Patents

What is a Patent?

There are three types of patents: utility patents, design patents and plant patents. A utility patent may be granted to one who invents or discovers a new and useful process, machine, article of manufacture, composition of matter, or a new useful improvement of any of these. A design patent may be granted to one who invents a new, original and ornamental design for an article of manufacture. A plant patent may be granted to one who invents or discovers and asexually reproduces any distinct and new variety of plant. Patent protection is only available for inventions and designs that are novel and would not have been obvious to a person of ordinary skill in the art as of the time the invention or design was made. In addition, utility patents are only available if the invention is useful. In applying for a patent, a prototype is not typically required; however, your patent attorney or patent agent can explain this in more detail.

A U.S. patent gives the owner the right to exclude all others from making, using, selling and importing into the U.S. the invention defined by the claims of the patent. In exchange for this exclusive right, the patentee is required to disclose the invention in the patent application with sufficient detail so that a person “with ordinary skill in the art” is able to understand how to make and use the invention without undue experimentation.

The patent “right to exclude” does not grant or imply that the owner has the affirmative right to make, use or sell the patented invention. If the owner’s patented invention infringes another person’s patent, the owner may not be able to exploit the invention without a license from that person.

Because patent rights are territorial, the patent right to exclude is generally limited to the U.S. and its territories (although there are limited circumstances under which activities aimed at a foreign market can infringe a U.S. patent). An inventor who desires to prevent others from exploiting an invention in foreign markets would need to seek patent protection in each market.

How are Patents Obtained?

Patents are granted by the PTO. As a patent application is a highly technical document, it is advisable to have it prepared by a patent attorney or patent agent registered with the PTO. Under U.S. law, an inventor has only one year to file a patent application after the invention is offered for sale or publicly disclosed. Other countries do not offer even this one-year grace period. Thus, it is generally advisable to consult with an attorney promptly after conceiving your invention. Before filing a patent application, it is advisable to have your attorney conduct a patent search to make sure that your invention is novel and not obvious in light of prior inventions. Once the patent application is filed, a PTO examiner will evaluate whether the invention or design qualifies for patent protection. PTO examiners often require modifications to the patent application. This process can take several years and involve a substantial amount of interaction between the PTO examiner and your attorney. Because patent applications are so technical and the examination process is generally fairly time-consuming, the cost of obtaining patent protection is significantly greater than the cost of registering a trademark or copyright.

How Long does Patent Protection Last?

For applications filed on or after June 8, 1995, the term of a utility patent will generally expire 20 years after the application date. Design patents last 14 years from the date the patent issues. There are exceptions to these general time frames, which your patent attorney can explain. Once a patent issues, patent maintenance fees must be paid at designated times during the life of the patent; if a maintenance fee is not paid, the patent expires. Upon expiration of the patent, the public is free to use the invention.

Patent Ownership and Licensing

Patents can only be granted to inventors; that is, to the persons who have engaged in the mental act of invention. Corporations and other business entities cannot initially own title in a patentable invention. For this reason, it is advisable to put appropriate invention ownership agreements in place with all employees and consultants who may come up with inventions of importance to your business.

Patent rights can be assigned or licensed, but there are restrictions on how a patent owner can use the “clout” of a patent to extract royalties or other benefits from third parties. For example, generally speaking, a patent license may not lawfully endure beyond the term of the licensed patent. Before licensing rights under a patent, it is advisable to consult with an attorney regarding the permissible scope of patent licensing.

Enforcement of Patent Rights

The federal courts have exclusive jurisdiction over patent infringement suits. Relief in patent litigation includes injunctions extending for the life of the patent, money damages, and enhanced damages and attorney’s fees in exceptional cases. In addition, under certain circumstances, a patentee can obtain an exclusion order from the U.S. International Trade Commission to bar importation of infringing goods from foreign countries.