Five Things Corporate Counsel Need to Know About Patents

A new article that is available online at Law.com discusses the Five Things Corporate Counsel Need to Know About Patents by Stephen Nipper, an Idaho based patent attorney.  The article is available here, but I have written a condensed version of Stephen’s list with my condensed answers.

1. WHAT IS PATENTABLE?

A. Essentially anything made by man that has not been done before (novel) and would not have been obvious to someone working in the technological area.

2. WHO CAN BE AN INVENTOR?

A. Everyone who makes a ‘patentable contribution’ to the invention.

3. WHO OWNS THE PATENT?

A. The inventor unless there is a duty to assign the patent to the company.  It is best to get this in the employment contract.

4. WHAT CAN WE FIND OUT ABOUT OUR COMPETITORS’ PATENTS AND PATENT APPLICATIONS?

The Patent Office publishes issued patents and patent applications online at its website (www.uspto.gov).  You can search by assignee to find patents owned by competitors.

5. WHAT IS THE IMPACT OF MY COMPANY’S EXPANSION ON OUR PATENT PORTFOLIO?

If your company dramatically increases the number of employees, you will be required to pay a "big entity" fee rather than a "small entity" fee.  Essentially big companies pay twice as much in fees to the Patent Office as compared to small companies and individual inventors. Failing to pay the correct fee may result in a loss of patent rights.

Thanks to David Orange for the link.

UPDATES from Other Blogs:

Melody Wirtz at PHOSITA thinks the title should be "Five Things Corporate Counsel or Anyone Associated With the Upper Echelons of a Corporation Needs to Know About Patents."

Matt Buchanan at Promote the Progress notes that this is information that all corporate counsel should know about patents — a great primer for the “jack of all trades” attorney not familiar with patent practice.

Bill Heinze at IP/Updates outlines Mr. Nippers qualifications for writing the article — Author of the InventBlog.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.