Welcome to Patent Fundamentals: Scientists & Engineers! We will provide a comprehensive overview of US patent law for scientists, engineers, and managers involved in business and technology. This course covers the fundamentals of how to identify and document an invention, search for patents related to the invention, apply for a patent application, and prosecute a patent application.
The objective of Module 8 is to define the following:
- Product patent
- Process patent
- Trade secret
Design patents, much smaller in number than utility patents, are granted for new, original, and ornamental designs for an article of manufacture. Only the appearance of the item is protected. The term for a design patent is 14 years from the date the patent is granted.
Plant patents are granted for new asexually reproduced plants. The term for plant patents is 20 years from the filing date.
A defensive publication is the act of publishing a detailed description of a new invention without patenting it, so as to establish prior art and public identification as the creator/originator of an invention, although a defensive publication can also be anonymous. A defensive publication prevents others from later being able to patent the invention.
A “product patent” is a patent giving protection to a product such as, an apparatus, a device or a chemical compound. In the field of pharmaceutical inventions, a product patent gives protection to a chemical/biological compound (The active component of a medicine), also called a “New Chemical Entity” (NCE) or Active Pharmaceutical Ingredient (API).
The vast majority of patents issued by the USPTO are utility patents. Utility patents can be granted for machines, articles of manufacture, processes, composition of matter, or any new, non-obvious, and useful improvement of the above. The term for utility patents is 20 years from the filing date.
In United States patent law, a method, also called “process”, is one of the four principal categories of things that may be patented through “utility patents”. The other three are a machine, an article of manufacture (also termed a manufacture), and a composition of matter.
A “process patent” is a patent that covers a specific method of production, usually in the industrial field. Filed with the United States Patent and Trademark Office, a process patent (often called a “method patent”) will guarantee the holder of the patent all rights over the sale and implementation of the process, as well as a claim to any products produced by the process.
In that context, a method is a process, or series of steps or acts, for performing a function or accomplishing a result. The terms are largely interchangeable, but “process” usually refers to a manufacturing process—a series of steps for making something, while a “method” usually refers to a way of using a product to accomplish a given result. Thus, one might speak of a process for making soap or candles, or speak of a method for curing headaches comprising administering a therapeutically effective dosage of aspirin.
Previously, a method patent claim could be infringed only when a single person or entity practices all claimed steps. Neither a physical device, such as a product that can be used to practice the method, nor instructions for practicing the method, are infringing until they are used by a single person to perform all the steps together. This rule was changed in Akamai Tech. v. Limelight Networks (Fed. Cir. 2012)
A trade secret is any information that allows you to make money because it is not generally known and could be a formula, computer program, process, method, device, technique, pricing information, customer lists or other non-public information. If the economic value of a piece of information relies on it being kept private, it could be a trade secret.
Trade secrets are protected by nondisclosure agreements and employment law that prevents reverse engineering and information leaks such as breaches of confidentiality. Compared to patents, the advantages of trade secrets are that a trade secret is not limited in time. It “continues indefinitely as long as the secret is not revealed to the public,” whereas a patent is only in force for a specified time, after which others may freely copy the invention. A trade secret does not entail any registration costs, has an immediate effect, does not require compliance with any formalities, and does not imply any disclosure of the invention to the public. The disadvantages of trade secrets include that “others may be able to legally discover the secret and be thereafter entitled to use it”, “others may obtain patent protection for legally discovered secrets”, and a trade secret is more difficult to enforce.
Trade secrets are very different from patents, copyrights and trademarks. While patents and copyrights require you to disclose your information in the application process (information that eventually becomes public), trade secrets require you to actively keep the information secret. Trade-secret protection can potentially last longer than that of patents (20 years) and copyrights (100 years).
Some of the ways to protect a trade secret are as follows:
- Restrict access to the information.
- Limit the number of people who know the information.
- Have the people who know the trade secret agree in writing not to disclose the
- Have anyone that comes in contact with the trade secret, directly or indirectly, sign non-disclosure agreements.
- Mark any written material pertaining to the trade secret as proprietary.
Trade secrets are protected under many state laws, Federal statutes and some international laws. Trade secrets remain valid only as long as no one else has discovered the information independently; the information has not been made public (by employees or published literature) nor discovered by working backward from the original product/process or publicly observing the product/process. If the trade secret is revealed in violation of a non-disclosure agreement, you can sue for damages. However, once the secret is revealed, it is hard to get the trade-secret status resumed.
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. 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.
The impact of stronger intellectual property rights on science and technology in developing countries