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Tips for obtaining strong patent protection in textiles.
Imagine a scenario where a research scientist developed a new woven fabric that could potentially have a significant impact as an implantable medical device to replace damaged tissues. Excited with the potential of discovering a breakthrough technology, this scientist now grows concerned about next steps. How does she protect her intellectual property (IP) rights as an inventor? How does she maximize these rights to protect against potential competitors? And most importantly, how can she capitalize on her invention commercially?
These important questions should be at the forefront of any scientist’s mind as he or she embarks on the path of patent protection and commercialization. And these questions take on particular significance in the textile industry—a fast growing market currently overflowing with new ideas and innovation. With such growth comes the need to develop new products and create more efficient manufacturing processes. Just a few examples of these relatively recent advancements in the textile industry include developing fibers based on vegetables, creating fabrics for the military with innovative fiber optics, and designing fashion wearables incorporating computer or electronic technology.
Given the increasing number of textile innovations, having a firm understanding of how to both obtain and enforce intellectual property is critical. Here are some tips intended to steer you in the right direction on your journey to commercialization.
How to protect your invention
There are a number of ways to protect a new product; however, patent applications are the primary vehicle to obtain IP protection of your invention. In the United States, patent applications are filed with the U.S. Patent & Trademark Office (USPTO), which is tasked with examining patent applications and ensuring that each application meets the necessary legal requirements, i.e. that the invention is useful, new, and not an obvious variation of an existing technology. Current statistics show that the USPTO generally takes a little under three years to issue a patent in inventions related to the textile industry, although expedited procedures are available for an additional fee.
Before filing a patent application, however, an inventor must first consider whether patent protection makes the most sense for the particular invention. For example, suppose the research scientist in our scenario obtained a number of different patents covering her new woven fabric in the U.S. She decided, however, not to obtain a patent directed to the unique manufacturing process, which requires a very specific catalyst to make the fabric. Over twenty years later, after the patents have long expired, there is still no viable competitor on the market. Why? The answer is no competitor was able to figure out how to make the fabric because our scientist decided to keep the process—and specifically, the catalyst—a trade secret.
As this hypothetical shows, a well-kept trade secret can offer far more protection than a patent. That protection, however, is not without risk as a savvy competitor could potentially reverse engineer and copy the trade secret. The scientist would then be left with no legal recourse. Whether or not to assume that risk depends on a number of factors: the ease of reverse engineering, the accessibility of the trade secret (is it part of the manufacturing process or apparent from the product itself), the likelihood of obtaining a patent, and the usefulness of the product after the patent has expired. The inquiry is highly fact-specific and one best addressed with an attorney.
When to file
Another important consideration is when to file for a patent. Should our inventor wait until she has determined whether her invention has commercial value. Or should our inventor take a calculated gamble and devote resources early to develop a patent portfolio to ensure her rights are protected?
In our first option, according to the new rules associated with the U.S. “first-inventor-to-file” patent system, with limited exceptions, a patent is awarded to the first inventor to file for a patent. Moreover, an inadvertent public disclosure or an offer to sell the product incorporating the invention may cause the loss of patent rights.
For example, if our inventor describes the inventive woven fabric in a well-known textile publication well before filing for a patent application, this disclosure could result in a loss of patent rights. Therefore, companies seeking patent protection for new products have even more reason to preserve their patent rights before public disclosure or offering a product incorporating the invention for sale.
On the other hand, the second option is equally problematic. Unless our inventor has a substantial IP budget, the second option may not be feasible. For inventors seeking to protect multiple inventive aspects of their products, such as functionality, design or trademark rights, USPTO and attorneys’ fees may be cost-prohibitive, especially for small companies and independent inventors. And, if the newly patented product ultimately fails in the marketplace, these significant expenditures would have been a waste. Consequently, whether to file and when to file requires careful consideration to ensure inventor rights are not lost and unnecessary monetary investments are avoided.
