Myers on Patent Law: What Do You Patent, and How?
In Part I of this multi-part series, patent law attorney Susan Myers discusses the basic process of applying for and winning a patent.
By Susan Myers, Spencer Fane Britt & Browne LLP
Contents
Understanding the Process
Patent Classification in the New Era
About the Author
When I was a design engineer, working to meet a deadline for a "final" design or preparing a presentation used in begging for funding, the idea of intellectual property seldom crossed my mind. I felt a tug of confusing responsibility when I approached a copy machine with an article to copy. I admired those marketing people clever enough to come up with catchy sales names to apply to my months of work, and I marveled at the inventive geniuses who could be so brilliant as to obtain a patent on what I perceived to be a lifetime of labor.
Well, I did not realize several things. To save you from being forced to travel the road of law school and bar exams, just for enlightenment, let me share a few items. Although I have opened the door to copyright, trademark, and patent law, let us start with my favorite, patent law.
Understanding the Process (Back to Top)
Lots of people are getting patents. In fact, last year the United States Patent and Trademark Office (USPTO), based in Washington, DC, granted a record 169,154 patents, with 44% of those granted to residents of foreign countries.
Let's be clear about a key point: People get patents, not companies. An inventor can assign over their rights in their patent to a company, but the patent must name the actual inventor or inventors.
How do these people get patents? The inventor, often with the assistance of a registered patent attorney or patent agent, follows guidelines established by the USPTO to complete a patent application. A patent application is not just a form to fill out. The application includes a complete description of the invention in such detail that a person skilled in that particular area could construct the invention. Inventors must disclose their best mode of making the invention. Inventors usually include drawings in the application. Also attached is the most important part of the application, the claims. The claims distinctly state the scope of the patent protection that the inventor wants.
A patent examiner at the USPTO reviews the application. The inventor/patent attorney or agent must often respond to the concerns of the patent examiner by explaining differences in the invention over previous inventions and designs. The process of working with the USPTO to obtain a patent is referred to as the "prosecution" of the patent application. The prosecution of a patent application to the point of patent issuance often takes 18 months, or more. The USPTO is making changes to expedite the process.
Patent Classification in the New Era (Back to Top)
What types of things are patented? Patents are divided into three categories: utility, design, and plant. Design patents cover ornamental characteristics and consist primarily of drawings, such as a design patent for tennis shoes. Plant patents are for asexually reproduced plants such as a variety of corn. Utility patents are of the highest concern to most engineers.
The range of subject matter for utility patents is not what it used to be. By federal statute, the subject matter for patents covers "…any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." An interesting note is that courts are now interpreting the law to include methods of doing business and, of course, software patents. More on this next month…
About the Author (Back to Top)
Susan Myers is a registered patent attorney and professional electrical engineer. She focuses on all aspects of patent law, including patent applications, responses to office actions from the U.S. Patent and Trademark Office, patentability opinions, and infringement analyses.
In addition, Susan is an adjunct faculty member at Fort Hays State University, Department of Information Networking and Telecommunications. She has taught courses in telecommunications and technology.
Susan's electrical engineering experience includes six years as an engineer with the Kansas City Power and Light Co. She was an engineer for Union Electric in St. Louis at their Callaway Nuclear PLANT facility, a design and test engineer for Shopsmith in Jefferson City, MO, and an electrical engineer for Johns Hopkins University Applied Physics Laboratory in Laurel, MD.
Susan is a licensed to practice as a patent attorney before the United States Patent and Trademark Office. She is also a licensed attorney in Kansas (Missouri bar is pending). She is a registered professional engineer in Kansas, Missouri, and Wyoming.
She can be reached at Spencer Fane, 1000 Walnut St., Suite 1400, Kansas City, MO 54106. Tel: 816-292-8180. Fax: 816-474-3216. Email: smyers@spencerfane.com.