Make your medical product ideas come to life: Public Domain

In the last column we talked about how to comb through patent claims and perform a lay assessment of infringement. While you might arrive at the conclusion that your innovation would not, in your estimation, infringe any of the claims you turned up, there is something else you need to know about patents: Do any of them contain examples or details in the patent’s brief or detailed description that explain your innovation—yet are not mentioned in that patent’s claims?

If you find your idea described in a patent, but not claimed in any patent, you may have a patentability issue. In other words, if this description is not covered by that patent’s claims (or by the claims in any patent), then the described idea is most likely “public domain.” If an idea is in the public domain, it means that it cannot be patented by anyone. Instead, anybody may freely make, sell and use it. If you were seeking the advantages afforded by patent protection for your innovation, an issue of public domain would not be good news.

Normally, we would expect something covered by the claims to also appear in the patent’s brief or detailed description. It usually is, but not always. This example of public domain is similar to discovering that your innovation has been described (more than a year ago) in a journal article or other publication. If that occurs, and no patent claims have been filed on it, the idea is public domain and may be used freely by anybody. If you come across such a description published less than a year ago, confer with your patent attorney on its impact.
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Think you got it? If your innovation contains or performs each and every element in any claim of another patent, you may have infringement issues. If you find your innovation described in a patent or in any publication, and it is not covered by any claims in any patent, then you may have a patentability issue.

If you are lucky, and your idea appears to neither infringe any patents, nor face a public domain issue, then, from a patent law perspective, your own patentability is probably looking pretty good. However, you know from our prior discussions that it is possible to obtain a patent that does not confer any meaningful competitive advantage in the marketplace. And, if you cannot sustain a competitive advantage, neither customer nor investor may be interested in your innovation.

In the next column we will walk through how to unearth your competitive advantage (if any!) and meaningfully tie it to your patent application.

Big Ideas: An Article Series
donda Russ Donda is currently serving as the Entrepreneur-in-Residence in the life sciences at the Great Lakes Innovation & Development Enterprise, BioEnterprise and Jumpstart, and as Director of the Office of Community Technology Transfer at LCCC, Russ Donda has more than 25 years of management experience at both executive and entrepreneurial levels. Among other startup projects, Mr. Donda was the founding CEO and chairman of the board for ViewRay Incorporated, (www.viewray.com), a company developing a novel form of radiation therapy. Mr. Donda was a founding member of, and co-chair of investment review for, the Emergent Growth Fund, LLC (www.emergentgrowth.com), an angel investment fund focused on technology businesses; additionally, he was a founding manager of, and spearheaded business development for, the allograft implant company, Regeneration Technologies (www.rtix.com), a privately held, for-profit spinout of The University of Florida Orthopedic Tissue Bank which went public after three years in operation. He is familiar with start-up operations, development related issues, intellectual property management, strategic planning and strategic alliance structuring, and is named as an inventor on 15 patents and applications.

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