Protecting Your Ideas: The Inventor's Guide to Patents / Edition 1

by Joy L. Bryant

Overview

Intellectual property law is currently exploding, as demonstrated by the growth of technology transfer offices in universities. More and more scientists, companies, and institutions are rushing to secure intellectual property rights for their ideas and inventions. This process frustrates many people; patent laws are constantly changing, and most books about them are either overly technical or boring.

Protecting Your Ideas: The Inventor's Guide to Patents is a succinct, straightforward guide to the system. This guide presents the steps involved in obtaining patent protection for inventions. It is easy to read and brimming with essential information and advice compounded from FAQs posed by the author's academic and industrial clientele. The text includes tips, warnings, and examples that guide the reader through the invention process so patent rights are not jeopardized. Checklists and other helpful information are provided to assist the inventor preparing to enter the patent process. The book includes valuable resource information and business guidance to protect the inventor from consumer fraud that is sometimes associated with the patent process. Protecting and Idea is a must read for every engineer, scientist, or amateur inventor.

Product Details

ISBN-13:	9780121384104
Publisher:	Elsevier Science
Publication date:	10/08/1998
Pages:	222
Product dimensions:	6.00(w) x 9.00(h) x (d)

About the Author

Joy L. Bryant holds an M.A. in Applied Science—Patent Practice from the College of William and Mary and an M.S. in Polymer Science from the University of Akron. She is registered to practice before the U.S. Patent and Trademark Office as an agent. Bryant is currently in private practice in Virginia and is the Founder and President of the National Association of Patent Practitioners (NAPP), a nonprofit professional association for patent agents and attorneys. Prior to starting her own practice, Bryant was employed as a patent agent in the Office of Patent Counsel at NASA Langley Research Center and an industrial polymer chemist. She has also developed three commercial products, one of which is patented.

Read an Excerpt

Chapter 1: Choose the Right Protection

The first step in protecting an idea is to identify what type protection you need. This is accomplished by gaining understanding of what intellectual property encompasses.

What Is Meant by the Term "Intellectual Property"?

Ideas such as expressions, inventions, unique names, business methods, industrial processes, and chemical formulas are products of the mind. When these "products" are treated as property or given legal aspects of property-type protection, they become intellectual property.

Intellectual property is a product of the mind treated as if it were a piece of property. Intellectual property is a collective term identifying copyrights, trademarks, trade secrets, patents, unfair competition, moral rights, and the right of publicity.

At least one form of intellectual property may protect each product of the mind. In turn, this protection makes it possible for a product of the mind to be owned, commercially exploited, and enforced by the courts. This chapter addresses the origins and use of copyrights, trademarks, trade secrets, and patents that protect various ideas.

What Are Copyrights, Trademarks, Trade Secrets, and Patents?

A copyright is a federal right, providing the author of an original work or the owner of the copyright the right to exclude others from:

1. reproducing the work;
2. preparing derivative works based on the original work;
3. distributing the work to the public;
4. performing the work in public;
5. displaying the work in public; and
6. for sound recordings, performing the work in public through digital audio transmission.

A trademark is any word, name, symbol, or device, or any combination of words, names, symbols, and/or devices that identifies and distinguishes one's goods from those manufactured or sold by others. A trademark also indicates the source of goods, even if that source is unknown.

A trade secret protects all forms and types of confidential business information if: (a) the owner has taken reasonable measures to keep such information secret; and (b) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily found out through proper means by the public.

A U.S. patent is an agreement between an inventor (or inventors) and the U.S. government, providing the owner of the patent with the right to exclude others from making, using, selling, offering to sell, and importing the invention in the U.S. for a specific length of time in exchange for a complete description of how to make and use the invention.

How Have These Forms of Intellectual Property Protection Evolved in the U.S.?

The laws surrounding copyrights, trademarks, trade secrets, and patents are constantly changing to adapt to and address problems which result from various advances in technology. For example, as the number of Internet users has increased, the concept of global commerce has changed. This new form of electronic commerce has created a new set of problems in intellectual property law. In particular, the laws with respect to copyrights and trademarks had to evolve from protecting traditional forms of media, such as print, to new forms of electronic media operating in a nontraditional medium called cyberspace.

A basic understanding of how intellectual property has evolved helps to appreciate the economic value and strategic importance of intellectual property. The United States Constitution provides protection for copyrights and patents in Article I, Section 8, Clause 8 where it states:

The Congress shall have the power...to promote the progress of science and the useful arts by securing for limited times for the authors and inventors the exclusive right to their respective writings and discoveries.

In 1790, Congress passed the first copyright statute with general revisions occurring in 1831 and 1870. In 1909 major revisions to the copyright laws were adopted. In the 1950s, Congress began studies and conducted hearings lasting two decades that resulted in many of the copyright laws being rewritten. These laws were implemented on January 1, 1978. In 1989, Congress made additional changes to the copyright laws which allowed the U.S. to join the Berne Convention. The Berne Convention is a multilateral copyright treaty that gives a work the same level of protection in each member nation as that nation gives to works of its own citizens.

