CenterPoint Community Blog

             I received a telephone call from a potential client, a start-up business.  The owner said that he had a new and original process for making a food product.  He wanted to patent that immediately.  He had spoken with a patent lawyer and was concerned about the cost of preparing the patent application.  He wanted a second estimate and was referred to me.

A client had a great idea for an internet-based service.  He was working with an investment group to fund it.  They told him that he should patent his idea in order to protect it from infringement. He asked me about this, and my comment was:  “Do you really want to try that?”  And after I explained the strategic issues to him he readily agreed that pursuing the patent route was not prudent in his case.  Here’s why:

The latest cottage industry for plaintiffs’ lawyers is false patent marking lawsuits.  Here’s a primer. 

In order to qualify for patent protection, an invention must be useful, novel, and non-obvious over the prior art. These scientific criteria transcend national boundaries and are measured by the totality of the scientific knowledge base. Thus, for example, once a specific type of packaging enters the global knowledge base – either through use or through the filing of a patent application – it becomes “prior art” to all future “inventions.” Therefore, in this case, the fact that the packaging was already in the market made it part of the prior art and foreclosed patentability even though it may have been unknown in the USA. (Assuming, or course, that the container itself would have met these criteria.)