BEYOND THE HORIZON

Sandeep Khurana
Paragon Engineering Services, Inc.

As deepwater fields are being developed, inventors use past experiences to invent newer aspects or variations in the existing concepts to reduce the cost of deepwater field development. Patenting is one of the ways for an inventor to protect an invention and obtain returns. We come across a plethora of deepwater products in the market today that have labels on them showing "US Patent No." or "US Patent Pending."

The word "patented" generates a lot of questions. What does a patent entail? What are its benefits? What about deepwater US patented technology used in Brazil and other countries? And for those interested in applying for one, what is patentable? And of course, there are a lot of misconceptions related to it. People think that if you get a patent on an invention, you have a right to use it. Well, not necessarily. Patents prevent someone else from putting into practice what you have patented.

A US patent is a legal right that permits the patent owner to prevent someone else making, using, selling, or offering to sell the patented invention in the US. A patent is an offensive tool, and assists an inventor to stop infringers or obtain damages from them.

On the other hand, one must be aware of the fact that patenting does not automatically give the patent owner a right to practice his own invention. It is critical to understand that a patent may actually infringe upon someone else's previously issued patent. This could be merely because the inventor was unaware of the existence of the other patent.

This leads us to the other question - why patent? There are a number of reasons. The most basic is to protect your invention. Another possible use is to have a portfolio of patents that can be used for a cross-licensing arrangement between your company and another company. A secondary aim is to prevent another business in your industry patenting a concept and preventing you from using the concept for future development of your product.

For a patent application filed after June 8, 1995, the term of the patent is 20 years from the filing date. In determining whether it is better to seek a patent on a particular technology, or to keep the idea as a "trade secret," a decision must be made whether the disclosure of that technology in return of this limited life of patent protection would outweigh the possible advantages of keeping the technology a trade secret for a longer period of time. However, if you decide not to patent the technology and someone else develops the same concept, either independently or by copying your design, you will not be able to prevent him or her from using it, unless you have a patent.

A patent is a disclosure of the invention by an inventor in return for the legal protection. The disclosure is made public through the publication of the patent. The published patent must include "a written description of the invention, and of the manner of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same" (Title 35 of the U.S. Code, Section 102). In addition to this so-called "enabling" requirement, the published patent should also have the "best mode" contemplated of carrying out the invention. In short, patents are easy to comprehend and reading patents is one of the best ways of keeping abreast of state-of-the-art in technology.

A key part of the patent is its claims, always found at the end of the patent document. The claims define the legal extent of the patent and determine who would infringe upon the patent and who would not.

A US patent provides a monopoly only in the US. If the invention is important enough to create a monopoly in another country, one can get a patent in that country. Otherwise, anyone in the foreign country will be able to make, use, and sell the invention with impunity. However, they will not be able to bring it into the US, otherwise it will infringe on the US patent.

This leads to the question of what is patentable? "Novelty" and "Non-obviousness" are two most important requirements. Both must be satisfied for obtaining a patent. In order to pass the "novelty test," it should have an aspect that is different from all previous inventions and knowledge (that is, all relevant prior art). This prior art includes all the existing patents even if they are expired, and all the research papers published. After passing the "novelty test," the invention needs to pass "non-obvious" test. The invention must not be obvious to one with ordinary skills in the field. This is the area that many new concepts fail to address, and therefore, are not patentable.

As we face the deepwater challenges and work hard to excel in it, technical leaders should plan so that they can be rewarded for accomplishing it. As one inventor puts it: "The only thing that keeps us alive is our brilliance. The only way to protect our brilliance is patents."

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