Join Dana Robinson for an in-depth discussion in this video What is a patent?, part of Understanding Intellectual Property.
What is a patent? A patent is a type of intellectual property that traditionally covered utilitarian machines and processes. It would have covered the cotton gin. It would have covered certain printing technologies. Nowadays, patents actually are used to cover pharmaceuticals, software, methods of doing things, processes, and a variety of consumer products. In order to be entitled to a patent, the thing, the idea has to be patentable.
Well, what does it mean to be patentable? It means that it has to be something that has never been done before. We call this novel. Patents have to be novel. Otherwise, why should we protect them? Why should we give you any special rights if it's already been done? We want to incentivize people to develop completely new ideas, so patentability requires novelty. It also requires utility. It needs to do something, and you need to be able to describe how to do that thing. It also has to be non-obvious. This is a little bit like novelty.
It needs to not be something that people who are skilled in the art would believe is obvious for them to do, or to try. Novelty, utility, non-obviousness. And it must not be subject to what we call a statutory bar. Typically, this means that it isn't something that you have already publicly displayed or published and made known to people more than a year in the past. What does a patent look like, and, and what does it give you? What do you get from a patent? Well, a patent is a document that you file with the Patent Office.
And it includes a variety of components. It includes a description of what you claim is your patent. It includes some drawings. It may include some background. And then, it includes a section that we call claims. These are numbered paragraphs that claim something specific that you believe you're entitled to patent. The claims are actually the patents. If you have 20 claims that are issued, then even in one patent registration, you may have 20 patents.
Each one is independently protectible, and you can sue for infringement of just one claim within your patent. What does a patent get you? It gets you a 20-year monopoly for the thing that's listed in your claims. If you have identified a process or a device then for 20 years, you have the right to stop other people from doing the same thing. So, you don't get anything magically by obtaining a patent. Many people have filed patents, obtained patents, and can't do anything with them.
You either need to monetize the patent yourself, or you need to license the patent to someone else. Or in some cases, sue people for infringement. Ultimately, what a patent gets you is the right to stop other people from using what you've patented. It's a private right for you to sue third parties for infringement. You can certainly practice your invention. You can authorize others through licensing to use your invention, and you can receive a royalty for that. Or you can sue people for infringing your patent. But it's a private right that you get for the life of the patent to sue other people to stop them from infringing your patent.
The information in this course applies only to the United States.
DISCLAIMER: This course is taught by an attorney and addresses US law concepts that may not apply in all countries. Neither LInkedIn nor the attorney teaching the course represents you and they are not giving legal advice. The information conveyed through this course is akin to a college or law school course; it is not intended to give legal advice, but instead to communicate basic information to help viewers understand the basics of intellectual property.
- What is intellectual property?
- What is a copyright?
- How long do copyrights last?
- Trademarking your brand
- Trademark infringement
- Patenting your ideas
- Defending trade secrets<br><br>
- The PMI Registered Education Provider logo is a registered mark of the Project Management Institute, Inc.
Skill Level Intermediate
Q: Can a provisional be extended?
A: No. The provisional is only good for one year and it must be followed by a nonprovisional application by the end of that 12 months, or it will not only mean you can't get protection for the idea, but that others will be free to practice it after that. A provisional that is not followed by a nonprovisional effectively makes the subject of the provisional public domain.
Q: If the full utility is "held up" in the patent office and is not secured before the provisional expires, does that make your idea unpatentable?
A: See the "Can a provisional be extended?" FAQ. If you file a provisional and then do not file a nonprovisional within a year (what is called a full-utility patent application) then you are done. There is no protection.
Q: The course mentions that discussing an idea with someone without a signed NDA "starts the 12-month clock" on making your idea public domain. Is this true?
A: If you have not filed any patent application at all, and you disclose your idea without an NDA (say you show it at a trade show or put it on a website), then you must file a patent within 12 months of that disclosure. The reason is that the patent must be novel, meaning there's no prior art out there that speaks to your invention. If you disclose something prior to filing, then your own disclosure makes your later patent NON-novel. You ruin novelty by disclosing the idea. However, the US gives you a safe harbor of 12 months from your disclosure to get your patent filed; so your disclosure within 12 months is not considered a bar to novelty for that period. But, after 12 months, the disclosure by you (or anyone) of the subject matter will become a bar to your patent insofar as it makes the patent not novel.
Q: Does disclosure make an idea unpatentable?
A: A disclosure more than 12 months prior (or provisional past 12 months) will present a major obstacle to patentability because it becomes prior art. It must be disclosed in the patent application, and to the extent that what was disclosed is the same as what you want to patent, it will likely be an obstacle. In some cases, you can add new inventive features to something that was in an expired provisional patent, or to something that was disclosed ... as long as what is new is novel and is not obvious in light of the prior disclosure or prior expired provisional patent.
A: Could your utility patent be revoked even if the people you discussed your idea with kept it confidential? (In other words, is an idea you talked about 12+ months ago unpatentable because you talked about it?)
A: Generally, if the subject has not disclosed, then it is arguably still protectable and patentable. You don't have have a signed nondisclosure, but a knowledge of the confidentiality and an obligation to keep it confidential. If you gave an open talk at a trade show about it, and it happens that no one talked about it, you still have a disclosure problem. If you told your friend about it and she hasn't told anyone, then it is probably still confidential and not disclosed.