Patent Myth Busting: Laying Patent Law Misconceptions to Rest

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Misconceptions are common when discussing almost any legal field, as the law typically contains nuances that are just plain difficult to navigate for the uninitiated.  The patent laws are no exception – there are several mistaken beliefs that folks have when they think about the patent system, and I think it’s time that these are laid to rest.  To that end, below are five misconceptions that I regularly dispel when talking with people about the ins and outs of patent law:

Bicycle Model for Patent No. 222537 - (picture courtesy Rothschild Petersen Patent Model Museum.

Bicycle Model for Patent No. 222537 – (picture courtesy Rothschild Petersen Patent Model Museum.)

  • Misconception #1: I need a prototype

While prototypes or models were once required by law as part of the patent filing process, this is no longer a requirement (although you can still see some of the devices, like the bicycle pictured right, sent in during the 18th and 19th century at the Rothschild Peterson Patent Model Museum or at the USPTO Museum).  Today, although there are numerous technical requirements for a patent application, the main requirement is a description of the invention that is sufficient to a person of ordinary skill in the pertinent art, science, or area to make and use the invention without extensive experimentation.  For most applications, the submission of labeled drawings is also required so as to assist in understanding the invention claimed.

  • Misconception #2: Patents are only for tech companies

All types of ideas can be patented so long as they are novel and non-obvious in view of what has already been invented and disclosed (referred to as Prior Art).  There are still patents being issued to mousetraps, light bulbs, and flower pots in addition to all the high tech gadgetry that is being patented by Apple and Samsung.  Additionally, there are different types of patents that are specifically available for plants and ornamental designs of objects (bottles, gloves, shoes, etc.).

  • Misconception #3: I can’t patent an invention that is a combination of known items

The Supreme Court has said that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc.  Thus, while many combinations of known items may not be patentable, if the items are combined via new or novel methods or a when a combination yields unpredictable results (or both), an inventor may be entitled to a patent.  A new invention may also be patentable if it is a significant departure from the prior art in terms of scale, footprint, throughput, or other metric.

  • Misconception #4: Having a patent gives me the right to make my invention

Unfortunately, obtaining a patent does not mean that you have a right to make your invention.  This may be best understood through an example:

  • You invent the touch screen that is obviously perfect for cell phones.
  • You obtain a patent that covers a cell phone having a touch screen.
  • Apple has the patent to the cell phone.
  • You cannot make a cell phone having a touch screen because if you did so, Apple could sue you for infringing its patent on a cell phone.  However, Apple cannot make a cell phone with a touch screen either.

Although my example is slightly contrived because no-one, including Apple, would have a patent to all cell phones, this situation certainly occurs.  Hopefully, if it does, you’ll be able to work around the other patent or license/purchase the necessary technology.

  • Misconception #5: I can stop people from making my invention once I have a patent

Interestingly, the rule associated with whether an inventor could get an injunction, thereby stopping an infringer from continuing to infringe, has changed within the last five years.  In days past, an injunction was almost issued as a matter of course when infringement of a patent was found.  However, since the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, this tradition has changed and injunctive relief is no longer a guarantee.  In fact, the Supreme Court’s ruling has opened the door for revising the standards for injunctive relief, which we are beginning to see in decisions from the Federal Circuit Court of Appeals (which hears all patent appeals).  Moreover, the Federal Circuit’s reasoning in these recent cases has been construed so as to even further limit the ability of patentees to obtain injunctions, which you can read more about in my previous post.


Not everything you hear about patent law is true.  If you are thinking of protecting an invention with a patent, it’s important to get the facts straight and make sure you understand how the patent system works.  With a better understanding of the actual requirements, costs, and benefits of obtaining a patent, you can make more informed decisions about whether patenting your invention make sense in your situation, or whether it’s better to pursue other methods of protecting your intellectual property.

Disclaimer – As always, we recommend that inventors consult an attorney to discuss the specifics of their situation before making decisions regarding their pursuit, enforcement, or defenses relating to intellectual property.

Protecting Your New Business – Three Documents Your Business Needs

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Which Intellectual Property Agreements do you need to focus on when starting your business?

Which Intellectual Property Agreements do you need to focus on when starting your business?

While there are a myriad of tasks that you’ll need to complete when starting new business, there are a few key documents related to intellectual property that are important to have at the ready as early as possible.

The Three Agreements

1. Non-Disclosure Agreements

A non-disclosure agreement is a document that allows you to disclose your ideas and other confidential information to others while requiring that they only use the information for specific purposes and keep the information in confidence.  These agreements are useful when talking to potential manufacturers or distributors of your product, marketing persons about your sales, competitors, or business strategies, and when discussing possible joint ventures and investing relationships.  Another benefit to these agreements is that it may assist you in talking with others about your invention without sacrificing the ability to get a patent (especially in foreign jurisdictions).*

The basics of the document include a) the type of information that is going to be disclosed, b) how the receiving party can use the information, and c) how long the information must be kept in confidence by the receiving party.  Breach of the agreement would allow you to sue the receiving party for damages resulting from the breach and an injunction from further use of the information.

Even with the agreement in place, however, you should never disclose more information than is necessary for the receiving party to make the decision they need to make–doing so may just cause problems.

2. Employee/Independent Contractor Agreements

If you hire employees or contractors to assist your business, there should be a written agreement discussing the relationship.  In addition to setting out the compensation to be received by the employee/contractor, the document should also discuss the use (and return) of company property and information, termination provisions, and, if applicable, non-compete, non-solicitation provisions, and the rights to an intellectual property resulting from the relationship.

A good employee/contractor agreement should protect both you and the employee/contractor, setting forth the rights and responsibilities of each party.

3. Invention Assignment

Invention assignments are agreements that assign the right, title, and interest to inventions or other creative works to your company.  Invention assignments are especially important for employees or contractors that are using your company information to further the business of your company.  It applies to more than just inventions – think: hiring a vendor to create a website, having your employee assemble a list of prospective clients, or an employee developing a marketing strategy that your company decides to implement.

If you are working solo, but have formed a company (LLC, S-Corp, etc.), you should consider assigning your rights to the inventions to the company.   Failing to assign your rights to the company is not fatal and can be done at any time, but if an investor is looking at putting money in your company, she is going to want to know that you are not withholding assets from the company (I’ve seen on more than one occasion a serious investor back out of a financing deal because the inventor failed to and in the end was reluctant to assign his interest in the inventions to the company).


With careful planning these agreements can help protect your investments in your company, ingenuity, and your company’s assets.  Although in some instances you may be able to safely use a previously prepared document for a new relationship, it is best not to try to fit a round peg in a square hole – there may be aspects of the agreement that should be reconsidered, revised, or expounded upon in order to properly address the issues that the new relationship presents (e.g., your standard employment agreement may not be sufficient if you’re hiring a CFO) – thus, your attorney should be consulted when a new situation arises.


*This concept is called Divulgation, which is the non-confidential disclosure (written or oral) of the inventive aspects of the invention.