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Trademark Tuesday – Intro to Patent Law


This is my legal series about IP law (named Trademark Tuesdays because I have a thing for alliteration  🙂  As always, this is to be taken as entertainment and not actual legal advice. You want legal advice, ask your lawyer 🙂

I think of the IP areas as on a sliding scale.  You have copyright holding down one end (where once it is created it is protected), then trademarks which are more squishy (as in using it protects it and registration helps but you don’t always need it), and then there’s patents sitting firmly on the other end, which only have formal protection.

With patents, you have no real protection until it is filed.  Once filed you put patent pending on it and that gets you protection while you wait to see if you get the patent.  Basically, you get to stop people from making that thing, even if they come up with it independently.  They make your widget, you get to file injunctions and possibly get damages for infringement.

For something to be patentable, it must have utility, be novel and non-obvious, and be a patentable subject matter.

Utility is pretty easy these days; the invention has to do something.  It used to have a ton of crap in there about morality (like lawyers care about morality 🙂 that was called beneficial utility.  They don’t really care about that anymore, just that the invention does something.  Example: an invention who’s utility was it was a configuration meant to trick consumers into thinking a drink was fresher than it actually was, was found to have utility, because it did something useful for the companies trying to pull a fast one on consumers.

There are exceptions (because it’s law and it has to be convoluted or it’s just less fun) and they still won’t patent something truly horrible with no redeeming uses… well, sometimes.

Morality falls more under the policies of patentable subject matter now, think bio-engineering.  Generally though, any new process, machine, manufacture, composition of matter is patentable under the statute.  Any law of nature, scientific principle or abstract idea is not.

This gets very complicated, especially in the bio and computer software areas, and will be discussed in a later post with the Myriad Genetics case.

And then there’s novelty and non-obviousness.  It has to have not been done before.  This is where things get really complicated and where a ton of questions on the Patent Bar come from.

This is the requirement where a lot of inventors shoot themselves in the foot, because they’ll put their invention out there (for publicity, to see if it can make money, to try to sell it off, whatever) before filing the patent.

There are bars to patenting in the US.  Obviously it has to be your invention to get the patent (you can always assign it to a big company and they can file, or big company can have claims to its workers inventions).  You can’t get the invention from a guy who’s dying, and then get the patent on his invention.  I mean, don’t know how you’d get caught if he only showed you, but technically this is a no-no.  And it can’t have been done by another person, because if it’s already out there, why would you get a patent for putting it out there again.

But it also can not be put out there by you too long before you file the patent.  One year.  Basic rule is you have one year to file after it’s out in the public use, been published, lent to friends, ect…

This is an extremely simplified summary of the statutory bars to getting your patent, and this area gets so complicated entire classes are dedicated to this one subject, and I will be digging into this in a lot more detail in the future, but at least you have the basic idea.  If it’s put out there by you, file within a year.

There’s an extra little hiccup in the US now, it’s called the America Invents Act.  It changed the rules on who gets a patent if there’s a race.  Say both inventors actually invented the thing and both file, who gets the patent?

Before March of 2013, it was the first one to invent.  So even if an inventor filed second, if she invented first and could prove it, she’d get priority.  Now that rule’s gone.  It’s basically first to file gets the patent, but with a wrinkle.  If you put the invention out in public in a publication or some conference (you have to file within a year!) but you can bump someone who files before you do, but after you put your invention out there.

Again, very freaking complicated.

So that’s a bare bones explanation of patent law.  It doesn’t even count as an outline because there’s so much more to this area, but it gives you a peek into this complicated world.

Patents, if you couldn’t tell, are my favorite IP area.  I’m going to be doing a lot of brushing up and research in April because my CampNano book is a legal urban fantasy, “Patenting Magic.”

CampNano starts Wednesday.  Eeeeeeee.  Happy writing.

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