Pub 9 2021 Issue 1

Protecting Innovation Through Patents D uring World War I, Lieutenant Ernest Tribe of the British Royal Engineers noticed that conventional pipe joints tended to fail at critical times, putting his soldiers in danger. To solve these problems, he devised the grooved pipe coupling. When he returned home in 1919, he filed, in the United States, Great Britain, Canada, and other countries, a patent for a “Pipe Joint,” or an early version of the Victaulic coupling, which is the foundation upon which Victaulic was founded. Over the last 100 years, Victaulic has continued to innovate. Indeed, the United States Patent and Trademark Office has issued over 300 patents to Victaulic and its successor companies. Today, many industries around the word use both Victaulic’s initial and new coupling designs, including underground mines, surface mines, shaft sinking operations, heavy civil construction, fire suppressant systems, skyscrapers, schools, and many others. Based at least in part on its patent strategy, Victaulic is a recognized leader in the pipe connection industry. Understanding patents is critical to understanding the success of innovative companies like Victaulic. Business owners, especially in technologically-intensive fields, should understand what can be patented what should be patented. What can be patented? A patent provides the owner with the legal right to exclude others from selling the invention in the nation filed. Poor patent coverage can result in a competitor encroaching on the intended market of the patent. However, before filing a patent, an inventor should know what inventions qualify for patent protection. The United States Patent Act states that a patent may be granted for “any new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. This description includes any tangible product, methods to make a product or perform a function, some computer algorithms, and other inventions. A patent application is examined and enforced based on descriptive claims, which describe the metes and bounds of the invention, similar to a mining claim that prevents others from mining inside the staked area. However, much like a bad survey can lead to a mining claim that misses a large portion of an ore deposit, patent claims should be carefully drafted to ensure that the patent covers the entirety of the invention. During patent examination, the claims must describe the invention in a way that it is both novel and non-obvious. A novel invention has never been disclosed in its exact form before. For example, a patent filed for a “Pipe Coupling” that only includes the features of Victaulic’s “Pipe Joint” is not novel based on the “Pipe Joint” patent. Furthermore, any obvious variations on an invention are not patentable. Obvious variations often include combining two known elements into a single product, substituting one known part for another, and finding optimum operating parameters. What should be patented? Individuals and business owners file patents for many different reasons. Some file patents with an eye toward enforcement through litigation. Others file patents to show investors how innovative their company is. And some simply file patents for the satisfaction and recognition that they were the first to think of an idea. In the end, filing a patent is a business decision, based on the goals, needs, and market of the business. A clear patent strategy will help companies to decide which discoveries they should protect. Two patent strategies are revenue- and investment-focused patent strategies. A revenue-focused patent strategy directs a company to file patents based on the anticipated revenues of the invention relative to the By Thomas L. Lingard, Ray Quinney & Nebeker MINING 24