March 2023

Patent attorney Michael Morris treated us to an overview of four ways the law helps inventors to profit from their creations.

First, a patent, which is an agreement.  The inventor receives a temporary monopoly that lets him prevent others from profiting from his invention.  This negative right helps the inventor protect his share of the market and defends him from from claims of violating the patent rights of other inventors.  In exchange, the inventor gives his inventive idea to the world when his temporary monopoly ends.

A patent is granted to an inventor by a national (eg, United States) or regional (eg, European) patent office.  The U.S. grants three kinds of patents: utility (for a useful structure or a method of making or of using a useful structure); plant (for a botanical plant that the inventor invented or discovered and asexually reproduced, except a tuber or plant found in an uncultivated state); and design (for the ornamentation of something manufactured; protection is strongest against exact copies of an invention).

Here is a typical sequence of events leading to a utility patent.

  1. An inventor thinks of an invention.
  2. He searches publications to see if someone else already thought of that invention.  This video explains how to search for a design.
  3. The inventor applies for a patent from the U.S. patent office.

The application can be nonprovisional, which can lead to a patent.  Or the application can be provisional, which acts as a 1-year placeholder for a subsequent nonprovisional application.  This placeholder has value because:

• the U.S. patent system grants a patent to the first inventor to file an application for a particular invention;

• the inventor can use this year before filing a more expensive nonprovisional application to see if his invention will be profitable; and

• the inventor can continue to improve his invention during this year, file a series of provisional applications describing each improvement, then combine all of those provisional applications in one nonprovisional application.

Remember: once an inventor reveals his invention to the public, he has only 1 year to apply for a U.S. patent.  If he wants a patent from almost any other country, he must apply for a patent before revealing his invention to the public.

  1. He starts to sell embodiments of his invention or to sell or rent the invention itself.
  2. The inventor is granted a patent and he starts to sell embodiments of his invention labeled with the patent number.
  3. The patent ends and the inventor continues to sell embodiments of his invention that are not labeled with the patent number.

Patents can conflict.  For example, if one inventor owns a patent to a pencil and a second inventor owns a patent to a pencil having an eraser, neither inventor can make a pencil having an eraser.  To solve the problem, each inventor cross-licenses his invention to the other.

Second, a trademark, which identifies the company that manufactures a particular product.  A trademark can last forever and can be a word, phrase, symbol, design, sound, smell, or color.  The legally strongest trademarks do not describe the products they represent.

Consumers benefit from recognizing quickly what kind of product they are buying and how reproducibly good it is.  Trademark holders benefit from customer loyalty.

A trademark can, but need not, be registered with the U.S. trademark office.  If registered, annotate the trademark with ® in publications; if not registered, annotate it with ™.  Either way, use a trademark as an adjective (eg, Kleenex tissue), not as a noun (eg, Kleenex, instead of tissue).  Using it as a noun can lead to loss of the trademark.

Third, a copyright, which protects a specific expression of an idea (not the idea itself).  A copyright lasts until 70 years after the last author dies.  Copyrights exist the moment a specific expression exists; no registration with the U.S. copyright office is required.  But suing for infringement of a copyright requires registration with that office.

Fourth, a trade secret, which protects confidential information (eg, the formula for Coca Cola).  A trade secret can last forever and is often protected with a nondisclosure agreement.

These different kinds of protection can be layered.  For example, one invention can be protected by a utility patent, a design patent, and a trademark.  Or a trademarked product can contain a trade secret.

Thank you, Mr. Morris, for a fun and informative presentation!