2020 Issue

53 patent claims should be carefully drafted to ensure that the patent covers the entirety of the invention. During patent examination, the claims must describe the invention in a way that it is both novel and nonobvious. A novel invention has never been disclosed in its exact form before. For example, a patent filed for a “Pipe Coupling” that only includes the features of Victaulic’s “Pipe Joint” is not novel based on the “Pipe Joint” patent. Furthermore, any obvious variations on an invention are not patentable. Obvious variations often include combining two known ele- ments into a single product, substituting one known part for another, and finding optimum operating parameters. Should Be Patented? Individuals and business owners file patents for many different reasons. Some file patents with an eye toward enforcement through litigation. Others file patents to show investors how innovative their company is. And some simply file patents for the satisfaction and recognition that they were the first to think of an idea. In the end, filing a patent is a business decision, based on the goals, needs, and market of the business. A clear patent strategy will help companies to decide which discoveries they should protect. Two patent strategies are revenue- and investment-focused patent strategies. A revenue-focused patent strategy directs a company to file patents based on the anticipated revenues of the invention relative to the cost of filing a patent. Patent revenues may come from direct sales of a product associated with the invention. However, other patent revenue paths exist. For example, licensing a patent to a third party will generate revenue through royalties. A revenue-focused patent strategy is typically effective for inventions in emerging markets, where the inventor can sell the invention himself, or where the inventor can license the invention to a third party. In other examples, as soon as a patent is granted, the owner may sue a competitor that is making, using, selling, or importing the patented invention and receive damages for patent infringement. However, patent infringement litigation is often expensive, with costs regularly reaching hundreds of thousands, or even millions, of dollars. There- fore, a revenue-focused patent strategy is also effective for inventions that have a high market value which can offset the high costs of litigation. An investment-focused patent strategy directs a company to file patents based on the perceived value by investors. For example, startup companies looking for venture fund- ing may advertise to investors the number of patents, both granted and pending, held by the company. Granted pat- ents indicate to investors that the company has a product that is unique and that competition can be limited. Pending patents indicate to investors that the company is serious, willing to invest in its future, and that the company has a good-faith indication that some portion of the product is novel. Therefore, an investment-focused patent strategy is effective for startups looking to distinguish themselves to receive venture funding. Additionally, inventions are not new forever. A patent expires 20 years from its filing date. After the patent expires, any person or company may make and sell the invention described in the patent. But, knowing that patents expire, during the patent term, many companies continue to improve upon existing products and develop new technologies. By continued development, an innova- tive company may continue to establish itself in the market, which can result in the company becoming a leader in the industry for years after the initial patent expires. Estab- lished companies may indicate to investors patent filing metrics, including the number of patents owned, filed, and granted during a quarter or year. Patent filing metrics provide investors a measure of the innovativeness of the company. More innovative companies are often viewed as more profitable, which attracts investors. Thus, an invest - ment-focused patent strategy is effective for quickly evolv- ing industries, where innovation is a key driver of success. Business owners should have an understanding of what can be patented, and have a clear patent strategy to achieve their business’ needs and goals. Filing a patent can be the first step in the journey from turning an idea into a multi-national corporation. Enforcing Patents The United States Patent and Trademark Office issues patents for new inventions, giving an inventor exclusive rights to market and sell their inventions for up to 20 years. The United States Patent Act states that a patent may be granted for “any new and useful process, machine, manu- facture, or composition of matter.” (35 U.S.C § 101) To obtain a patent, an inventor files an application with the United States Patent and Trademark Office. The applica - tion includes a set of claims outlining the legal scope of the patent. A patent examiner then examines the claims and compares them to other patents, publications, and other disclosures to determine whether the invention (as described in the claims) is patentable. If the examiner does not determine that the claimed inven- tion is patentable, the claims may be amended with further clarifications and limitations. The examiner will then review the amended claims, compare them to the prior art, and make a determination regarding patentability. The process may then be repeated until one or more claims are deter- mined to be patentable, and a patent is granted. After spending the time and money to receive a patent, an inventor may ask: Now what? Many patent owners choose