A patent is a property right granted by the United States government. A patent owner has the right to exclude others from making, using, offering for sale, or selling the patented invention in the United States for a limited period of time. A patent owner also has the right to exclude others from importing the patented invention into the United States.
A patent only gives the inventor the right to exclude others from making, using, offering for sale, selling or importing the patented invention. A patent does not give the inventor an affirmative right to do any of these acts.
Nevertheless, patents can be very valuable. In the eyes of investors, a patent can add significant value to a business. A patent can be licensed to generate revenue and can be leveraged in business negotiations. The owner of a patent can sue another party for patent infringement in an effort to recover money damages and seek an injunction. An injunction is a court order requiring the infringer to immediately cease its infringing activities.
There are three types of patents: utility patents, design patents and plant patents. Each type of patent protects different subject matter.
Most patents issued by the United States Patent & Trademark Office are utility patents. As a result, the FAQs in this Patent section are largely devoted to utility patents.
A utility patent may be granted to anyone who invents or discovers a new and useful invention that falls into one of the following categories:
Improvements – An improvement to a known process, machine, article of manufacture or composition of matter may potentially be patentable.
The United States Supreme Court has said that practically “anything under the sun that is made by man” is potentially patentable, if the invention complies with other requirements for issuance of a patent.
A patent will not be granted for mere ideas and theories. Patents also will not be granted for mathematical formulas, algorithms and equations, and laws of nature. Likewise, naturally occurring plants and animals, including human beings per se, cannot be patented.
A method of doing business is patentable in the United States, if it is not merely an unapplied idea or an abstract concept. However, like all other inventions, a business method must meet all other requirements for patentability, including novelty and nonobviousness, before a patent will be granted.
It is now firmly established that software is patentable in the United States, when the software produces a useful and tangible result.
Only the actual inventor or inventors may apply for a patent. An inventor is someone who conceived, or formulated, the definite and permanent idea of the entire invention, including all its elements, in his mind. When two or more people each make a significant contribution to the conception of the invention, they are joint inventors and must apply for a patent together in the same application. However, someone who copies an invention from another cannot be an inventor.
If more than one set of inventors apply for a patent on the same invention, a patent will be awarded to only one group of co-inventors. In the U.S., the patent will be granted to the first person to invent, regardless of who was first to file a patent application.
Patent owners have the right to exclude others from making, using, offering for sale, and selling the patented invention in the U.S. The patent owner also has the right to exclude others from importing the invention into the U.S. If any of these rights are violated by a third party, the patent owner has the right to sue the infringer in a U.S. court and seek remedies such as monetary damages, an injunction, enhanced damages for willful infringement, and attorney fees.
A patent does not give the inventor the right to practice the invention. Certain aspects of the patented invention may already be covered by other patents, and an inventor may need to obtain a license from another patent owner before having any right to practice the invention claimed in the patent.
In exchange for the exclusive rights granted by a patent, the inventor must disclose the invention to the public. Currently, most patent applications are published 18 months after the application was filed. In some instances, an inventor can elect to not publish his application 18 months after filing; however, all patents are published when they are issued by the USPTO.
For applications filed on or after June 8, 1995, the term of a utility patent is 20 years from the date the patent application was filed. Previously, utility patents were valid for 17 years from the date the patent was issued by the USPTO.
A plant patent is also valid for 20 years from the date the patent application was filed. A design patent is valid for 14 years from the date that the patent is issued.
Although a patent can only be issued to the original inventors of the invention, it can be later assigned to any person or entity. An assignment transfers the title and ownership of all rights to the patent. All assignments must be recorded at the Patent and Trademark Office.
Patent rights can be licensed to others by the patent owner. A license is a contract between the patent owner and the licensee. The patent owner agrees that he/she will not sue the licensee for patent infringement based upon certain actions of the licensee. A license may give the licensee the right to make, use, sell and/or import the patented invention, and it may also place restrictions on the licensee’s use of the invention. A license may be exclusive or non-exclusive.
A provisional patent application is essentially a place holder. By filing a provisional patent application with the United States Patent & Trademark Office (“USPTO”), an inventor receives an early effective filing date.
After filing a provisional application, an inventor has up to 12 months to file a non-provisional patent application. The claimed subject matter in the non-provisional application will be entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.
A provisional patent application can provide several benefits to an inventor. In addition to allowing the inventor to claim the benefit of an early effective filing date, a provisional patent application gives the inventor 12 months to decide whether to invest in filing a non-provisional patent application. During this time, the inventor can assess the value of the invention by testing the market and attempting to locate potential licensees. Filing a provisional patent application also gives the inventor the right to use the term “Patent Pending” in connection with the invention.
A provisional patent application must contain a written description of the invention that fully and clearly explains how to make and use the invention and also discloses the best way known to the inventor of carrying out the invention. The application must also contain any drawings that are necessary for understanding the invention.
The provisional application must be accompanied by a cover sheet and the appropriate filing fee.
Unlike a non-provisional application, a provisional patent application need not contain any claims, and an oath or declaration by the inventor is also not required.
