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Chapter 16:

Patents – History, Use and Utility


This date is the priority date for the invention. For this date to hold up, due diligence has to be proven in reducing the invention to practice. There are, however, at this time discussions at the patent department, whether to make the date of filing the priority date. This is the practice in most other countries and would do away with much litigation, to who invented it first. Novelty and non-obviousness “to someone skilled in the art� can be points of controversy. But before getting to this I would like to discuss the mechanism of applying for a patent. A patent can be written by the inventor himself or the application can be prepared by a patent agent or patent lawyer. Before starting on such a pursuit the inventor should go through several mental steps. The first is to try and assess the economic value of the patent: whether the time and expense of applying for a patent is warranted. Secondly, the novelty has to be determined by an extensive review of data bases. Usually there are three literature searches performed, one by the inventor himself, the second by the patent attorney, and the third by the patent examiner at the U.S. Patent and Trademark (USPTO) office in Alexandria, VA. Even though you, as the inventor, think you know the field well, a special search should be made, before proceeding to write up an application. Patent abstracts are in computer databases. The U.S. Patent Office as well as IBM data bases provide the last twenty-five years of patents in full text for downloading and there is a Canadian data base providing the Canadian patents for the last eighty years. Paper copies of U.S. patents can be obtained from the USPTO office for a small fee. Also there are patent agents who, for a fee, will carry out the search for you. While this is costly it often is worth it. Beyond the patent data bases the general literature has to be searched, as most disclosures of knowledge were never patented. Even literature which is very close to the invention, but not identical, may make it obvious in the eyes of the patent examiner.