so doing does not also practice the invention of an earlier unexpired patent. While only one patent can be granted on a particular invention, it is easy to see how more than one patent could be infringed by making a single product. For example, consider that A has a patent on a new type of door and B invents an improved door of this type with a special lock. B could not sell the improved locking door since A’s patent broadly covers all doors of this type. On the other hand, A could not incorporate the improved lock in his basic door since B’s patent covers this combination. in these circumstances both A and B can be free to practice the best technology (locking door) only if each grants a patent license to the other.
The indirect exploitation of a patent may be exclusive, e.g., by selling all rights in the patent or granting an exclusive license. Licenses can also be nonexclusive, allowing many parties, including the inventor, to practice the invention simultaneously. A patent may also provide commercial advantages in addition to the potential for an exclusive market position or licensing income. A patent often lends business credibility to start up ventures and can open doors to both the technical assistance and financing necessary to bring a new product to market. An improvement patent may also provide the barter necessary to cross license any basic patents held by others that block the path to market.
HOW TO OBTAIN A PATENT
Patents are obtained through a complex administrative proceeding in the U.S. PTO. Since the legal rules that govern this proceeding are quite extensive and often complicated, it is strongly recommended that an inventor seek the assistance of an experienced patent attorney before beginning this process.4
Before actually applying to the PTO, there are several important preliminary steps that should be followed to prevent possible loss or damage to future patent rights.
Proper Record Keeping. One of the most important of these preliminary steps is proper record keeping. Since United States patents are granted to the first inventor, it may become necessary to prove when, prior to the filing of an application, the invention was made. This is best accomplished by making a complete record of the invention from the first fdea right up through development of commercial products. The invention record should clearly describe the invention with words and pictures (photographs, sketches, drawings, etc.) and should explain fully how it operates or is used. Each page of the invention record should be signed and dated in ink by the inventor. The record should also be reviewed as it is made by at least one other trustworthy person who is capable of understanding the invention, who should sign and date the record under the notation “read and understood by . . ..”
Preliminary Evaluation of Patentability. Another important preliminary step is the determination of whether the invention is likely to be considered patentable by the PTO, and if so, whether a patent that might be granted would be broad enough in its coverage to be worthwhile in a commercial sense. Such a preliminary evaluation of patentability should be made by a patent attorney, based in part on the prior patents and other materials located in a search of relevant records in the PTO. While the attorney’s opinion that the invention should be patentable is not a guarantee that the patent will be granted, if he or she finds that the invention probably is not patentable or economically worthwhile, the considerable cost and effort of going forward with the process can be avoided.
Preparation of a Patent Application. The next step in the process of obtaining a patent is the preparation of a patent application. A patent application is a complex legal document, which must fully describe the invention with words and, where appropriate, drawings, and which includes claims that define the legal boundaries of the invention. It is essential to the validity of the patent, and its ability to adequately protect the invention, that the invention be described and claimed completely and precisely. Accordingly, the inventor should tell the patent attorney everything about the invention, including what problems it solves and what difficulties were overcome to make it work. Particularly important is the duty to tell the attorney about prior patents or other prior inventions, of which the inventor is aware, so this information can be disclosed to the PTO. The patent application will also contain a Declaration and Power of Attorney form, which the inventor must sign indicating that he has read and understood the application and affirming that he is the first inventor. The application and a filing fee are then formally filed in the PTO.
Congress has recently authorized a new form of preliminary patent application known as a Provisional Application, which can be filed at a lower cost and without claims and certain other formalities. This provisional application is not examined, but must be replaced by a conventional application within one year. The benefit of this new low-cost form of application is that it secures a legal filing date in the PTO, but yet does not count in determining the expiration date of the patent, which is measured from the date of filing of the conventional application.
The filing of an application for a patent does not create any enforceable rights since the courts will only stop an infringer after the patent is granted. Nevertheless, marking a device “Patent Pending” or “Patent Applied For” may discourage potential infringers since it notifies them that they may have to stop production once the patent is granted. It is unlawful to use such a notice unless an application for a patent is actually pending in the U.S. PTO. After the patent has been issued, it is also good practice to mark the products sold under the patent with the patent number because it gives the inventor certain important additional legal rights.
In the PTO, the application undergoes a process called examination. After an initial processing stage (which may take six to nine months or more), a patent examiner will review the application and write a letter (called an Office Action) commenting on it. The first Office Action often is a refusal to grant the patent, and the applicant then has an opportunity to modify the application to overcome the examiner’s objections. With the inventor’s help, the patent attorney will reply in writing to the Office Action, usually making some changes and arguing that others are not necessary. Typically, at least two such exchanges between the patent examiner and attorney are necessary to resolve all the legal and technical issues. In general, it now takes an average of two years from filing to complete the examination process. Under a law enacted in November 1999, pending patent applications will be published 18 months after their effective filing date unless the inventor certifies that he or she will not file a corresponding application in foreign countries. Before the application is published, the application is kept secret, i.e., only government personnel and persons authorized by the inventor are permitted to examine the file. Publication of the application under the new law may entitle an inventor to provisional royalties from those who copy the invention.
When the examiner is satisfied that the application is in proper form and its claims are allowable, the applicant is notified that a patent will be granted upon payment of final government fees. In order to keep the patent in force until it expires, it also is necessary to pay progressively higher maintenance fees at intervals of 3, 7, and 11 years after the original grant.
THE EMPLOYED ENGINEER AS INVENTOR
As a general rule, an engineer/employee owns the patent rights to his or her inventions, with two important — some would say overriding — exceptions:
An engineer/employee must assign patent rights to his or her employer if he or she was initially hired or later directed to solve a specific problem or to exercise inventive skill.
An engineer/employee must assign patent rights to his or her employer if he or she signed an assignment contract.
Whether or not the first exception would apply in any case, companies commonly use assignment contracts as a condition for employment.5 If reasonable, the courts will enforce such assignment contracts, and an employer may file a patent application
