Intellectual Property: A Guide for Engineers. American Bar Association

enough in its coverage to be worthwhile in a commercial sense. Such a preliminary evaluation of patentability should be made by a patent attorney, based in part on the prior patents and other materials located in a search of relevant records in the PTO. While the attorney’s opinion that the invention should be patentable is not a guarantee that the patent will be granted, if he or she finds that the invention probably is not patentable or economically worthwhile, the considerable cost and effort of going forward with the process can be avoided.

       Preparation of a Patent Application. The next step in the process of obtaining a patent is the preparation of a patent application. A patent application is a complex legal document, which must fully describe the invention with words and, where appropriate, drawings, and which includes claims that define the legal boundaries of the invention. It is essential to the validity of the patent, and its ability to adequately protect the invention, that the invention be described and claimed completely and precisely. Accordingly, the inventor should tell the patent attorney everything about the invention, including what problems it solves and what difficulties were overcome to make it work. Particularly important is the duty to tell the attorney about prior patents or other prior inventions, of which the inventor is aware, so this information can be disclosed to the PTO. The patent application will also contain a Declaration and Power of Attorney form, which the inventor must sign indicating that he has read and understood the application and affirming that he is the first inventor. The application and a filing fee are then formally filed in the PTO.

      Congress has recently authorized a new form of preliminary patent application known as a Provisional Application, which can be filed at a lower cost and without claims and certain other formalities. This provisional application is not examined, but must be replaced by a conventional application within one year. The benefit of this new low-cost form of application is that it secures a legal filing date in the PTO, but yet does not count in determining the expiration date of the patent, which is measured from the date of filing of the conventional application.

      The filing of an application for a patent does not create any enforceable rights since the courts will only stop an infringer after the patent is granted. Nevertheless, marking a device “Patent Pending” or “Patent Applied For” may discourage potential infringers since it notifies them that they may have to stop production once the patent is granted. It is unlawful to use such a notice unless an application for a patent is actually pending in the U.S. PTO. After the patent has been issued, it is also good practice to mark the products sold under the patent with the patent number because it gives the inventor certain important additional legal rights.

      In the PTO, the application undergoes a process called examination. After an initial processing stage (which may take six to nine months or more), a patent examiner will review the application and write a letter (called an Office Action) commenting on it. The first Office Action often is a refusal to grant the patent, and the applicant then has an opportunity to modify the application to overcome the examiner’s objections. With the inventor’s help, the patent attorney will reply in writing to the Office Action, usually making some changes and arguing that others are not necessary. Typically, at least two such exchanges between the patent examiner and attorney are necessary to resolve all the legal and technical issues. In general, it now takes an average of two years from filing to complete the examination process. Under a law enacted in November 1999, pending patent applications will be published 18 months after their effective filing date unless the inventor certifies that he or she will not file a corresponding application in foreign countries. Before the application is published, the application is kept secret, i.e., only government personnel and persons authorized by the inventor are permitted to examine the file. Publication of the application under the new law may entitle an inventor to provisional royalties from those who copy the invention.

      When the examiner is satisfied that the application is in proper form and its claims are allowable, the applicant is notified that a patent will be granted upon payment of final government fees. In order to keep the patent in force until it expires, it also is necessary to pay progressively higher maintenance fees at intervals of 3, 7, and 11 years after the original grant.

THE EMPLOYED ENGINEER AS INVENTOR

      As a general rule, an engineer/employee owns the patent rights to his or her inventions, with two important — some would say overriding — exceptions:

       An engineer/employee must assign patent rights to his or her employer if he or she was initially hired or later directed to solve a specific problem or to exercise inventive skill.

       An engineer/employee must assign patent rights to his or her employer if he or she signed an assignment contract.

      Whether or not the first exception would apply in any case, companies commonly use assignment contracts as a condition for employment.⁵ If reasonable, the courts will enforce such assignment contracts, and an employer may file a patent application on an employee’s invention if the inventor refuses to do so. Whether an employed engineer’s invention is covered by an assignment contract depends on whether the invention is related to the engineer’s duties or field of activity rather than where or when it was made, i.e., at home or while on vacation.

      Patent attorneys can be quite specific in determining when an invention was made, in the legal sense. Normally, assignment contracts cover only inventions made during the course of employment or for a reasonable time after employment. When an engineer leaves a job, on-the-record exit interviews are often quite helpful to all concerned to define the respective rights of the engineer and the former employer.

ENFORCEMENT OF A PATENT

      While the patent grant makes the information in the application available to the public, the inventor has the right to prevent others from making, using, selling, or importing into the United States what is claimed for as long as the patent remains in force. Patents are enforced in the United States against private parties by the filing of a civil action in the U.S. District Courts around the country.⁶ Actions for infringement by the U.S. government must be filed in the U.S. Court of Federal Claims in Washington, D.C. All appeals in patent cases — whether from the District Courts, the ITC, the U.S. Court of Federal Claims, or the U.S. PTO — are heard and decided by the U.S. Court of Appeals for the Federal Circuit in Washington. In turn, appeals from that Court can be taken to the U.S. Supreme Court, but the U.S. Supreme Court decides relatively few patent cases.

      Enforcing a patent in litigation can be expensive and time consuming. For corporations, it involves a significant but normal business expense; but for independent inventors, the costs of litigating a patent may require entering into a joint venture or otherwise seeking financial support.

      In determining whether one’s patent is being infringed, one would look to the normal and appropriate sources of corporate intelligence: trade shows, technical literature, advertising, sales and marketing information, etc. Once a potential infringement is suspected, an inventor should immediately seek the advice of a knowledgeable patent attorney. Failure to approach the suspected infringer properly could result in the inventor being sued in what’s called a Declaratory Judgment action to hold the patent non-infringed, invalid, or unenforceable. Once litigation is begun, the rules of federal discovery require that each side be thoroughly informed of all relevant information regarding the inventor’s and the alleged infringer’s records and actions.