Innovative manufacturers: To patent or not to patent?

Inventive metal fabricators have a lot of intellectual property guidelines to consider if they want to file a patent on a product. Getty Images

Your business fabricates metal products. One product is created by forming metal sheets into hinge structures that are ultimately installed on a composite door. Unfortunately, the metal screws you’ve been using to secure the hinges to the door edge have been failing. They don’t hold well in the composite material. You’ve considered using adhesives instead of fasteners, but you know that the metal used for the hinges is not readily bondable.

Your employee, Jones, has come up with a solution. He starts with a rectangular blank and drills four holes on one side, then punches four reciprocating divots on the other side. He then folds the sheet over a mandrel and presses the excess portions together such that the drilled holes become a stem, and the divots become the heads of four mushroom-shaped voids.

Jones has been working with an outside company, Autoclavical, which has been placing the hinge on a layup tool, arranging a number of composite sheets above the hinge, and saturating the sheets with resin. During saturation, the resin flows into the mushroom-shaped voids. It’s then cured to harden the resin in both the sheets as well as the mushroom-shaped voids, resulting in the final product, which Autoclavical returns to you to sell.

You think the solution is innovative and that competitors might want to copy it. And the general idea might have value for people in completely different fields of industry where metals are fastened to composites. Can you patent it?

Patentable Things

Raw metals are not patentable. But once the “hand of man” gets involved in refining, shaping, cutting, bending, punching, or otherwise working with the raw material, a patent becomes a possibility. Devices, systems, methods, processes, and even compositions are all patentable, assuming they are novel and not obvious.

Many things in the Jones invention have the potential to be patented. In terms of scope, the broad concept of creating voids in adhesive-resistant materials to create a cured fastener might be available. But you will want to know more before you file.

Statutory Bars

Before filing a patent, know that all rights can be lost (or “barred”) by statute due to public disclosures, sales, or offers for sale. Such activities occurring more than one year before filing a patent application will preclude patentability. Patenting also will be barred if another person has invented the same thing independently but filed for a patent before you. And in most countries, you lose patent rights immediately upon any public disclosure.

So before filing, investigate whether Jones or others have made disclosures or proposed sales. You should also contact patent counsel before marketing or publicly disclosing the invention. And if Jones informs you that he intends to present the hinge arrangement at a tradeshow in two weeks, you should immediately contact counsel and submit a patent application in advance to avoid losing rights.

Looking forward, you can avoid statutory-bar problems by filing for a patent before making disclosures. Ideally, you should file once a potentially valuable concept arises, before your own public activities prevent you from getting a patent. It also will give you an advantage over a competitor that has independently invented the same concept but is not as prompt in getting an application on file.

Do You Own It?

The metal fabrication supply chain is a collaborative one. It’s not unusual for custom fabricators to get involved early in their customers’ product design process, hammering out the details of manufacturability. But what if a fabrication supplier gets involved in a customer’s product design, and then the customer applies for a patent? Who owns the patent? This depends on who contributed what.

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An inventor is a person who contributes something novel to what is claimed in a patent. The contribution must be substantive. For example, just because Jones has team members or supervisors helping with the project does not make them inventors unless they contributed intellectually to something that is claimed as inventive in the patent.

But if anyone adds even a little thing that gets claimed, that person is an inventor. And this can become a big deal if the person is an outsider—someone not in your company. That is because, absent agreement to the contrary, each inventor owns the patent jointly. This means that an accidentally omitted inventor from an outside company (like Autoclavical in the earlier example) will have a claim to equal rights in your patent. In fact, as a joint owner the omitted person can freely license the invention to anyone, including your direct competitors.

Before the patent is filed, carefully consider the role of outside companies during the development phase and be proactive in cleaning up inventorship and ownership problems in advance. For example, if Autoclavical contributed specific things related to the layup process (like what kind of resin to use, temperatures, or pressures), make sure they are not claimed in the patent so that employees at Autoclavical cannot claim to be joint owners or inventors.

If Autoclavical employees contributed something novel that you do want to claim, then negotiate a deal before filing so that ownership is clear. Getting the ownership issues worked out before patenting can prevent future problems such as lawsuits and costly procedures in the U.S. Patent and Trademark Office.