Currently, the fee for filing a provisional patent application is $210. However, if the provisional patent application is being filed by a person or small business that qualifies as a small entity, the filing fee is reduced to $105.
A provisional patent application is not examined on its merits by the Patent Office and will never result in an issued patent. A provisional patent application provides no protection against infringement. In order to obtain a patent, an inventor must file a non-provisional patent application.
If an inventor does not file a non-provisional patent application within 12 months after filing a provisional patent application, the provisional application is considered to be abandoned and the inventor can no longer claim the benefit of the filing date of the provisional application.
United States patents are issued by the United States Patent and Trademark Office (“USPTO”). In order to obtain a patent, the inventor must file a non-provisional patent application (or a provisional application followed by a non-provisional application within 12 months) with the USPTO.
When the patent application is filed, it is assigned to a patent examiner at the USPTO. After reviewing the patent application and researching the relevant published documents in the area of the invention, the patent examiner determines whether the application and the claimed invention satisfy the requirements for issuance of a patent. Typically, the examination process involves a series of communications between the patent examiner and the applicant (or the patent attorney representing the inventor) regarding the content of the patent application, particularly the patent claims which define the scope of the invention.
Ultimately, the examiner may allow a patent to issue, may reject all of the claims, or may reject some of the claims and allow others. After a second or final rejection, the applicant can appeal to the USPTO’s Board of Patent Appeals and Interferences. Alternatively, if the examiner allowed some of the claims but rejected others, the applicant can choose to accept a patent on the allowed claims and continue the examination process of the rejected claims through amendments and other means in a continuation application.
The patent claims are numbered sentences that set forth the subject matter that the inventor regards as his invention. The claims define the scope of the inventor’s rights, and they are considered to be the most important part of the patent. The claims are found at the end of a published patent.
Before issuing a patent, a patent examiner at the USPTO examines every patent application to determine if it meets two sets of requirements: patentability requirements and disclosure requirements. The patent examiner will reject the application if it fails to meet any of these requirements.
There are four patentability requirements that every invention must satisfy in order for a patent to be issued:
Every patent application must also comply with four disclosure requirements in order for a patent to be granted:
For purposes of a patent application, the relevant public is the average person working in the field of the claimed invention, who possesses an ordinary level of knowledge and skill in that field. Patent lawyers refer to this average person as a “person of ordinary skill in the art.”
A "patent pending" notice on a product informs the public that an application for a patent relating to that product has been filed with the USPTO. The term “patent pending” does not guarantee that a patent will issue, and it does not give the inventor any legally enforceable rights. The Patent Act imposes a fine on anyone who uses the words “patent applied for” or “patent pending” for the purpose of deceiving the public when no application for a patent has been made or, if made, is not pending.
In order to be patentable, an invention must be new. In order to determine whether an invention is novel, the patent examiner will compare the invention that is claimed in the patent application with the relevant prior art. An invention is not new if all the claimed elements of the invention are present in a single piece of prior art. If a single prior art reference contains all the elements of the invention, the reference is said to “anticipate” the invention.
It is important to understand that the United States judges novelty under a “first to invent” system, where the first person to invent or discover an invention will be entitled to the patent. Most of the rest of the world uses a “first to file” system, where the first person to file a patent application will be the one entitled to receive a patent, even if he/she was not actually the first inventor.
The term “prior art” refers to any technical or other information that was known prior to the time the inventor created the invention. The invention will be compared to the prior art to determine whether the invention is patentable.
There are several sources of prior art, including but not limited to the following:
Printed publications, such as scientific journals, books, dissertations, instruction manuals and other materials;
Patents issued by the USPTO or by a foreign country;
Products that were sold or offered for sale in the United States.
An invention must be significantly different from the prior art in order to be patentable. The nonobviousness standard recognizes that the elements of a claimed invention may be found in more than one prior art reference, and the subject matter as a whole may have been obvious at the time the invention was made to a person of ordinary skill in the art.
In order to determine whether an invention is nonobvious, the patent examiner will consider (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; and (3) the level of ordinary skill in the art. Certain secondary considerations may also be taken into account, including a long-felt but unsolved need for the invention, commercial success of the invention, copying of or praise for the invention, unexpected results, and other factors that would tend to indicate that the invention was not obvious.
Various events can cause an inventor to lose his/her rights to obtain a patent, even if the invention was novel and nonobvious. A patent applicant will be barred from receiving a patent if any of the following events occurred:
An applicant for a patent has a duty of candor to the USPTO. That duty includes the duty to disclose all prior art known to the applicant that is material to patentability. This duty of candor also applies to anyone else involved in the patent application process, including the inventor’s patent attorney.
If the inventor or his/her patent attorney fails to disclose such material information with the intent to deceive the USPTO, such conduct is considered to be fraud on the Patent Office. No patent will be granted on an application where fraud on the Patent Office was practiced or attempted or where the duty of disclosure was intentionally violated. Even if the inventor obtains a patent, the defense of inequitable conduct may be asserted to render the patent unenforceable in a subsequent action for patent infringement.
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