Editor’s Note: This article discusses the patent process in the United States. Although the patent process is similar in Canada, it requires a broad knowledge of patent law and Patent Office practice. The Canadian Intellectual Property Office (CIPO) highly recommends working through a registered patent agent. Visit CIPO for further details about the patent process and registered agents in Canada.
By Bridget McCrea
For Rotondo Precast (a division of Oldcastle), patenting products is almost a way of life. Whenever it lands on a “novel” product that no one else in the market has discovered yet, the Rehoboth, Mass.-based precaster immediately puts the patent gears in motion, drawing up paperwork and consulting with its in-house intellectual property expert on how to properly present the idea to the U.S. Patent and Trademark Office (USPTO).
Since the 1970s, Rotondo Precast and a few other Oldcastle plants have obtained patents for various products, some of them long since expired and others still active. For several years in the 1980s and 1990s, however, the company took a break from patenting, says Harold Messenger, Rotondo’s vice president of product development.
In 1998, the precaster returned to the process to protect its new ideas, obtaining a patent for its innovative carbon caste wall panel. According to Messenger, the concrete wall panel is reinforced with carbon fiber instead of steel. “It was the first time anyone had produced a reinforced concrete product without steel reinforcement,” he explains. “The product allows for a very thin, high-strength panel that’s seven times stronger than steel.”
To make sure its competitors couldn’t copy the unique product, Rotondo documented and market-tested its creation (to make sure there was a market for it) and then researched to make sure no one else had a similar product. The firm spent about $15,000 on the process, which required about a month’s worth of work and two years to complete (during which time the carbon caste was awarded “patent pending” status by the USPTO).
Since then, Rotondo Precast has obtained additional patents, including new patents on the original carbon caste wall, since improvements were made to the product after it was originally developed. Having gone through the process several times, Messenger says the most difficult aspect is “determining what is novel” and what truly deserves the time, money and attention that the patent process requires.
“If you’re going to spend a bunch of dough to patent something, you want to make sure it’s a wise investment,” says Messenger. Key questions to ask include: Is this product unique in the market? Does it present a new solution to a customer problem? Once I have a patent, will anyone want this product? Does anyone care enough to steal it?
In return for its patent investments, Messenger says Rotondo Precast has not only gained competitive advantages in the marketplace, but it was also able to form a consortium of five large U.S. precast firms that were interested in the company’s carbon caste wall product. “Since we held the patent,” he says, “they realized that they wouldn’t otherwise be able to use our unique product and process.”
The nuts and bolts
Protecting intellectual property is a hot topic among firms in today’s competitive market, where everyone is striving to create products that help their customers work better, smarter and faster. For some, patents – which protect inventions, and improvements to existing inventions – provide a viable way to do just that. Issued by the USPTO, patents grant property rights to an inventor, who for the next 20 years (from the date on which the application was filed in the United States) can keep those competitors at bay.
Patents give their holders the right to exclude others from making, using, offering for sale or selling the invention in the United States, or from “importing” the invention into the United States. According to the USPTO, patents don’t protect the right to make, use, offer for sale, sell or import, but they do exclude others from making, using, offering for sale, selling or importing the invention.
John Murnane, a partner with New York law firm Fitzpatrick, Cella, Harper & Scinto, says patents are a good choice for precasters who have been in business for a while and who come up with “a better way of doing something.” The company that changes the composition of its concrete mixture and finds out that the resultant product is stronger and less expensive to produce, for example, would likely want to patent that process.
“Precasters looking to patent would want to keep an eye out for new materials and/or less expensive materials than those currently being offered in the market,” Murnane suggests. “They may also want to consider patenting processes that eliminate costly or time-consuming steps or other ideas that help their customers achieve better, more efficient results.”
Once such products are identified, inventors may apply for one of two types of patent applications: a non-provisional application, which begins the examination process and may lead to a patent; or a provisional application, which establishes a filing date but does not begin the examination process.
There are different types of patents, but generally a precaster would be most interested in a “utility patent,” which is granted to those who invent or discover any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. The other type is the design patent, which is granted to those who invent a new, original and ornamental design for an article of manufacture.
Precasters considering patents should prepare themselves for a lengthy process. The USPTO says that right now, the average patent application pendency is 24.6 months. Applications received in the USPTO are numbered in sequential order, and applicants are informed within eight weeks of the application number and official filing date if filed in paper.
“In the six years that I’ve been handling patents,” says Patrick Ertel, senior partner with intellectual property law firm Marshall, Gerstein & Borun LLP in Chicago, “the timeframe continues to grow. There always seems to be a core of patent examiners that’s lagging behind in terms of numbers and is never quite adequate to cut that processing time down.”
Once granted, both utility and design patents are valid for a term that begins with the date of the grant and usually ends 20 years from the date that the inventor first applied for the patent. Design patents last 14 years from the date that the patent is granted.
David Schnapf, a partner with law firm Sheppard, Mullin, Richter & Hampton LLP in San Francisco, says inventors can pay anywhere from $3,000 to $15,000 to obtain a product patent. In return, he says companies gain exclusive rights to sell that invention to the rest of the world, or – as in Rotondo Precast’s case – even share it with competitors in return for licensing fees and/or royalty payments.
Once in place, patents must also be “enforced,” or protected, by the inventors who hold them. It’s not always an easy task, says Schnapf, and the process can get costly, particularly if the legal battle over the patent extends for a period of time. It’s something to think about when applying for patents, he says, since some products are more easily enforceable than others.
“If you’ve patented a method of making a product, but if it’s not possible to look at your competitor’s end product and figure out whether your patented method was used or not,” says Schnapf, “then enforcement is going to be difficult.”
Putting it into action
Smith-Midland Corp. of Midland, Va., started patenting its products back in the 1970s and today holds a total of 12 U.S. and Canadian patents on its innovative products, including Easi-Set transportable precast concrete buildings and Slenderwall architectural precast concrete/steel stud building panels.
Moffette Tharpe, managing director at Easi-Set (which licenses the patented products), says the early research and legwork can make the patenting process run much more smoothly and can even shave months off the time it takes to actually get the patent.
“The amount of time it takes is related to how well you prepare the patent documentation – and how clear and crisp that information is,” says Tharpe. “If there are gray areas that need to be cleared up (such as revising your product claims or deleting some of those claims), it adds time to the process.”
Tharpe also suggests using an experienced patent attorney (advice that the USPTO also gives to inventors), who can help not only with the patent process but can also help enforce the patent once it’s in place. In all, he says most of Smith-Midland’s patents have cost less than $10,000 each, including that legal advice. In return for its investment, Ashley Smith, the firm’s vice president of sales and marketing, says the company has gained several benefits.
“Having a patented product establishes a certain level of quality and performance that other firms would have to prove that they could match,” says Smith. “It also positions us as a sole source in certain situations. When a customer says, ‘I want this patented product,’ and you have it, it keeps competitors from being able to bid against you.”
To precasters interested in patenting their own products but unsure of how to go about it, Messenger provides this advice: “Just think outside of the box,” he says. “Be creative with what you are doing, and focus on developing better methods and improved ways of doing things.”