You are on page 1of 5

On Patents

Hi,
Well, once in a while I get myself crazed with some particular topic.
This time, it was the turn of Patents. I have collected some data; and here
is some part of it. Hope you find it informative and perhaps, even
useful.

Yours,
Gautam.

************************************************************************************

Understanding Patents

Brief Definition: A patent is a grant of a property right by the government


to the inventor to exclude others from making, using or selling the
invention. Patents differ significantly from copyrights and trademarks. All
patents must be "maintained" by paying a fee to the Patent & Trademark
Office at certain intervals. Failing this, patent expires and you lose
exclusive rights to invention.

Three Categories
In the U.S., according to the current patent law, the US Patent &
Trademark Office grants utility patents and plant patents last for 20 years;
and design patents that last for 14 years.
•Utility Patents apply to new and useful processes, machines,
manufactures, compositions of matter, or any new and useful
improvement of one of these. Generally speaking, if your invention does
something, you should apply for a utility patent. Traditionally, utility
patents have been divided into three basic types: mechanical, electrical,
and chemical. (Pharmaceutical patents are a special case of chemical
patents.)
•Design Patents apply to new, original, and ornamental design for an
article or manufacture. For ex, consider the original Macintosh computer.
The plastic shell that covers all working parts is covered by a design
patent, while many of the working parts it hides are covered by utility
patents.
•Plant Patents are granted to any person who has invented or discovered
and asexually reproduced any distinct and new variety of plant, including
cultivated sports, mutants, hybrids, and newly found seedlings, other than
tuber-propogated plant or a plant found in an uncultivated state.

Three Criteria
To receive a patent the invention must meet at least the following three
criteria.
Usefulness
Anyone who invents or discovers any new and useful process, machine,
manufacture, compositions of matter, or any new and useful improvement
of one of these can receive a utility patent.
Novelty
Your patent must, of course, be novel. That is, if the invention has been
known of or described in a printed publication somewhere before you
invented it, or if it has been patented or described more than one year
prior to your patent application, you can't get a patent.
(Non)-obviousness
A further stipulation of novelty refers to obviousness. Even if what you
want to patent is not exactly described in published information, and even
if you have created something with one or more differences from the most
nearly similar thing known, the Patent & Trademark Office might still
refuse your claims if it thinks those differences obvious. For instance,
changes in materials or changes in size don't usually count for much.

Patents vs. Trade Secrets


A patent is a legally recognized monopoly which the government grants in
exchange for disclosure of how to make and use an invention. A trade
secret is something which confers a business advantage, is not generally
known, and that the owner of the trade secret takes steps to maintain as a
secret. Tension frequently exists between the options of keeping an
invention a trade secret or filing a patent application which discloses the
invention. Using a trade secret may eliminate any possibility of ever being
able to patent an invention. On the other hand, the publication of a patent
destroys any trade secrets which it discloses. Usually, however, the
decision requires balancing various commercial, business, and legal
factors. Because of the disclosure requirements of patents and the secrecy
requirements of trade secrets, these two forms of intellectual property
usually cannot be maintained for any one particular technology. A choice
either to patent or to maintain as a trade secret must be made.
Advantages of Patents
In at least two situations, patents are a clear choice over trade secrets. A
trade secret is of no use to protect a product which can be reverse
engineered. In this situation, a patent is the only option. Similarly, trade
secrets are generally of little use when dealing with an invention that is
likely to be independently invented by another.
For one thing, patents have a firm duration. Trade secret protection can be
lost overnight if the secret is publicly disclosed, even if the disclosure was
not intentional. Second, once a patent application is filed, the information
which is in the application can be freely disclosed without loss of
proprietary rights. Obviously, trade secrets cannot be freely disclosed and
still maintained as a secret. Third, for technology which is to be licensed
out, a licensee may be more willing to pay for technology that is patented.
Fourth, the decision to file a patent application is not irrevocable. The act
of filing a patent application does not result in loss of trade secret rights.

Advantages of Trade Secrets


In at least two situations, the decision is clearly in favor of trade secrets.
Trade secrets are the only option when the secret covers something that is
not patentable. This occurs when the trade secret concerns things like
customer lists, business methods, or sources of supply. This also occurs
when something that would otherwise have been patentable has been for
sale or was publicly used for more than one year. Another example is
when the trade secret involves something that is known. For example, if
several different methods are known to make a product and a company
uses one particular method to its advantage, the undisclosed use of the
method can be a trade secret, although it is clearly not patentable.
A second clear answer in favor of trade secrets is when the advantage due
to the ownership of the technology is of very short duration. If the major
competitive advantage is by being "first-to-market" or if the technology
will be obsolete in less time than it would take for a patent to issue, then a
patent is of little or no use. Trade secrets also have an advantage because
they can potentially last forever. A classic example is the formula for Coca-
Cola, which cannot be reverse engineered. If the formula had been
patented when it was first used in 1886, the formula would have been in
the public domain a long time ago and would now be free to be copied by
anyone. However, by maintaining the formula as a trade secret for over
one hundred years, Coca-Cola has continued to dominate the world wide
soft drink industry. Therefore, trade secrets may be preferred over patents
for technologies which preserve their competitive advantage for longer
than the term of a patent. A further advantage of trade secrets over patents
is that there are no official prosecution costs or maintenance fees in order
to establish a trade secret or to keep it in force. Patenting costs may range
from $15,000 to $30,000 or more. These costs are avoided if an invention is
maintained as a trade secret.

Conclusion
Whether to seek patent protection or to maintain an invention as a trade
secret is a decision which must be considered on an individual case basis
by examining the specific facts related to the case. Sometimes, the decision
is evident. If an invention can be reverse engineered or independently
developed, if there is a need to disseminate information about the
invention, or if the invention is a technology for which a licensee will only
pay if it is patented, then the choice is clearly in favor of patents. On the
other hand, if the secret is not patentable, if it provides an advantage
which is of a shorter duration than the time that it would take to obtain a
patent, or if the secret will be valuable for a very long time and it can be
maintained as a trade secret during that time, then the choice is clearly in
favor of trade secrets.

International Patent Protection


Patent protection granted to an inventor by a government is only valid in
the country where the inventor requested it. The rights do not extend
beyond that country. When you wish to obtain patent protection for the
same invention in other country, you must file an application in each of
them separately.

World Intellectual Property Organization (WIPO)


The WIPO is one of the 16 specialized agencies of the United Nations and
has its intergovernmental organization with headquarters in Geneva,
Switzerland. Its main mission is to promote the protection of intellectual
property throughout the world through cooperation among nations.
(Intellectual property includes inventions, trademarks, industrial designs,
and copyrights.)
WIPO
34, chemin des Colonbettes
CH-1211 Geneva 20, Switzerland
Phone: 22 7309111
Fax: 22 7335428
Web Links
*Department of Scientific and Industrial Research, India:
http://www.dsir.gov.in/
*World Trade Organization: http://www.wto.org/
*TRIPS,WTO: http://www.wto.org/english/tratop_e/trips_e/trips_e.htm
*World Intellectual Property Organization (WIPO)
http://www.wipo.org/
*New Scientist: http://www.newscientist.com/

United States Patent and Trademark Office http://www.uspto.gov/


The UK Patent Office http://www.patent.gov.uk/
European Patent Office http://www.european-patent-office.org/
Japan Patent Office http://www.jpo.go.jp/

IBM Patents : http://www.patents.ibm.com/>


PIUG - Patent Information Users Group: http://www.piug.org/

Gautam.