An MD&DI June 1997 Column
HELP DESKSecuring a patent on a new concept or invention is key to maintaining a competitive edge. Delays can mean loss of the patent to a competitor or to the public domain, warns Stephen Glazier, partner in the law firm of Pillsbury, Madison & Sutro (Washington, DC) and holder of six U.S. patents.
How do we obtain a patent once we conceive of an invention?
Describe the invention to your patent attorney so he or she can draft and file a patent application in the United States and in any other country where you desire protection, and pursue that application to the issuance of a patent.
An early patent search can help clarify whether the invention is patentable before you spend the time and money necessary to draft and file an application. Furthermore, conducting a search prior to writing the application improves it and increases its likelihood of success. The results of the search should be filed with the patent application to give strength and reliability to the final patent.
Ideally, patent counsel will be familiar with obtaining, enforcing, and licensing patents. Integrate patent counsel into the entire business plan, including the identification of product concepts, the development of products, the identification of patentable inventions, the pursuit of patents, and the licensing and other commercialization of obtained patents. This integration will ensure the development of a patent portfolio that will aid the business plan of the patenting company and increase its profit margins.
How do we conduct patent searches?
Your patent attorney can arrange searches of U.S. and foreign patents when he or she has your invention disclosure. Your company can also access a variety of on-line services offering patent databases. However, these are only useful for obtaining technical and competitive information. Only a patent attorney can carry out the legal analysis of prior patents to determine the patentability of an invention.
After inventing a new medical device, how soon do we have to apply for a patent?
As soon as possible. Sooner is better. Later is worse. The invention does not have to be made before the application is filed. Just the basic concept can be the subject of a patent application.
New ideas have a way of leaking to competitors, who may file their own patent applications for the leaked ideas. Additionally, a leak may allow the idea to slip into the public domain, that is, to become unpatentable by any party. Leaking is avoided, and legal and tactical advantages are gained, by filing for a patent at the earliest possible opportunity.
Another potential problem is that interesting product ideas may be independently invented by several parties more or less contemporaneously. Early filing can be a determining factor in obtaining a patent for your idea to the exclusion of other independent inventors.
Finally, normal commercialization activity for an invention, if it precedes filing of a patent application, can also cause the invention to enter the public domain.
Patent applications filed early in the conceptual process for an invention can, and in many cases should, be amended and expanded to incorporate new developments and concepts as the original invention concept is refined to become a specific product.
"Help Desk" solicits questions about the design, manufacture, regulation, and sale of medical products and refers them to appropriate experts in the field. A list of topics previously covered can be found in our Help Desk Archives. Send questions to Help Desk, MD&DI, 11444 W. Olympic Blvd., Ste. 900, Los Angeles, CA 90064, fax 310/445-4299, e-mail firstname.lastname@example.org. You can also use our on-line query form.
Although every effort is made to ensure the accuracy of this column, neither the experts nor the editors can guarantee the accuracy of the solutions offered. They also cannot ensure that the proposed answers will work in every situation.
Readers are also encouraged to send comments on the published questions and answers.