TECHNOLOGY By Paul Craane
CONTRIBUTION
Navigating the Intellectual Property Maze Finding the shortest distance between product and protection may take forms other than patents, and may more closely align with a company’s goals and the realities of the marketplace.
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n transforming biomass to power, biofuels or other chemicals, equipment is used to carry out a process to provide a product. Innovation as to the equipment, the process or the product may cause a company to seek patent protection. Depending on the nature of the product and the company’s business plan, patent protection may not be the only choice, or the best choice. In certain settings, a company may be able to choose the most advantageous form of protec-
tion, and trade secret protection may be the better choice when compared with seeking patent protection. However, in certain other settings, even though trade secret protection may be possible as to the equipment or the process, the decision to pursue patent protection on the product may determine if trade secret protection is really an option. To begin, patent rights may be used to secure new and non-obvious processes, machines, manufactures and com-
The claims and statements made in this article belong exclusively to the author(s) and do not necessarily reflect the views of Biomass Magazine or its advertisers. All questions pertaining to this article should be directed to the author(s).
50 BIOMASS MAGAZINE 10|2009
of $10,000, and the positions of matter. In the first instance, time from the filing of the application to the federal governthe issuance of the ment (in the form patent can be on the of the U.S. Patent order of two to four and Trademark Office) must decide years. Additionally, as a quid pro quo for whether an innovapatent protection, tion is sufficiently Paul Craane partner, the patentee must novel and nonobvi- Marshall, Gerstein disclose to the public ous to merit protec- & Borun LLP tion. In the second his or her best mode instance, the federal of making and using courts will review the determi- the innovation. Patent rights nation of the Patent Office if are generally limited to 20 years the patent must be enforced to from the filing date of the apprevent infringement of those plication for protection on the rights. innovation. Once the 20-year The costs of obtaining a term has run, the innovation patent can easily run upwards will be available to the public.