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Patent Law

By Aaron Larson

Law Offices of Aaron Larson

September, 2003

Contents

Introduction

The purpose of patent law is to encourage innovation, by granting inventors legal rights which permit them to protect their original inventions.

A patent is a right granted by a government which permits an inventor to prevent others from making, using or selling the invention for a fixed period of time, absent permission from the inventor. After that period of time expires, the invention becomes public property.

Please note that although it is possible for an inventor to obtain a patent without the assistance of a lawyer, a legal professional can help make sure that a patent will ultimately be enforceable, and to maximize the protections obtained through the patent process.

What Inventions May Be Patented

Patent protection is available for nearly all manufactured items. In order to qualify for patent protection, an invention must be new, useful, and unobvious to somebody with ordinary skill in the area related to the invention. In simple terms, these elements are as follows:

New: In the most general sense, an invention is "new" if it has not been previously invented by somebody else. An invention may not be considered new if:

    • The invention was described in a patent or printed publication before it was invented by the person applying for a patent, or was published in such a manner more than one year before the patent application was filed;
    • The invention was in public use or on sale for more than a year before the patent application was filed; or
    • Other people knew of or used the invention in the United States before it was invented by the person applying for a patent;

Useful: To be useful, the invention must provide some form of benefit - that is, it must be useful for a legitimate purpose.

Obvious: This is the most subjective element of any patent application. The issue is not whether an invention seems obvious in retrospect, but whether it would have been obvious to somebody with ordinary skill in the area related to the invention at the time the invention was made. The mere fact that a patent reflects a simple idea does not mean that it is obvious.

What Are the Types of Patent?

There are three primary types of patent: Utility, Design, and Plant.

Utility Patents: Most patents filed are for utility patents, which protect processes, machines, articles of manufacture, or compositions of matter. Protection generally lasts for twenty years from the application filing date.

Design Patents: A design patent protects ornamental designs for manufactured items. While the design may not change the utility of the invention, the design, shape or other ornamental feature may still be protected by patent. Design patents last for fourteen years after the date that the patent is issued.

Plant Patents: A plant patent protects asexually reproduced plants, and lasts for eighteen years from the date that the patent certificate is issued.

It is possible for the inventor of an item who does not desire patent protection, but who wishes to be protected in the event that somebody else attempts to patent a similar invention, to register the invention. While this registration will protect the inventor's right to use the invention, it is a good idea to consult with an attorney before giving up patent rights as a result of this type of registration.

A Provisional Patent is a preliminary filing which permits an inventor to submit a formal patent application within one year of the filing of the "provisional" application. The provisional patent is not examined, and cannot of itself serve as a patent application.

Who Can Apply for a Patent

In the United States, only the inventor may apply for a patent. This is true even where the inventor is obligated to assign the invention to another person, such as an employer. There are some special legal provisions meant to protect employers, in the event that an employee refuses to assign the rights to a patent as required by the terms of his or her employment, or where the inventor is deceased. If the invention is made by more than one person, all inventors involved must apply for the patent jointly.

What Is Involved In a Patent Application?

Prior to the filing of a patent application, a search of existing patents and "prior art" is made to help determine if your patent will be viable.

An application for a patent is a formal document which fully describes an invention in a legally sufficient manner. Due to the complexity of the application process, it is advisable that patent applications be prepared by registered patent attorneys.

A patent application includes a specification, a series of claims, and, if necessary, drawings or illustrations to assist in understanding the invention.

The specification must describe the invention in such a manner that any person skilled in the area pertaining to the invention will be able to obtain all information necessary to make and use the invention. It must also describe the best mode known to the inventor for practicing the invention as of the time the patent application is filed.

The claims define what an inventor may exclude others from making, using or selling as a result of a successful patent application. It is thus very important that the claims be drafted in as broad a manner as possible, so as to provide maximum protection for the invention, but at the same time that they be sufficiently narrow so as to avoid invalidating the patent on the basis of prior inventions.

If it is necessary to submit drawings with a patent, ordinarily the drawings should be created by an expert who is familiar with the rules and standards promulgated by the patent office.

Only after a patent has been filed, an inventor may mark the invention "Patent Pending" or "Patent Applied For".

After the application is submitted, it will be reviewed by the patent office, which may accept the application, reject the application, or request that the application be amended or clarified. The process of refining the patent application can be complex, and is usually best handled by or in close cooperation with a registered patent attorney.

Patent or Trade Secret?

Some inventors may wish to consider trade secret protection as an alternative to securing a patent. Trade secrets have the advantage that they are cheaper to establish than patents and do not expire, but may not protect the inventor in the event that an invention can be reverse-engineered. For more information on trade secrets, please see this associated article.

Should All Inventions Be Patented?

Sometimes, given the cost and complexity of the patent process, it is not beneficial to obtain a patent. If there is a very limited market for an item, or where it is likely that the viability of the patent would be challenged, a careful market analysis is warranted before incurring the expense associated with the patent process.

What Happens After a Violation of a Patent?

A patent holder is responsible for enforcing any patents held. This can create a "David versus Goliath" situation, where a large company will exploit a small inventor's patent, while spending a considerable sum in court to argue that the patent is not valid, or to try to distinguish their own process from that outlined in the patent. Patent litigation tends to be very complex, and very expensive. It may be easier for the patent holder to either try to sell the patent or to negotiate a licensing fee with the infringing company, or to license or sell the patent to another company which will take over the defense of the patent in litigation, than to try to bankroll and participate in this type of litigation.

In the event that patent infringement is established, the patent holder will be entitled to a reasonable royalty, or to profits lost as a result of the violation. Additional penalties may apply.

In the event of a patent violation, it is a very good idea to consult with an attorney about your rights and remedies.

International Protections

A patent applies only within the borders of the nation which grants it. Thus, if your invention has a market in foreign nations, you will benefit from seeking patent protection in those nations. Ordinarily, to maximize your protections you should file for any foreign patents within one year of the date you filed your initial patent application. If additional time is needed, it is advisable to consult with a lawyer about your rights under the Patent Cooperation Treaty, under which you may be able to obtain up to eighteen additional months to file foreign patents.

Considerations for Inventors

In order to maximize the probability that they will be able to protect their inventions and defend their patents, inventors should do the following in advance of filing an application for a patent:

  • Keep careful, dated, accurate records of their invention process, starting at the earliest stage of the conception of their idea, and detailing the entire development process;

  • Have records of the invention process periodically dated, witnessed, dated and signed by trustworthy, independent witnesses who understand the invention - keeping in mind that if your invention is challenged, you may not be able to defend your patent without producing these witnesses to testify on your behalf;

  • Have all witnesses, and any other individuals to whom details of the invention are disclosed prior to application for a patent, should sign confidentiality agreements;

  • Refrain from offering an invention for sale;

  • Refrain from publishing articles describing the invention;

  • Refrain from public use or disclosure of an invention;

  • Work closely with a patent attorney to ensure that the patent application details how your invention differs from and improves upon prior inventions, and contains all relevant and useful information and references;

  • Keep your attorney informed of any new developments or changes you make, in relation to your invention.

  • Don't attempt a "poor man's patent" - putting documentation of your invention into an envelope and mailing it to yourself is of next to no value when it comes to defending your invention or establishing the date of its conception.

Copyright © 2003-2011 Aaron Larson. All rights reserved. No portion of this article may be reproduced without the express written permission of the copyright holder. If you believe you may lawfully use a quotation, excerpt or paraphrase of this article under the Fair Use exception to copyright law, except as otherwise authorized by the author of the article, you must cite this article as a source for your work and include a link back to the original article from any online materials that incorporate or are derived from the content of this article.