3 Parts of a Patent Every Startup Should Know About
Nitin Gupta is the co-founder of LawPivot.com, an online marketplace for businesses to receive crowdsourced legal advice from lawyers. You can follow LawPivot on Twitter @LawPivot. This post was co-authored by Eric Hutchins, a patent attorney at Kilpatrick Townsend, & Stockton.
Many tech startups make the grave mistake of not actively seeking patent protections for unique technology or processes. Until a tech startup files a patent for its technology, competitors can copy and essentially steal it.
To avoid this, a company needs to file a utility patent on its technology with the United States Patent and Trademark Office as soon as possible. To understand the many parts that make up a patent probably means you’ll need guidance and counsel from an experienced patent attorney. It also means you should know about the three critical components of this process. Here they are.
“The name of the game is the claim” was coined by patent law expert Judge Giles Rich, and captures the essence of every patent. U.S. patent law included a category called specification. The specification is made up of two parts: the claims and the written description. The claims define the invention. Claims also tell the public what the inventor considers as his/her invention, and define the limit on her/his right to exclude others from that invention.
If an aspect of what the inventor conceived is not found in the claims, this could result in overly broad claims that are later found invalid due to the existence of earlier inventions, called prior art. Alternatively, if the claims include extraneous elements that are not crucial to the invention, others can more easily avoid infringing the patent, narrowing the scope — and lessening the value — of the patent protection.
It’s common for non-lawyers to confuse the claims with the other part of the specification, the written description. This is a mistake. While the written description of the invention is important, it does not serve the same purpose as the claims. The written description section of the patent discusses how to make specific embodiments of the invention and how these embodiments work, but it does not define the limit of the patent owner’s rights. That’s what the claims are for.
An inventor is a person who formulates a “definite and permanent idea” of the claimed invention and “reduces that invention to practice.” It is very important for a patent to correctly identify the inventors. If a patent omits an inventor, that omission can render the entire patent invalid and unenforceable, even if the omission was an innocent mistake.
Since the correct identification of inventors has such a profound effect on the value of a patent, this is an aspect of the patent that often needs verification during the due diligence and before a financing or acquisition. It is therefore important for a startup to have signed copies of patent assignment agreements, typically part of the employment agreement, from all of the people who worked on a product and who contributed to its inventive aspects.
If you find that your patent application left out an inventor, there are procedures that your patent attorney can use to correct this mistake. It is important that any such mistake be corrected as soon as possible to avoid unnecessary and expensive complications down the road.
3. Filing Date
The last important part of a patent is its filing date. It’s rather common knowledge that the earlier you file your patent application, the better. There are two reasons for this. First, an earlier filing date makes it more difficult to invalidate your patent. This is because, generally speaking, only the inventions and teachings of others that precede the filing date of your patent can invalidate your patent. These inventions and teachings are called prior art. Patents have been invalidated by prior art that preceded the patent’s filing date by only a few days or weeks. This is why it’s so important that you work with your patent attorney to complete and file your patent application as soon as all of the necessary pieces are in place.
Don’t confuse the filing date with the issuance date. The date that the Patent Office issues the patent is important for other reasons, such as placing the public on “constructive notice” of your patent, which is important to calculate infringement damages in the event of a lawsuit. But the issuance date has nothing to do with determining the patent’s validity in light of the prior art.
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