On Patents

On Patents Hi, Well, once in a while I get myself crazed with some particular topic. This time, it was the turn of Patents. I have collected some data; and here is some part of it. Hope you find it informative and perhaps, even useful. Yours, Gautam. ************************************************************************************ Understanding Patents Brief Definition: A patent is a grant of a property right by the government to the inventor to exclude others from making, using or selling the invention. Patents differ significantly from copyrights and trademarks. All patents must be "maintained" by paying a fee to the Patent & Trademark Office at certain intervals. Failing this, patent expires and you lose exclusive rights to invention. Three Categories In the U.S., according to the current patent law, the US Patent & Trademark Office grants utility patents and plant patents last for 20 years; and design patents that last for 14 years. •Utility Patents apply to new and useful processes, machines, manufactures, compositions of matter, or any new and useful improvement of one of these. Generally speaking, if your invention does something, you should apply for a utility patent. Traditionally, utility patents have been divided into three basic types: mechanical, electrical, and chemical. (Pharmaceutical patents are a special case of chemical patents.) •Design Patents apply to new, original, and ornamental design for an article or manufacture. For ex, consider the original Macintosh computer. The plastic shell that covers all working parts is covered by a design patent, while many of the working parts it hides are covered by utility patents. •Plant Patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including

cultivated sports, mutants, hybrids, and newly found seedlings, other than tuber-propogated plant or a plant found in an uncultivated state. Three Criteria To receive a patent the invention must meet at least the following three criteria. Usefulness Anyone who invents or discovers any new and useful process, machine, manufacture, compositions of matter, or any new and useful improvement of one of these can receive a utility patent. Novelty Your patent must, of course, be novel. That is, if the invention has been known of or described in a printed publication somewhere before you invented it, or if it has been patented or described more than one year prior to your patent application, you can't get a patent. (Non)-obviousness A further stipulation of novelty refers to obviousness. Even if what you want to patent is not exactly described in published information, and even if you have created something with one or more differences from the most nearly similar thing known, the Patent & Trademark Office might still refuse your claims if it thinks those differences obvious. For instance, changes in materials or changes in size don't usually count for much. Patents vs. Trade Secrets A patent is a legally recognized monopoly which the government grants in exchange for disclosure of how to make and use an invention. A trade secret is something which confers a business advantage, is not generally known, and that the owner of the trade secret takes steps to maintain as a secret. Tension frequently exists between the options of keeping an invention a trade secret or filing a patent application which discloses the invention. Using a trade secret may eliminate any possibility of ever being able to patent an invention. On the other hand, the publication of a patent destroys any trade secrets which it discloses. Usually, however, the decision requires balancing various commercial, business, and legal factors. Because of the disclosure requirements of patents and the secrecy requirements of trade secrets, these two forms of intellectual property usually cannot be maintained for any one particular technology. A choice either to patent or to maintain as a trade secret must be made.

Advantages of Patents In at least two situations, patents are a clear choice over trade secrets. A trade secret is of no use to protect a product which can be reverse engineered. In this situation, a patent is the only option. Similarly, trade secrets are generally of little use when dealing with an invention that is likely to be independently invented by another. For one thing, patents have a firm duration. Trade secret protection can be lost overnight if the secret is publicly disclosed, even if the disclosure was not intentional. Second, once a patent application is filed, the information which is in the application can be freely disclosed without loss of proprietary rights. Obviously, trade secrets cannot be freely disclosed and still maintained as a secret. Third, for technology which is to be licensed out, a licensee may be more willing to pay for technology that is patented. Fourth, the decision to file a patent application is not irrevocable. The act of filing a patent application does not result in loss of trade secret rights. Advantages of Trade Secrets In at least two situations, the decision is clearly in favor of trade secrets. Trade secrets are the only option when the secret covers something that is not patentable. This occurs when the trade secret concerns things like customer lists, business methods, or sources of supply. This also occurs when something that would otherwise have been patentable has been for sale or was publicly used for more than one year. Another example is when the trade secret involves something that is known. For example, if several different methods are known to make a product and a company uses one particular method to its advantage, the undisclosed use of the method can be a trade secret, although it is clearly not patentable. A second clear answer in favor of trade secrets is when the advantage due to the ownership of the technology is of very short duration. If the major competitive advantage is by being "first-to-market" or if the technology will be obsolete in less time than it would take for a patent to issue, then a patent is of little or no use. Trade secrets also have an advantage because they can potentially last forever. A classic example is the formula for CocaCola, which cannot be reverse engineered. If the formula had been patented when it was first used in 1886, the formula would have been in the public domain a long time ago and would now be free to be copied by anyone. However, by maintaining the formula as a trade secret for over one hundred years, Coca-Cola has continued to dominate the world wide soft drink industry. Therefore, trade secrets may be preferred over patents for technologies which preserve their competitive advantage for longer

than the term of a patent. A further advantage of trade secrets over patents is that there are no official prosecution costs or maintenance fees in order to establish a trade secret or to keep it in force. Patenting costs may range from $15,000 to $30,000 or more. These costs are avoided if an invention is maintained as a trade secret. Conclusion Whether to seek patent protection or to maintain an invention as a trade secret is a decision which must be considered on an individual case basis by examining the specific facts related to the case. Sometimes, the decision is evident. If an invention can be reverse engineered or independently developed, if there is a need to disseminate information about the invention, or if the invention is a technology for which a licensee will only pay if it is patented, then the choice is clearly in favor of patents. On the other hand, if the secret is not patentable, if it provides an advantage which is of a shorter duration than the time that it would take to obtain a patent, or if the secret will be valuable for a very long time and it can be maintained as a trade secret during that time, then the choice is clearly in favor of trade secrets. International Patent Protection Patent protection granted to an inventor by a government is only valid in the country where the inventor requested it. The rights do not extend beyond that country. When you wish to obtain patent protection for the same invention in other country, you must file an application in each of them separately. World Intellectual Property Organization (WIPO) The WIPO is one of the 16 specialized agencies of the United Nations and has its intergovernmental organization with headquarters in Geneva, Switzerland. Its main mission is to promote the protection of intellectual property throughout the world through cooperation among nations. (Intellectual property includes inventions, trademarks, industrial designs, and copyrights.) WIPO 34, chemin des Colonbettes CH-1211 Geneva 20, Switzerland Phone: 22 7309111 Fax: 22 7335428

Web Links *Department of Scientific and Industrial Research, India: http://www.dsir.gov.in/ *World Trade Organization: http://www.wto.org/ *TRIPS,WTO: http://www.wto.org/english/tratop_e/trips_e/trips_e.htm *World Intellectual Property Organization (WIPO) http://www.wipo.org/ *New Scientist: http://www.newscientist.com/

United States Patent and Trademark Office http://www.uspto.gov/ The UK Patent Office http://www.patent.gov.uk/ European Patent Office http://www.european-patent-office.org/ Japan Patent Office http://www.jpo.go.jp/ IBM Patents : http://www.patents.ibm.com/> PIUG - Patent Information Users Group: http://www.piug.org/

Gautam.