Protecting Your Innovations

Companies thrive on innovation. Whether it's in the form of new products or techniques or improvements to existing products or techniques, many companies rely on intellectual property (IP) rights to protect their innovations. There are many forms of IP, including patents, trademarks, copyrights, trade dress and trade secrets. Of these, patent rights have proven themselves to be particularly valuable to innovative companies.

Generally speaking, a patent owner can prevent others from making, using, selling or importing its patented invention. The patent law definition of "invention" is somewhat different from how the word is commonly used in everyday life. In particular, Congress allows patents on any new and useful "process, machine, manufacture or composition of matter, or any new and useful improvement thereof.” In the construction industry, many companies are aware that patents are available for "classical" inventions such as machines, materials, parts and tools. Not all companies are aware that patents are also available for inventions relating to software, processes, and techniques.

Construction Patents

The United States Patent and Trademark Office (USPTO) categorizes technologies into one or more classes. Many of these classes are relevant to the construction industry. For example, the USPTO recognizes technologies relating to mining, bridges, building units, construction elements, earth working, excavating, tools, joints, connections, road structure, static structures, structural supports, conveyors and construction materials, as well as thousands of other technologies. In addition, even ornamental designs of building units and construction elements can be protected through design patents.

Beyond these examples, the construction industry abounds with innovative products and techniques that are protectable through patent law. For example, inventions relating to building information modeling (BIM) are protectable through patent law. Although the broad, general concept of modeling buildings is beyond the scope of patent laws, innovative processes, software, machines or techniques relating to BIM can be protected. Because of BIM's significant practical benefits, such as its ability to radically alter the speed, efficiency and costs of building projects, it's a great example of an innovation that has already transformed the construction industry.

Green Building Technologies

The green building industry presents another area ripe for innovation. Because of various government and private initiatives, there are strong incentives for companies to develop products, services and processes designed to provide superior performance while greatly reducing or eliminating environmental impact.

For example, federal programs such as the U.S. Green Building Council’s LEED rating system encourage the adoption of green building and development practices. LEED in particular encourages facility managers and building owners to address issues of air quality, water use, toxic materials, recycling efforts, renewable structural components, efficient lighting and other green practices within the construction industry. As a result, the green building industry has proven itself to provide a constant stream of innovations and scientific breakthroughs in areas such as building materials, tools and techniques.

The U.S. patent system itself has recently undergone some groundbreaking new changes. In particular, President Obama signed into law the Leahy-Smith America Invents Act (AIA) in September 2011. One of the significant changes to the U.S. patent system resulting from the AIA includes the switch from a first-to-invent system to a first-inventor-to- file system. In the construction industry, where many inventions are visible to the public, it will be critical for companies to reevaluate patent procedures to ensure fast and accurate filing of applications.

Protecting Your Company

There are many ways that companies can use their IP rights to effectively protect their innovations. The classic example is filing an infringement suit in a federal district court to prevent another company from infringing its patent rights. The United States International Trade Commission (ITC) provides another avenue for enforcing patent rights by preventing importation of infringing products or materials into the United States.

On the defensive side, there are several tools available to invalidate another company's patents. These tools have become even more robust following enactment of the AIA. Beyond arguing in court that a patent is invalid, a company can additionally or alternatively seek to invalidate a patent at the USPTO itself through an ex parte reexamination, post-grant review proceeding, inter partes review proceeding, supplemental examination or derivation proceeding.

In addition, because actual notice of another company's patent is not required to be liable for infringement, every company also has a legal responsibility to ensure that it's not infringing patent rights itself. Businesses interested in licensing or acquiring intellectual property assets or participating in mergers and acquisitions will often conduct IP due diligence prior to the transaction. A detailed review of the ownership of the IP portfolio can identify issues such as inventorship disputes, potential interferences and interests of the U.S. Government.

Patent counsel can play a key role, both offensively and defensively, in guiding management. Offensively, patent counsel can help determine whether another company may be infringing one of the company's patents. Defensively, patent counsel can help determine whether the company itself is infringing another's patent.

Developing a Patent Strategy

When a company is developing its patent strategy, it is important to analyze its industry to understand the competitive forces that are driving the market. The company should consider the areas in which IP investment will do the most good, and the areas in which investment will yield less. The company's patent counsel should team with its business executives, in-house counsel and inventors to stay abreast of both new developments in the industry as well as patent laws.

In the construction industry, there will always be a need for innovative tools, materials, software, and construction techniques. Ultimately, a company's patent strategy should achieve its business goals while respecting its financial resources. Both a sword and a shield, a company's patent strategy can be essential to  growth and long-term viability.

Jeffrey R. Fougere is an associate and David K.S. Cornwell is a director at the intellectual property specialty law firm of Sterne, Kessler, Goldstein & Fox PLLC in Washington, D.C. They can be reached at [email protected] or [email protected]

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