During the last few years, there has been an increase in patent applications at the U.S. Patent and Trademark Office for patents related to algae-based fuels.  Recent patent applications cover a range of technologies, including photobioreactor systems, harvesting systems, refining processes, and methods for producing ethanol from algae.  A U.S. patent gives the patent owner the right to exclude others from making, using, selling, or importing products in the United States that would infringe the patent for a set term.  For patent applications filed today, the term begins on issuance of the patent and ends 20 years from the date the patent application was first filed.  The patent owner’s right to exclude others from using the invention applies even if a second comer independently developed the same invention.  In other words, ignorance of the patent is no defense.  To be patentable, an invention must be new, useful, and nonobvious in view of the prior art.  It may be a machine, an article of manufacture, a process, or a composition of matter.  Mathematical formulas and laws of nature, such as photosynthesis, are not patentable. 

Patent applications are made in writing and in the name of the inventors, signed by the inventors, and filed with the U.S. Patent and Trademark Office.  (The owner’s rights under a U.S. patent apply only in the United States, but similar patent protection can be obtained in all industrialized nations if their filing and timing requirements are met.)  The application must include a specification that describes how the invention is made and used, and the best mode of realizing the invention.  The application must also include claims, which describe in particular terms the unique aspects of the invention for which legal protection is sought.  The claims and specification are generally published 18 months after the first filing date.  (However, in the United States, an applicant can avoid publication if it agrees not to file the application anywhere outside the United States and requests “nonpublication” when the application is filed.)  Even if “nonpublication” is requested, the specification, including the final claims, will be published in the issued patent.  It usually takes approximately 18 to 36 months, or longer, from filing the patent application to issuance of the patent.  Patent law is technical, and to maximize the scope and the value of a patent, patent counsel should normally be retained for advice regarding patent strategy and to write and prosecute patent applications.

A patent owner can sue a patent infringer for damages, and in some circumstances a prevailing owner can also obtain a court order that will prevent the infringer from any further use of the invention.  The patent owner can therefore prevent competitors from using the patented invention, or the patent owner may decide to license the patent to others in exchange for royalty payments. 

Patent protection is potentially very powerful, but protection can be lost if the filing and timing requirements are not met.  Inventors and companies involved in developing technology for production of algae fuels must be aware of these requirements.  They should consult with patent counsel early on—especially before any public use or disclosure of the invention.  Compliance procedures should be implemented at the start of any technology development project. 

One-Year Bar

One of the more problematic requirements in patent law is the so-called “one-year bar.”  If the invention is described in a printed publication anywhere in the world, or if it is put on sale or used publicly (nonexperimental, or not subject to a nondisclosure agreement) in the United States more than one year before the U.S. patent application is filed, all patent rights are lost.  Any publication, such as in an academic journal, Web site, or trade magazine, starts the one-year grace period.  So does demonstrating or using the invention at a trade show, or selling the invention or offering it for sale.  Once any of these events take place, the one-year clock is ticking and patent counsel should be immediately consulted about starting the application process.

The timing requirements are even stricter if foreign patent protection is to be obtained.  In most foreign countries, any publication or public disclosure of the invention anywhere in the world, before filing of the patent application, will cause loss of patent rights in that country.  So if foreign patent protection is required, strict nondisclosure and nonpublic use procedures must be followed until the U.S. patent application is filed.  In most industrialized countries, counterpart patent applications can claim the benefit of an earlier filing date of a U.S. patent application as the effective filing date for the foreign application, provided the foreign application is filed within one year of the U.S. filing date. 

In most of the world, priority between multiple independent inventors of the same invention is based on the filing dates of their respective patent applications.  The first to file wins.  The U.S. patent system, however, uses a “first-to-invent” system rather than a “first-to-file” system.  In the United States, subject to certain timing requirements, the inventor who first conceived of the invention and reduced the invention to practice with reasonable diligence has priority, even if someone else filed a patent application first.

Record Keeping 

In order to have evidence to back up a claim of having invented something at an earlier date, inventors must keep good records.  The uncorroborated testimony of the inventor may not be enough to establish priority of invention, particularly if the inventor has a pecuniary interest in the outcome.  Written records, such as an engineer’s lab notebook, should be kept and should show all activities related to the invention.  Entries should be periodically signed and dated by a witness (e.g., weekly or monthly).  Ideally, the witness should have some knowledge of the subject matter, and may be an employee of the same company.

Ownership of the Patent 

Companies with employees researching or developing new technologies or products should take steps to ensure the company’s ownership of patentable inventions made by the employees.  Under U.S. law in most states, the employer owns the rights to inventions that are made by employees within the scope of their employment.  When the employee owns the invention, in some cases the employer may have a nonexclusive “shop right” to use the invention, without compensation to the employee.  This can occur when the invention was developed on the employer’s time or using the employer’s materials, facilities, or equipment, even though it was outside the employee’s regular duties.  That is not usually a satisfactory outcome, since the company will not have full ownership of the invention. 

To avoid uncertainty, a better solution is to address this issue with an invention agreement.  The employer should require all new employees, as a condition to being hired, to sign an agreement assigning to the employer all inventions made by the employee during the course of employment.  This type of agreement is extremely common in all industries that rely on technology development. 

Some states have laws limiting the allowed scope of such agreements and requiring special notices to the employees, so state law should be checked.  The invention agreement should also cover the employee’s confidentiality obligations and protection of the employer’s trade secrets.  In addition, a similar type of agreement should be used for all independent contractors doing technology development work, to ensure that the company paying for the contractor’s work will own the patent for any invention developed by the contractor. 

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