A lot of pitfalls can be avoided by filing for a patent as soon as possible, which again is why you should file once a potentially valuable concept arises. Filing before involving outsiders prevents any commingling of concepts, and this can avoid confusion regarding inventorship. In terms of timing, you can file before the product is fully developed, assuming that you have a reasonably permanent idea of the invention and can show how it will work.

Research

Also before filing a patent, you will normally want to perform some sort of patentability research. You can do this research, but most usually have outside patent counsel conduct it. The cost of the search is low, and the information you receive can be extremely beneficial.

The research should give you a decent estimation of what patent coverage might be available. For instance, assume that your counsel conducts a search on the hinge concept and uncovers a similar, previously published concept. Like your hinge concept, this previous concept also creates voids for the purpose of receiving resin from a composite layup. The resin is cured to fasten the composite layers to the part. But this previous concept is different in that the article is made of plastic and the voids are created using 3D printing.

The search reveals that the broad concept of forming voids in a structure to make it more bondable to composites is not patentable, because it has already been shown. But you also know that certain processes used to create the voids into the hinge, the hinge configuration itself, and many other aspects are not shown and so may very well be novel and potentially patentable.

Before deciding whether to invest in a patent, you should know that what you’re attempting to patent has a good chance for patent coverage. And if you do decide to file, information from the research will help the patent attorney craft a better patent.

Keep It a Trade Secret?

You can patent something or you can keep it a trade secret—but you cannot do both. Patents protect your invention, but if granted they are also published and public.

Consider whether the invention would be better kept as a trade secret, created and maintained with nondisclosure or confidentiality agreements. Having these drafted doesn’t cost much, and they can be enforced against those who use your secret information in a way that violates the agreement. Also, a trade secret, so long as it remains secret, will outlast the 20-year term of a patent.

This might be the best option if the inventor or company can maintain secrecy of the invention while still using it for economic advantage. Looking at the hinge idea, for example, the layup process might be kept a secret if you ensure that any person exposed to the concept is informed and obligated to secrecy. But for things that can be easily reverse-engineered, like the forming of the hinge before fastening or the ultimate door-hinge product, patent protection would be preferable since trade secret protection is nearly impossible.

Also know that relying on trade secrets can be burdensome both practically and legally. For example, you might need to limit access to only a few individuals, requiring cordoning off areas of your business. And you might find it difficult to prove violation of the agreement by the misappropriating parties.

Patents don’t require such a chain of evidence. With patents you evaluate the allegedly infringing product against the patent, then make a determination. Evidence is often publicly available, so finding sufficient proof of infringement is easier than doing the same for a typical trade-secret violation.

The Business Purpose of Patents

Carefully consider whether the potential scope of protection available will enable you to enforce the patent against competitors. If the protection is extensive enough, a company might be able to dominate the market with respect to a particular product. If competitors use conventional alternatives to your invention that are just as effective, you might not want to file.

Filing just a single patent in the U.S. can cost between $4,000 and $20,000, depending on the complexity, and there can be significant prosecution costs after that. Because of this, you should have a clearly focused business objective for patents you pursue. These might include enforcing the patent against competitors, licensing to generate cash flow, cross-licensing, merely holding the patent to chill the marketplace, or preventing a competitor from patenting the same concept that could leave you liable for infringement. This last objective in effect provides an operating niche for your product or process, since the Patent Office does not grant two patents for the same concept.

With this exclusive operating niche comes inherent power. It makes your company unique in a specific way for a period of time. Will this lead to a significant competitive advantage that outweighs the cost of pursuing the patent? Simply asking the question will give your company a head start.

Marshall Honeyman is a partner at Erise IP, PA, eriseip.com. Honeyman will be presenting on patents at FABTECH, held Nov. 11-14 in Chicago. For more information, visit fabtechexpo.com. The author would like to thank Phillip Kendrick, intellectual property and litigation specialist at Textron Aviation, and Mike Benoit, Erise IP, PA, for providing technical and other assistance. Concepts in this article were derived from U.S. Patent Application Publication No. 2018/0072003 made by Kendrick et al. on March 15, 2018.