free to practice the invention (the patent instructs them in detail on how to do this) without any further benefit to the original inventor. This was seen as a motivator for innovation. The details were left to Congress to establish in law. The courts interpret the law and further define the details by that interpretation.
Fundamentally, a patent is a “right to exclude” others from using your invention without your permission. And you can sell your permission and collect a fee called a “royalty.” This is a right you must enforce through negotiation, and ultimately by going to court if necessary. When someone violates your patent rights, they are said to “infringe.”
Infringing involves making, using or offering for sale something that infringes. The details are very complex and require legal interpretation.
Congress is in the process of considering changing the law. One of the most controversial aspects of the new law is the change from a “first to invent” to a “first to file” rule. The old U.S. method gave the right to the patent to the person who could prove they were the first to invent. This often results in a lot of litigation over that proof. Most of the rest of the world has a “first to file” rule, which eliminates this ambiguity. The controversy is over whether this is disadvantageous to the individual inventor, who may not act as fast as a firm with a large legal department.
The current law allows for the inexpensive filing of a “provisional” patent application. It is much less formal and meant to give the inventor protection for a year while the inventor determines whether there is a justification to continue. It is critical that the provisional patent carefully define the invention. Only what is in the provisional is protected.
One of the best books for a quick study, but yet with a lot of detail and depth, is “Patents for Beginners” by David Pressman and Richard Stim. Don’t let the title fool you. There is a huge amount of information in the book. It is not “beach reading.” There are other books by Nolo Press if you decide you have an invention to patent and want to know how to go about getting a patent filed. Other titles include “Patent Pending in 24 Hours” and “Patent it Yourself.” Nolo even has online forms for doing much of this. It is a good idea to use a patent attorney to do the formal filing, but also to read up on the process before meeting with the attorney so you efficiently use the attorney’s time. But you can’t take too much time doing this. If the law changes to a “first to file,” you need to move fast.