Patent for Success

Protecting the fruits of the creative human mind

By Alma Luna Reyes
January 2001

Atty. Maria Erlinda Co Sarno's job is to protect the fruits of a creative human mind.

Working as a patent attorney for the past several years, she has come to a veritable conclusion that every invented product should be successfully patented in favor of the hardworking investor. Simply put, Sarno believes that every invention is a form of property that deserves to be protected by the law so that the rightful owner can enjoy the fruits of his labor... to the fullest".

Success has always characterized her life. As a college student at the University of Santo Tomas in the Philippines, her performance had been remarkable, graduating magna cum laude with a degree in chemistry. In 1975, she obtained a master’s degree, also in chemistry, from Cal State University Long Beach where she graduated summa cum laude and was the recipient of the university's award for most outstanding graduate work.

As early as 1969, she became involved in the "analytical development of various pharmaceutical tests.” Later, she also had a hand on the improvement of the iodination method for the hepatitis B antibody and the radio labeling technique for then existing radio immunoassay commercial diagnostic kits.

While employed as a Research and Development Manager for Baxter Healthcare Corporation's Biotech (Hyland) Division, Sarno often wondered why patent attorneys she dealt with on the job asked questions from a perspective she did not quite understand. It was during this time that she became more attuned to the needs of inventors.

She decided to take law studies, specializing in patent, graduating cum laude at Western State University with American Jurisprudence awards in Torts, Contracts, Criminal Law, Property, Corporate Law and Professional Responsibility. Her decision to specialize in Patent Law, despite the numerous awards and distinction in the other areas of law where she could have easily excelled as a professional, was driven by her technical background and by being an inventor herself.

“I am an inventor myself,” she explains, referring to her previous experience as a scientist. “Now that I am both an inventor and a lawyer, I have the advantage of looking at the invention from both sides. I can relate to the inventor while I work on their patent applications. I also have the technical capability to make sound suggestions. My work as a patent lawyer is not limited to the acquisition of a patent right for my clients. Oftentimes, I advise my client on how to modify or improve the invention to make it more commercially acceptable prior to the filing of the application.”

Describing herself as a “scientist at heart” and a lawyer by profession, Sarno views her job as more of a “community service” than anything else. Sarno says her work as a patent attorney protecting inventions is both a joy and a fulfillment. She reveals she is currently working on patents for inventions of a number of Asians including Filipinos, but declines to reveal their names or products to protect them until the patents have been issued.

“What is difficult about patents is the tediousness of the work,” Sarno explains. “To minimize costly office actions in the future, the patent application must be carefully thought of and written.”

According to Sarno, in law, patents fall under the umbrella of Intellectual Property, which includes trademark and copyright. “Not every lawyer can be a patent attorney. A patent attorney needs to pass the patent bar given by the U.S. Patent and Trademark Office in addition to a state bar,” she explains.

“When we think of property, what comes to mind is real and personal property such as a house, car, jewelry, etc. We overlook the fact that the products of our intellect is also a property that should be protected because these can also be a source of tremendous wealth, not to mention that they are an extension of ourselves, as a product of our minds through ideas. It is in fact, part of us,” she adds.

To get due protection of the law for such “intellectual properties,” Sarno says there are differences one has to recognize when applying for such legal protection. “For example, one of the requirements of a patent is novelty while that of a copyright is originality. If you can acquire both a patent and a copyright for your invention, then you must do so for better protection.”

Sarno goes to say that trademark is also part of Intellectual Property. A trademark “lasts longer than a patent". “ Exclusivity of a patent is usually valid only for 20 years after the first filing of the application. After this period, a patented invention can be used by anyone while the trademark remains exclusive as along as the mark is being used in commerce.”

She cites the example of Xerox. “The patent of Xerox for the exclusive production and sales of photocopying machines may have expired but the name Xerox will always be associated with copying machines so much so that in order to protect their trademark, the company has made measures to stop the use of the word “Xerox” in denoting the act of photo copying. Another example is “thermos.” The trademark "thermos" can no longer be protected as a trademark because the company failed to protect the everyday use of the name such that the word Ôthermos’ is now a common accepted word for a bottle that can maintain the temperature of its contents,” Sarno explains.

She further adds that the purpose of the trademark is to tell the world the source of the product. “In choosing a trademark, you cannot use generic and sometimes descriptive names. A trademark will likewise be denied for names or marks that will likely cause confusion. For instance, the names Coke or Coca-Cola easily identifies who the manufacturer is. One will not be able to get a trademark for a similar name like Cola. It protects the manufacturer against those who manufacture similar products from using the name especially if those products do not have the same quality. It also protects the consumers by letting them know who the manufacturer is.”

Inventors, Sarno says, usually apply for utility patents on mechanical, electrical, chemical inventions and lately for methods of doing business. These include simple everyday items like apparel, accessories, beds and other household products to more complex ones such as medical devices, computer hardwares and biotechnology inventions. Patents for design and plants are also available.

Since intellectual property is jurisdictional, it is not uncommon for the same trademark to exist for different products in different countries. “A product patented in the U.S. can be made and sold in another country where the inventor did not acquire patent protection. Fortunately, there are recent efforts to harmonize intellectual property worldwide. Despite these efforts, intellectual property by its nature remains easily infringed that is why it is very important to get full protection,” says Sarno.

Despite her busy schedule, Sarno regards her children, Lynnette, Mike and Albert as her first priority. Sarno says “they are the joy in my life. Lynette is now a lawyer practicing in New York. Mike is a probation officer with the Los Angeles County. Lynette graduated with high honors while Mike graduated cum laude. Albert will pursue an Engineering degree after high school from Servite.

Sarno adds that “I did not do any volunteer work except teaching religion while they were growing up.” Now that the children are grown up, she is actively involved with the Asian Business Association of Orange County in California whose members elected her as their president for 2001, and the Filipino American Chamber of Commerce of Orange County where she currently holds the position of Assistant treasurer.

Right now, she is busy preparing for a trip to the Philippines, excitedly looking forward to attending a reunion of her high school class at the University of Santo Tomas. She has been chosen as one of the outstanding High School alumni, a distinction accorded her by her alma mater and high school pals for her work as a scientist-inventor-lawyer. For the former chemist-turned-attorney, that's as good as it gets.