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TechRoadmap Directions
  IP Issues of Interest to High Tech Companies
Vol 3 Issue 3 March 2003

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New Service Offered

A Deal's a Deal

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Sometimes, in pursuing a patent, we forget what a patent is all about. The underpinnings of patent law and practice are in the form of a deal - a negotiated arrangement between inventors and society - through which both sides are supposed to obtain benefit. If you keep "the deal" in mind as you negotiate what appear to be the set of arcane rules that the PTO and patent courts follow (okay, some actually are arcane) you will find they start to make some sense. Read "A Deal's a Deal" to get a glimpse into this logic.
  • New Service Offered
  At the request of several clients, TechRoadmap is pleased to formally provide a new service offering. In addition to tactical IP support in the form of Inventon Mining (TM), we now design tailored IP Development processes for clients who have outgrown their current, catch-as-catch-can approach. Further details will be available on our web site soon. For immediate information, please use the "Tell me more!" link below.

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  • A Deal's a Deal
  When asked what a patent is, most people respond that it is a government granted monopoly to make, use, or sell a well defined invention. But that's only half the story. A patent is really a deal between the inventor and the government and, as is always the case in a deal, there is a quid pro quo for the government sanctioned monopoly; in the case of a patent, you, the inventor, agree to teach the rest of us exactly how to make your invention, in the best way you know how. Additionally, you promise to help the government determine if you deserve the monopoly by being 100% honest about every aspect of your patent application. To understand the various aspects of this deal between you and the on...

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  • Tip of the Month
A patent is a two way deal with society. Be prepared to uphold your side:
  • Maintain an Invention Notebook - The notebook, properly signed and witnessed, is your best means of demonstrating that you are the inventor and confirming the date of your invention.

  • Be honest about the "Best Mode" - The key factor in "the deal" is that society gains the benefit of your invention when the patent expires. That means, no holding back on the secret sauce.

  • Track and Disclose the Prior Art - You only deserve a patent if you are the first to teach society about your invention. Your patent may be invalidated if prior art is uncovered. It's better for you to find it (and show it to the examiner) before your competition does (and shows it to the court).
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary

Industry's Best Glossary
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  • A Deal's a Deal - continued

Would you sign a contract giving you a legally sanctioned monopoly to make, use, or sell laser printers? or intermittent windshield wipers? or...well, YOUR invention? Filing for a patent is signing on to just such a deal and the benefit to society is that you must fully and completely teach the rest of us how to make and use your invention. That way, after you have had about 20 years of exclusive benefit of your invention, anyone can read your patent and start making and using your invention. Society also benefits during your 20 year exclusive period since reading your patent may stimulate the thinking of another inventor to produce something better, faster, cheaper, etc.

Like any contract you sign, your "patent contract" with society has terms and conditions that, if violated, may nullify the contract (and invalidate your patent). Keeping the idea of contract terms and conditions in mind often helps you understand the many rules and restrictions governing your behavior while trying to get a patent. In the next few paragraphs we explain the logic behind some of these terms and conditions.

To get at patent your invention must be:
NOVEL - Hey, you don't think you should get a monopoly on someone else's idea do you? If your invention has already been described in public it's not considered your idea (even if you are unaware of the public description).
NON-OBVIOUS - It's no benefit to society to do business in a world where every mundane change, adaption, or combination of known elements might be locked up by a patent.
REDUCED-TO-PRACTICE - You can't patent something that doesn't work. If you could, we could all imagine and patent inventions and claim the benefits to them if and when they every came into being (consider a Chester Gould patent on Dick Tracy's wrist radio) Note: this restriction can be satisfied by a good enough written description - making an inventor invest in a prototype/demo is considered unfairly burdensome in this deal.

And your patent application must include:
ENABLEMENT- What society expects from this deal is to be able to make your invention when your monopoly is over. Thus, you have to describe it well enough for someone of ordinary skill in the subject area to actually make your invention without you (without "undue" experimentation)
BEST-MODE - You can't hold back on the "secret sauce" recipe that makes your invention truly valuable; to do so would be short changing society.
ALL and ONLY INVENTORS - All inventors must be listed, because society doesn't want to let you cheat them out of their rights and only inventors can be listed, since society doesn't want to reward a non-inventor.

And you must file your patent in a timely fashion because of:
ON-SALE BAR DATE - You have 1 year to file after making a bona fide offer to sell your invention. It is considered unfair for you to gain the benefit of your invention (by selling it) without starting clock on your patent monopoly and giving society the benefit of seeing the details of your invention.
PUBLIC DISCLOSURES - You also have 1 year (for US patents) to file after making a public disclosure of your invention. If there were no limit, the rest of us would never know when we were risking infringement.
ABANDONMENT - If you invent something but keep it secret, you may lose your patent rights to another inventor who comes later. It may be determined that you decided not to give society the benefit of your invention, so society will give the monopoly to an inventor who is willing to make the deal.

Finally, you have a DUTY OF CANDOR which means you need to inform the patent examiner of any information you learn about that might have a material impact on his or her decision to grant you a patent. This duty is somewhat like the IRS's requirement that we report all our earnings and, in a manner similar to an audit, the courts can and will invalidate your patent if significant prior art turns up later.

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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.