“Necessity is the mother of invention” goes the saying.
It is true that large and small innovations are primarily driven by individuals who recognize a need or a problem that requires a solution and expend significant time and energy in developing them. Innovations can be groundbreaking, such as an artificial heart. More often, the
innovation is an improvement on an existing device or process
, such as an improved coffee maker or video game controller.
Intellectual property, and in particular patents, provide a tool for the protection of innovations large and small.
Patents can be used to protect
a process, machine, manufacture, or composition of matter that are novel and non-obvious over those already in existence (i.e., the “prior art”). There are three types of patents: utility, design, and plant.
Utility patents
can be used to protect a machine or process (e.g., the functional aspects of how a product or process works).
Design patents
can be used to protect the design embodied in or applied to an article of manufacture (e.g., the shape of a smartphone, shape of a water bottle, computer screen icon, etc.).
Plant patents
can be used to protect a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
Sometimes, an innovation may lend itself to more than one patent type. For example, a new and improved smartphone may have functional features that may be protectable with a utility patent, as well as a unique shape that may be protectable with a design patent.
Patents are territorial.
A US patent can only be asserted in the U.S. to keep third parties from making, using, selling, offering for sale, or importing products in the U.S. that infringe the claims of the patent. However, to assert patent rights against infringers in other countries (e.g., Canada, Mexico), a patent in those countries would be needed.
The patent process is not inexpensive, though the U.S. Patent and Trademark Office (USPTO) provides a 50% reduction in some fees for individuals or companies with 500 or fewer employees. Also, individuals and companies that meet certain gross income requirements
may qualify for a 75% reduction in some USPTO fees
.
The patent process can also be lengthy
. Generally, applications are examined in the order in which they are filed. Due to the backlog of applications at the USPTO, it is not unusual for an application to wait 18-24 months before it is examined. The USPTO does offer prioritized examination options at additional expense, under which the application is examined out of turn in about 6-9 months after filing.
During the current COVID emergency, the USPTO has waived the prioritized examination fees for applications that cover a product or process related to COVID-19 and subject to an applicable FDA approval for COVID-19 use. Therefore, this likely only applies to diagnostic or therapeutic processes or medical devices with specific use for COVID-19.
Innovators should consult with a patent attorney when considering whether patent protection may be applicable
to their innovation, and should also keep in mind the time limit for filing a patent application. Under the first-to-file system in the U.S., filing sooner rather than later is advantageous in that it allows you to avoid more prior art. A working prototype is not needed before a patent application can be filed.
Additionally, if a patent application is ever to be filed, it
must be filed no later than one year after the invention is first placed in public use
or on sale in the United States, or described in a printed publication (e.g., on a website, in a technical paper, in an advertisement, etc.). Also, unless the U.S. patent application is filed before the invention is “made available to the public” (e.g., publicly disclosed), it may not be possible to later obtain patent protection in foreign countries.