Like copyrights, patents have their Constitutional basis in Article 1, Section 8, Clause 8. However the role of patents in society goes back to the time of Aristotle (4th century B.C.). Aristotle referred to patents in his book "Politics," where he wrote about a reward system for inventors of useful things. In the late 15th century, the Venetian Senate passed an act that provided for the practice of granting patents. Surprisingly, many characteristics of today's patent statute are found in this Act. It was also during this time that the term "patent" had its origin. It comes from the Latin word "patere" which means "to be open." During the 16th century, the Italians introduced the idea of providing legal protection for inventions. In the 17th century, the British introduced the Statute of Monopolies which allowed for a review of all patents and eliminated all those that were not based on true inventions. Patents were introduced in the American colonies between 1640 and 1776 and were granted by the individual colonies. To maintain uniformity with respect to the granting of patents, the Constitutional Convention of 1789 came forth with Article 1, Section 8, Clause 8. Congress passed the first U.S. patent statute in May 1790 and later revised the patent system in 1836. This revision changed the system from a registration system, where an application was submitted and a patent awarded, to the present-day examination system, where the application is reviewed. As greater demands were placed on the patent system, new rules evolved. Late in the 19th century, the patent structure began to evolve to its present form, rooted in the 1952 Patent Act.

During the 1960s and 1970s getting a patent upheld was difficult in many federal circuit courts because of the diverse interpretations of the patent law in the different circuits. To unify the interpretation of the patent laws, Congress passed the Federal Courts Improvement Act in 1982 that created the new Court of Appeals for the Federal Circuit (CAFC). A primary function of the CAFC is to hear all patent appeals from the federal district courts. The formation of the CAIPC has increased the value of patents by making appellate review more predictable.

In 1994, the Uruguay Round Agreements Act (URAA) was enacted. The URAA implemented significant changes to the U.S. patent system, with several changes becoming effective on June 8, 1995 and the remaining changes implemented on January 1, 1996. The URAA resulted in the following key changes to the U.S. patent system:

1. The term of a U.S. utility patent changed from 17 years from the issue date to 20 years from the filing date for all patents issuing from applications filed after June 8, 1995.
2. The provisional patent application (further explained in Chapter Two) was introduced.
3. Patent rights were extended to exclude others from offering to sell and importing the invention in the U.S.

Unlike copyrights and patents, Congress' power to regulate trademarks does not come from Article I, Section 8, Clause 8 of the U.S. Constitution. Instead, it is based on Article I, Section 8, Clause 3, which regulates commerce. The first modern federal trademark statute was enacted by Congress in 1905. The present trademark statute took effect in 1947 and is known as the Lanham Act. In 1984, the Lanham Act was amended by Congress to prohibit counterfeiting and redefine the term "trademark" to clarify that trademarks may distinguish unique products and products whose source is unknown by name to customers. In 1989 the Trademark Law Revision Act took effect, making many changes to the Lanham Act and, in particular, allowing a trademark application to be filed based on intent to use. In 1996, the Federal Trademark Dilution Act took effect, providing protection for famous trademarks against uses that dilute the distinctiveness of the mark or tarnish or disparage it.

Trade secret law differs from copyright, trademark, and patent law in that until recently, it was largely based on state law, not federal law. In 1939, the criterion that influenced the development of trade secret law in most states was set forth in the 1939 Restatement of Torts. In 1979, the American Bar Association proposed the Uniform Trade Secrets Act and approximately 40 states adopted it with various modifications. In 1995, the Restatement of Torts was updated with the Restatement of Unfair Competition and, in 1996, the U.S. enacted the Economic Espionage Act. This Act amends Title 18 of the United States Code such that it prevents trade secret theft by:

1. a foreign entity; or
2. anyone in general.

The definition of a trade secret in the Economic Espionage Act reflects Congress' attempt at trying to keep pace with the changes in technology. The common trend observed in the evolution of intellectual property protection is that technology, information accessibility, and global competition have caused changes in the law; moving from a localized focus to a global perspective.

Table of Contents

Choose the Right Protection The Types of Patents and Patent Applications The Invention Process. Documenting Your Ideas Researching Your Ideas Protect Yourself. Preparing the Patent Application Filing and Prosecuting the Patent Application Deciding to Patent Appendix I: Resources Appendix II: Patent & Trademark Depository Libraries Appendix III: Tips Regarding Invention Development Firms

Editorial Reviews

"Protecting Your Ideas is the entrepreneur's step-by-step guide for safeguarding intellectual property." —Robert G. Templin, Jr., Virginia's Center for Innovative Technology "Rarely does one find a book that has so much important information on a subject so vital to the creative or inventive mind. Ms. Bryant has built an important bridge for the inventor on the long road to success." —Joe East, President, PAR Technologies "More useful information per square inch than any other book I have seen on this subject." —Shelia Marsh, Principal Attorney, The In-House Advantage "Joy Bryant has the rare ability to translate very complicated and weighty stuff into immediately understandable and even interesting information." —Anne Womack, Director of Sponsored Programs, College of William and Mary "Joy Bryant's book is a clear and concise description of the IP (intellectual property) maze; it defines and describes IP and how to protect it. The book is for everyone on your team; it is an essential tool for the preservation of your ideas and your future. Buy this roadmap and use it." —Dr. Kent A. Murphy, President, F&S, Inc.

From the Publisher