Maximizing IP rights
After deciding to file for a patent, an inventor should next consider how she should maximize her rights to ensure full protection. This step requires an inventor to think strategically and thoughtfully about the invention, as well as commercial objectives.
As a starting point, it is important for the inventor to consider the invention from different viewpoints: the inventor’s, the consumer’s and the competitor’s. For example, from the inventor’s viewpoint, it is important to get an understanding of how to best describe the various embodiments that make up the invention—the magic that makes the invention work. In doing so, the inventor should identify the embodiments that are the best contenders for potential commercialization and assess whether other embodiments might make good candidates for commercialization in the future.
From the consumer’s standpoint, an inventor should also consider which aspects of the invention are likely to have high customer demand; these features are likely the ones competitors will want to include in their products.
From the competitor’s standpoint, consideration of your competitors’ intellectual property is also necessary, and inventors should fully identify and describe alternative embodiments that competitors might implement to achieve the same goals and results as the invention. This strategy ensures a competitor cannot easily manage a “design-around” of your invention.
Applying these factors to our scenario, our inventor should consider all potential end products that could ultimately incorporate the inventive woven fabric, in addition to an implantable device. For example, could the inventive woven fabric be used in other applications where its end properties are useful? Could a competitor make a similar fabric, but using a different method, that would produce a fabric that would be just as effective? These considerations are critical in the patent claim drafting process.
An external perspective is also important. If, and to what extent, the technology has importance and value in the textile marketplace is a critical consideration. If the marketplace considers our inventor’s new woven fabric a significant technological advancement, the invention may hold potential value for licensing or sale to other companies. Or alternatively, it could generate interest for investors to finance the research and development to support commercialization. Consideration of market trends to assess market potential is a necessary step in ensuring you’re obtaining protection that is meaningful and desired in the textile industry.
The state of the art
Taking these different viewpoints into account, our inventor will have a good start for ensuring that her patent estate is strong. There is, however, more to consider. The inventor, along with an attorney, must have a keen understanding of both the prior art and current state of the art when drafting a patent application. In other words, the inventor must be familiar with all the relevant technology that came before her discovery, as well as the technology that is currently being developed by others in the textile industry.
Armed with this information, an attorney can ensure that claims (the part of the patent that describes the boundaries of the invention) are drafted to cover:
1. The core invention
2. Any variations or embodiments of the core invention
3. All potential activities of competitors (including inferior textile products) that would allow a competitor to design around the core invention and/or enter the marketplace as a competing product.
Taking these considerations into account can help ensure a strong textile patent portfolio that provides both commercial and legal value.
Scrutinize the IP rights of others
Turning back to our scenario, after careful consideration our inventor has decided to file a patent application with the USPTO. To her surprise, just before filing she learns that a close competitor has filed a patent application covering a similar woven fabric. Does she move ahead with filing a patent application or does she continue to refine her invention to distinguish it from this competitor?
This hypothetical clearly conveys the importance of our last point—keep a constant watch on the competition. As a best practice, prior to even beginning your own research and development make sure to identify any possible freedom-to-operate issues by searching for patents and patent applications.
Such a search can be done on a number of different free websites, such as the USPTO website or Google patents. If you identify a patent covering similar or identical technology early in the research and development timeline, an inventor can modify the development of his or her product or method before significant research work has begun. Keeping a close eye on the competition can avoid any unfortunate surprises.
Developing a strong textile patent portfolio is critical to achieving the full value for your intellectual property. Following these tips can help maximize your U.S. patent rights and hopefully allow you to realize the full commercial potential of your invention.
Mark Sweet is a partner in the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP and a registered patent attorney whose practice focuses on U.S. Patent Office proceedings. He is a former Primary Examiner at the USPTO with a background in polymer chemistry.
Mareesa Frederick is of counsel in the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP and a registered patent attorney whose practice focuses on intellectual property litigation and counseling. She is a former engineer with a background in polymer processing.