Forums: Discussions for entrepreneurs and small business.

I would like to correct something I heard from somebody (I don`t recall who) on the radio show recently.  Patents (and printed patent applications) are prior art against newly filed application for all they disclose, not just what they claim.  In other words, subject matter that is disclosed and not claimed is dedicated to the public and can`t be owned exclusively by somebody else [since it is not new information any more].  Everyone can use the unclaimed subject matter freely [unless the patentee has the patent modified via reissue] and nobody can patent the disclosed unclaimed subject matter.  The patent disclosure will contain information that can’t be patented [because it is not new] and information that won’t be patented [because the applicant simply does not claim it as the invention].

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

james,

this is incredibly helpful information and thanks for the correction. as you say it, it`s an obvious one that we should have shared - it`s critical that we provide accurate information, but the area of patents is particularly important given how much is riding on the protection a patent provides and how much value it can create when pursued effectively.

patent claims (vs. other things disclosed) are extremely important for the applicant, as they`re often what`s used to prevent others from making, selling, or using the same invention, right?

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Rich Sloan , Co-Founder, Chief Startupologist, StartupNation

The claims define the rights in the disclosure.  The disclosure is a mixture of old stuff and [hopefully[ some new stuff.  The applicant can only claim and own the new stuff, though he may need to show the old stuff too in order to demonstrate how to make and use the invention.  It`s a subtle point but an important one.  Here is an analogy that might help:  the disclosure is kind of like a mailing address and a photo of a house, whereas the claims are kind of like the official legal description of the actual property boundries filed at the recorder`s office.  They are both helpful to understand the real estate, but if you are having a boundry dispute with your next door neighbor or deciding where to build a fence, you probably need the actual property boundries filed at the recorder`s office and not just the mailing address and a photo of the house.  The photo of the house "shows" the boundry line, but does not really point it out.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com