GENERAL INTEREST

It’s Back-To-School Time: Do Your Homework on Patents!

Walter K. (Kevin) Roloff

Registered U.S. Patent Attorney and Intellectual Property Law Counsel

Summer is waning, and fall is in sight. For most students, the anticipated back-to-school time has already passed. Transitions are happening rapidly, from relatively carefree pursuits back to the serious business of education.

Although the serious business of your business has probably not been anything close to carefree over the Summer months, it may nonetheless be a good time to discuss a few key points of intellectual property law and in particular those of patents and trademarks.

Without getting bogged down in too much detail, it should be understood that, generally, a patent is intended to protect a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A trademark, however, is intended to protect a word, phrase, symbol, or design, or a combination of them, that identifies and distinguishes a source of goods and services of one party from those of others. In other words, patents are generally directed to tangible inventions while trademarks point to identifications of brands, reputations, and origins of goods and services.

Like the returning students this fall, it is critically important for you to do your homework – in considering patents and trademarks for your business and what should be done before launching into these areas of intellectual property. In this first article of two, we’ll look at one point of crucial homework that should be done relative to patents. In a later article, we’ll look at your necessary homework for trademarks.

Know the scope and content of the “prior art” very well, before moving ahead with your (hopefully patentable) invention.

An extremely important item of homework to be accomplished before even thinking about patenting or commercializing your invention is a search and analysis of the “prior art” (i.e., what others have done before). This is important for two reasons. First, in the context of patentability, you should try to know, as completely as possible, what others have published regarding your invention that may negate its patentability. Although disappointing, it’s far better to discover a “novelty destroying reference” before spending valuable resources on patent application filing and prosecution. Second, in the context of freedom-to-operate (or, the competitors’ landscape) you should try to know, as completely as possible, what others have patented or patent pending that may, arguably, be related to your invention so that you can have at least a modicum of confidence that you will not be accused of infringement of another’s patent.

Fortunately, the patentability search / analysis and the freedom-to-operate search / analysis share some common information so that one such prior art search may inform the other, at least in part. A basic prior art search, whether for patentability or for freedom-to-operate, should include comprehensive queries of not only the databases of both issued patents and published patent applications in the U.S. Patent and Trademark Office (the “USPTO”) but also perhaps some internet search engine queries as well (e.g., Google).

Since prior art searching is both a science and an art, it makes good sense for you to engage the services of a skilled, experienced practitioner. At a minimum, if you feel daring enough to do it yourself, you should have an independent, objective party (under a confidentiality agreement) verify your search results or give them a “reality check” before considering the search and analysis to be complete. It is exceedingly difficult to be objective about your own invention. You likely would say to yourself that you invented it precisely because it hasn’t been done before. So, uncovering a possibility that it has been done before, unbeknownst to you (e.g., it was patented but never commercialized; or maybe you really don’t know the competitive landscape as well as you thought) goes right out the window without such objectivity.

Also, keep in mind that it’s impossible to be absolutely sure of, or guarantee, patentability or freedom-to-operate conclusions. Several years ago a fellow invented a nifty device. He was very enthused about his invention and was convinced that nothing like it existed. He was sure that his invention would generate large sales and handsome profits. The prior art was searched and indeed nothing like it was found. So, a patent application was filed and he patiently waited for the first Office Action (the first response to his patent application) from the USPTO Examiner. Upon tearing open the envelope containing that long-awaited first Action, he was stunned to see an issued, enforceable patent cited by the Examiner that was right on point and negated the patentability of his nifty device. Even the drawings of the cited patent looked like his device. How did this happen? What was thought to be a reasonably comprehensive search included a common term – but the killer reference never once recited that term. Instead it used an old, verbose, technical phrase rather than the modern-day, common, simple terminology and thus it never came up as a relevant “hit”. In the face of this information from the Examiner, a conclusion was made that there was nothing left for him to patent. To add insult to injury, he also had to abandon his invention because otherwise he would have been exposed to a real risk of infringement of that issued patent if he made, used or sold his own device!

What’s your “takeaway” from this painful story? There are several. One is that patentability and freedom-to-operate searches are inherently “needle in a haystack” processes, and often you can’t be truly certain that you’ve combed through all of the pertinent haystacks. Another is to have an exit strategy if search results are unfavorable or if relevant information is not gleaned from the searching process. Fortunately in the aforementioned case, the disappointed inventor had not yet invested much in terms of materials, fabrication, marketing, sales, distribution channels, and associated costs – and so he was able to, very reluctantly, just let it go.

The bottom line is this: do your homework. Be diligent, methodical, and objective in determining the scope and content of the prior art. But remember that there are no guarantees, and plan accordingly.

This article is general, non-specific information and does not create any attorney-client relationship between the author and the reader. Those interested in the information presented should seek the advice of their own counsel.