As technology continues to rapidly advance, so do the number of patents filed and issued. We have been actively involved in patent matters in a variety of industries and technical fields. We have worked with professionals having academic and significant practical experience in many technology disciplines, including engineering, physics, chemistry, mathematics, life sciences, biotech, pharma, and computer and information sciences. In viewing patent matters, we frequently examine a variety of law and legal theories, such as trade secret law and unfair competition, in order to help understand and present complex legal and technical issues and to maximize recovery for our clients. Although we frequently encounter issues related to patents, we are not specialists in the field of patent law and collaborate with lawyers and law firms specializing in patent law when necessary or appropriate.
What is a patent?
Patent law governs the protection of inventions. A U.S. patent effectively grants the patent owner the right to exclude others from making, using, or selling the patented invention anywhere in the U.S. for the term of the patent. The underlying rationale for patent law is to encourage inventors by rewarding them with a limited monopoly over the inventions they create.
It is important to note that a patent only grants the patent owner a right to exclude others from making or using the invention - it does not necessarily give the patent owner a right to make, use, or sell the patented invention. For example, an inventor may create and patent a new drug, but the drug must still comply with federal regulations and receive approval from the U.S. Food & Drug Administration before it may be sold or distributed.
A patent owner may sue a person who makes, uses, or sells the patented invention in federal court for patent infringement. The patent owner may request an injunction to force the defendant to stop the infringing activity. The patent owner may also seek monetary damages.
Types of patents
There are three basic types of patent:
- Plant, and
A utility patent provides protection for useful inventions such as processes (including business methods), machines, articles of manufacture, or compositions of matter. A plant patent provides protection for new types of asexually reproducible plants. A design patent provides protection for novel, non-functional design elements.
In order for an invention to be patentable it must be new or novel, nonobvious, useful, and must satisfy statutory requirements,
Statutory subject matter requirements
The U.S. patent statute is very broad concerning patentable subject matter. The statute states that processes, machines, articles of manufacture, and compositions of matter are patentable. New microorganisms created through genetic engineering and new types of are asexually reproducing plants are also protectable. Additionally, non-functional, purely ornamental designs are also patentable.
Business methods were once deemed unpatentable subject matter. However, the courts have allowed the patentability of software and business methods patents, including internet or electronic commerce method patents. However, it is important to note, that such patents are still the subject of much debate.
The following, however, are not patentable - abstract ideas, natural phenomena, and laws of nature.
The subject matter of the invention must serve some useful purpose. For example, inventing a new chemical compound with no apparent specific use may fail the usefulness requirement.
An invention must be "new" as defined in the patent law. An invention will not be considered new or novel if 1) the exact same invention has already been known to the public, 2) the invention was publicly sold or used for more than one year prior to the patent application filing, or 3) the invention was described in a publication for more than a year prior to the patent application filing.
An invention will not be patentable if after looking at prior art (i.e. inventions, products, processes, etc.), would have been obvious to a person with ordinary skill in the technical area to which the invention relates. Put more simply, if a person in the same area of expertise could have conceived of the same invention after looking at previous and existing products or processes, then the invention would be considered obvious and unpatentable. Obviousness analysis is extremely complicated and involves careful consideration of various factors.
How to obtain a patent - filing a patent application
One obtains patent protection by filing a patent application and paying a filing fee with the United States Patent and Trademark Office (USPTO). A patent examiner will review the application and decide whether the invention is patentable.
Only the inventor(s) of the invention may file a patent application. Determining who the "inventor" or "inventors" are may be a complicated issue requiring consultation with a patent lawyer. It is important to distinguish the inventor from the patent owners. For example, the person who only contributed financially to the invention may be the owner of the invention but is not the inventor (as in the case of a work for hire).
A patent application consists of four basic parts: the Specification, the Claims, Drawings (when necessary), and Inventor's Oath.
The first part is the specification, which is a written description of the invention. The specification must be "enabling", meaning that the invention is clearly and completely described so that another person ordinarily skilled in that area of expertise would be able to reproduce and use the invention. In addition, the specification must provide a specific embodiment of the invention which provides the best means or mode of operation contemplated by the inventor. This is to prevent the inventor from concealing from others the preferred embodiment of the invention.
Every patent must recite one or more "claims". The claims basically short descriptions of the subject matter of the invention and define the scope and breadth of patent protection. They must be definite enough to provide a clear warning of what constitutes infringement. Careful drafting of patent claims is extremely important. Claims that are too broad are likely to be rejected by a patent examiner as obvious or predictable. Claims that are too narrow in scope may limit the scope of the patent's protection and not prohibit competitors' similar inventions.
A patent application should also include drawings (diagram, model, flowcharts, etc.) if necessary to describe the invention. Drawings must include every feature specified in the claim. The USPTO has strict drawing requirements. Many inventors hire professional patent draftsmen to create drawings.
Every patent application must contain an oath by the inventor stating that he or she believes that she is the original and the first inventor of the invention described and claimed. The oath must be notarized.
The drafting and filing of a patent application is subject to numerous rules and nuances and may prove to be a very difficult process. As such, many inventors hire a patent attorney to assist them in the patent process.
Conducting a patent search
Because the patent application process is long and usually very expensive, inventors should conduct a search of prior patents and inventions, prior to filing a patent application, to see if their invention, is in fact, novel or new. Searches should include patents applications filed or issued with the USPTO. Many issued and published patent applications can be electronically searched online at www.uspto.gov. Additionally, since many processes, products, or devices are never filed with the patent office, searches should also include technical documents, journal articles, and company databases. Some companies offer search services for a fee. It should be noted, however, that a patent search is never 100% complete or accurate.
Patent protection - what happens after I file?
The examination process is a long one and may take years. When the patent examiner determines that a patent is not patentable they will send the patent applicant (or his/her appointed attorney) a formal letter known as the "first action" stating the reasons for the rejection. The patent applicant then has the opportunity to respond. Usually, the applicant's attorney prepares an amendment of claims and a response objecting to the examiner's arguments or stating why the amended patent application should be issued. Amendments cannot add any new "matter" to the invention as such additions would essentially create a new invention. The patent examiner then reviews the patent in light of the response and/or amendment and decides whether or not to reject the invention. If the examiner rejects patentability, the applicant usually abandons the application or appeals the examiner's decision.
When a patent issues
If a patent examiner approves patentability, they will mail a notice of allowance to the applicant or his appointed attorney. At this point, the applicant must pay an issuance fee within 3 months of the notice. The Patent Office will issue and mail the patent grant to the applicant soon after payment is received and make the patent public.
The patent owner must also pay a patent maintenance fee at 3 and 1/2 years, 7 and 1/2 years, and 11 and 1/2 years from the date the patent is granted. Failure to pay the fee may result in the expiration of the patent.
After a patent is issued, the patent owner must mark the patented goods he or she makes or sells with the word "Patent" followed by the patent number. Failure to do so typically prevents a patent owner from recovering damages for infringement, unless the patent notified the infringer.
Sometimes a patent owner will mark the words "patent pending" on his goods to give notice to the public that a patent application has been filed. The phrase has no legal effect otherwise.
Should I apply for a patent?
In some cases, an inventor or business may not wish to file a patent for their invention. The reason may be to keep the invention a secret (patent applications are published and made public). By not disclosing the invention, an inventor or business may be able to protect the invention of a trade secret for a period greater than the typical 20 patent year term. In contrast, a business may decide to publish an invention without filing an application to merely prevent other individuals or businesses from obtaining patent protection for the same invention. These are important business decisions that should be carefully considered with a patent lawyer.