Patents

 

PATENTS

A United States patent is a grant by the U.S. Government to an inventor. The patent grant gives the inventor the right "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States."
The purpose of the U.S. patent system, as stated in the United States Constitution, is to "advance the useful arts." The basis of the system is that when inventors publicize their inventions, others can build upon that knowledge to advance technological development. To encourage inventors to publish their inventions in a patent, the patent system grants those inventors a limited period of exclusivity in the invention.
The United States grants three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new useful improvement thereof. Utility patents are the most common type of patent.
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.  Design patents cover the aesthetic appearance, and cannot cover function.
Plant patents may be granted to anyone who invents or discovers and asexually re-produces (by grafts and cuts) any distinct and new variety of plants.

To be patentable, an invention must be new or "novel." The invention must also not be obvious to a "person of ordinary skill in the art." Such non-obviousness is determined in view of all the prior art that exists (whether or not the inventor personally knows of the prior art).

Obtaining a Patent

To obtain a patent on your invention, you must file a written application with the United States Patent and Trademark Office (USPTO). You may file the application yourself, or you may hire a registered patent attorney or a registered patent agent to prepare and file the application on your behalf.

The patent application must fully describe and particularly claim the invention. A utility patent application includes several sections, including the background, a summary of the invention, a detailed description of one or more implementations of the invention, including the inventor’s preferred embodiment (implementation), drawings illustrating the described implementations, claims that particularly define the invention, and an abstract of the invention description.

A USPTO Examiner examines the application. The Examiner searches the prior art available at the USPTO (which consists principally of previously issued U.S. patents, but also includes textbooks, technical publications, and various on-line materials). The Examiner issues a written "Office Action" giving the USPTO's initial opinion about whether the invention is patentable. You and your patent attorney or agent have the opportunity to respond to the Office Action. In the response, you can explain why the invention is patentable in spite of the reasons given by the Examiner. You also may "amend" certain portions of the application to define your invention more precisely.

If you are successful in convincing the USPTO that the invention is patentable, the USPTO allows your patent application. After you pay the issue fee charged by the USPTO, the USPTO grants the patent to you.

Typically, the examination process takes 36 to 48 months. Some applications may take much longer. The USPTO normally publishes patent applications about 18 months after the applications was filed.  There are limited circumstances in which an applicant can ask the USPTO not to publish the application until the patent is granted.

 

When Should I File My Patent Application?

Under the recently enacted America Invents Act, a patent will generally be granted to the first inventor who files a patent application. Therefore, early filing will normally be preferred, so the inventor doesn’t lose out on his or her patent because another inventor gets to the patent office first.

Even if another doesn’t get to the patent office first, the law requires that you file your U.S. patent application within one year after certain events. Offering for sale a product incorporating the invention (even if the offer did not lead to an actual sale), or publishing a description of the invention start this one-year period. However, most countries other than the United States do not provide this one-year period. Therefore, if you anticipate seeking patent protection outside the United States, you consider filing the original patent application before publicly disclosing the invention or selling product incorporation the invention.

 

Should I Search the Prior Art?

Before filing a patent application, you may want to know what "prior art" is likely to be relevant in determining whether your invention is patentable. In many instances you will know what prior art is closest to your invention. In other instances, you may want to perform a search of the prior art. Such a patentability search may give you an approximate idea of whether your invention is patentable, and if so, the possible breadth of patent coverage you may be able to claim. The results of the search will allow you or your patent attorney to more precisely focus on what makes your invention different from the prior art.

However, no search is perfect. During examination of the application, the USPTO Examiner may find prior art that is closer to the invention than the art discovered in the search. Even after the patent issues, another party (such as a potential infringer) may discover pertinent art that was not uncovered in the search or by the USPTO.

 

Length of Patent Protection

Patent protection begins on the day the patent issues.

For a utility patent that issues on a patent application filed today, patent protection expires 20 years after the date the application was first filed with the United States Patent and Trademark Office. Maintenance fees must be paid approximately 3, 7, and 11 years after the patent issues. If the maintenance fees are not paid, the patent will expire.

Plant patents also have a term that ends 20 years from the date the patent application was first filed. There are currently no maintenance fees required for plant patents.

A Design patent has a term of 14 years from the date the USPTO grants the patent. There are currently no maintenance fees required for design patents.

 

Outside the United States

Patents are territorial, and generally may be enforced only in the country that issues them. Thus, United States patent rights extend throughout the entire United States, its territories, and possessions. However, United States patent rights do not extend to other countries. Therefore, you must seek patent protection in each country in which you want to have patent protection. You must consider many factors in deciding whether to try to obtain patent protection in a particular country.

There are certain treaties among many of the major industrialized countries that make the process of applying for patent protection in other countries somewhat simpler than if you had to approach each country individually. However, the process of obtaining patent protection outside the United States remains rather expensive.

 

Infringement

A person infringes a patent when that person (or company) uses one of the rights granted by the patent by making, using, offering for sale, or selling the invention covered by the patent.

To be covered by a patent, a product or process must include every element of the portion of the patent called the "claim." If the product or process includes all the elements of the patent's claim, the product or process infringes the patent. This remains true even though the product or process adds additional elements not included in the patent. However, if an element of the patent claim is missing from the product or process, the product or process likely does not infringe the patent (although there are exceptions). A person who improves a product patented by another by adding to the patented product may be able to get a patent on the improved product, yet still infringe the original patent if the improved product includes all the elements of the claim of the original patent. A patent can be infringed even though the infringer does not know of the patent. If the infringer does know of the patent, and chooses to ignore it, the patent owner may be able to get increased damages for the infringement.

The patent owner may file a lawsuit against an accused infringer to force the infringer to stop making the infringing product, or to obtain money damages for the infringement, or both. The court then determines whether the accused product or process infringes the patent. The court may also find that the patent is invalid, which is a conclusion that the USPTO should not have issued the patent. Once a patent is found to be invalid, it cannot be enforced against anyone.

Before you begin manufacturing or selling a product, you may want to have an infringement search done. The purpose of an infringement search is to help determine if there are patents that your product is likely to infringe. If so, you may be able to redesign the product, or obtain a license from the patent holder. However, it is impossible for an infringement search to uncover every potential infringement issue. Therefore, the results of an infringement search cannot guarantee freedom from an infringement question.

Profiting From Patent Rights

You can profitably exploit the "right to exclude" provided by a patent in many ways.

You may use your patent rights to help keep competitors at a distance.
You may sell all or parts of your patent rights for money, or for other compensation. Compensation may include access to a particular market, access to complementary technology, product discounts, or anything else that might have value to you.  See the “Solutions” page for some of the ways a patent owner can use the patent right.

There are many ways the use a patent right to help you and your business. An attorney with a range of experience in handling such rights can help you explore your options. See my Solutions page.