Webinar Teaches Basics of U.S. Patent Law

Expert advice on patentability and patent infringement

7 April 2011

Do you have an idea for an invention that you think might deserve a patent? A new webinar sponsored by IEEE-USA gives advice on everything you wanted to know about patentability and patent infringement but were afraid to ask.

For a start, there are simple steps you can take without consulting an attorney to determine if your product can win a patent, or whether it will infringe an existing one, IEEE Member Karen Oster, a patent lawyer, says in the webinar.

Oster serves on IEEE-USA's intellectual property committee. She also is on the executive committee of the Oregon State Bar's intellectual property and computer and Internet law sections and the Oregon Patent Law Association. She has more than 20 years of experience helping businesses and individuals turn ideas into patents.

Individual inventors and businesses in the United States can file for a patent, which gives the inventor the right to exclude others from making, using, selling, or importing their product for a limited amount of time—usually 20 years from the date the inventor applies. The tricky part, Oster explains, is determining whether a product is unique and has not already been patented by someone else.

One of the first things to do, she suggests, is to examine existing machines and devices related to the invention to determine just how unique your idea is.

"Minor alterations to prior inventions, such as using a different shape, size, color or material, are usually not enough to warrant a new patent," she says.

She also suggests that engineers search the U.S. Patent and Trademark Office Web site to see whether their invention already exists. It's a useful resource for searching both existing patents and ones that have been filed but not yet awarded by the patent office.

"Although the 'patent pending' label can be a deterrent to another inventor, you cannot infringe a patent until a patent is actually issued," Oster notes.

She also advises inventors to check whether an existing patent has been properly maintained. "Owners of patents have to pay maintenance fees every three and a half years," Oster explains. "You can check on the U.S. patent office site if the patent has expired because the fees weren't paid."

After going through those steps, if you determine you've invented something unique, the next step is to file a preliminary application with the patent office. Although it can be useful to consult an attorney during this step, it is not necessary, Oster says.

But sole inventors, be forewarned: The application process can be time-consuming and costly. Applying for and obtaining a U.S. patent costs about US $1400, with maintenance fees due every three and a half years, if the inventor applies as a small entity (or a sole inventor or business with fewer than 500 employees). Larger companies pay about twice that amount.

Patents, therefore, are most useful for inventors who have potential investors or clients in tow and are likely to profit from the invention, Oster notes.

Once all is said and done, a patent acts as a deterrent to copycats but does not automatically protect an invention from being duplicated and sold. Patent holders must be active in protecting their inventions—which sometimes involves litigation.

Oster points out that U.S. patents do not protect inventions from being duplicated in foreign countries. For more information on obtaining patents outside the United States, check your country's patent office website. Because patents do not cross borders, Oster advises businesses to have their employees sign confidentiality and non-disclosure agreements, for example, so that their employees cannot take a patented device or process and market it overseas.

It's also wise to use trademarks to protect words and symbols associated with the product, and to copyright material such as product guides, instructions, and other literature. U.S. inventors can apply for trademarks through the USPTO Web site. Copyrights can be obtained by filing a claim online through the U.S. Copyright Office's website.

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