Innovation & Intellectual Property - Patents Primer

Patents
Patents as a form of intellectual property are meant to protect inventions - ideas that are new in the world and can spur innovation. The ideas they protect, although often spelled out in great detail in patent documents, are by their nature abstract (although must have a real world embodiment, see below). A patent for a chair, if written well, doesn’t just protect one chair but anything that has the specific attributes of a chair covered in the patent.
What can be patented?
Ideas that can be patented include processes (some method that produces a result), machines, articles of manufacture, compositions of matter (chemical compounds or alloys), or improvements to any of those items. Although we say ‘ideas’ and that patent protection is by its nature abstract, there is also a requirement that the patent describes how to make a tangible implementation or embodiment of the idea, or in patent language a “reduction to practice.” The above are known as utility patents - there are also design patents that cover ornamental designs and plant patents for bred varieties of asexually produced plants.
What are patents good for?
Patents take a long time to obtain, and we can spend years processing any given application with the patent office. Because we use patent attorneys and agents to help us with this process, obtaining a patent can be very expensive. An issued patent gives rights to its owner (the right to prevent others from using, making, selling, offering for sale, or importing) for 20 years from the date of filing the application. For these reasons, the use of patents to promote PSU innovations is best suited to ideas that have a long product development time or are ‘platform’ ideas that can be adapted to many future iterations of related products or services. Some research results may fit better into this category than others, and part of our evaluation of whether or not to pursue a patent will take this notion into account. For example, although some elements of software can be patented, software product life cycles tend to be faster than drugs or medical devices and an expensive patent strategy may not always be the best route for this type of innovation.
What are the basic criteria for patentability?
In addition to some basic restrictions (one cannot patent naturally occurring things or processes, abstract ideas, laws of nature, humans, or things that are offensive to the public), the criteria for obtaining a patent are novelty, utility, and non-obviousness.
Novelty: The invention must be brand new. In most of the world, this means that anything that has been publicly disclosed in a paper or at a conference is no longer patentable. In the United States we have a limited one year grace period in some instances, but for practical purposes it is still better to file an application before any public disclosure.
Utility: The invention must be useful. We need to be able to point to a real world use and purpose, meaning we cannot obtain patents on ideas or processes that are early research results with no immediate application. This does not mean that we have to wait for a finished ‘product’ in order to file a patent, as patent language is sufficiently flexible for us to talk about how something is useful prior to having a finished product.
Nonobviousness: The invention must not be obvious to a person with “ordinary skill in the art.” This means that, as a mental exercise, someone in the same field can’t have looked at the same basic facts as the inventor and come up with the same idea. This is often the most difficult criteria on which we have to convince the patent office. It’s a very abstract and retroactive thought process to go through, and although we can seldom predict what a patent examiner will present to us in this regard, there are ways to evaluate how much of an issue this might be before filing an application.
What is prior art?
Public information in the form of journal articles, conference proceedings, books, talks, posters, manuals, white papers, etc., that can either identify that an idea is not novel or that can be combined to make the case that the idea is obvious are known in the patent world as “prior art”. We have an obligation to tell the patent office about anything that we think might be prior art for a patent application, and the patent office will often find prior art to cite against us that we didn’t know about. Prior art may include the inventor’s own previously published materials, and can include foreign language publications and other obscure references. Prior art can also include activities like offering for sale the tangible implementation of the idea prior to the patent application.
Who is an inventor?
The question of who is an inventor on a patent is not the same as standard academic practices around authorship on publications. Many people may have contributed to producing the data that led to or validated the patentable idea, but inventorship is a legal determination that revolves around very narrowly defined intellectual contributions to specific elements of the invention. For researchers accustomed to working with authorship, this is sometimes a hard notion to swallow. At PSU we encourage those who are inventors to recognize those who helped develop the invention but do not rise to the level of inventorship.
What about foreign countries?
Patents are country specific. A patent in the United States only allows the owner to prevent others from the associated activities in the United States. When we are first filing an application, we will often file what is known as a PCT (for Patent Cooperation Treaty), which is like a single placeholder application for many countries of the world. This type of application allows us to preserve most foreign rights while we evaluate the technology and seek external partners who may need the foreign protection. Eventually we need to choose in which countries we will ‘nationalize’ the PCT and file country specific applications. This process gets very expensive very quickly, and we will very rarely do this without an external partner to help us.
So a patent gives me the right to practice my invention?
Nope. As mentioned above, owning a patent gives the owner the right to prevent others from using, making, selling, offering for sale, or importing the covered idea. It is important to note, however, that having a patent does not give the owner the proactive right to do these activities themselves. The idea may be covered by a different but overlapping patent owned by someone else, and any single product or patented process may be covered by a multitude of patents.