Patent Facts

Patent Facts

I. WHAT IS A PATENT?

A patent is a document, issued by the federal government, that grants to its owner a legally enforceable right to exclude others from making, using or selling the invention claimed in the document in the United States for a term of 17 years. The broad purposes of the patent laws are to encourage public disclosure of technical advances and to provide an incentive for investing in their commercialization. Thus, the overall progress of technical innovation is favored, while at the same time inventors are rewarded for their specific contributions. Like other forms of property, the rights symbolized by a patent can be inherited, sold, rented, mortgaged and even taxed. When a patent expires, or is held invalid, the right to exclude others ceases. The public is the ultimate beneficiary of the technical advance.

II. UNDER WHAT CONDITIONS IS A PATENT GRANTED?

Congress has specified that a patent will be granted if the inventor files a timely application which adequately describes a new, useful and unobvious invention of proper subject matter.

To be timely, an application must be filed within one year of certain acts by the inventor or others which place the invention in the public domain. Such acts include (1) publication of a written description of the invention, (2) offering the invention for sale, and (3) making a nonexperimental or "public" use of the invention. This one year grace period, however, is not available under the patent laws of most foreign countries. A US inventor who wants to obtain corresponding foreign patents must first file an application in the US before any publication, offer of sale or public use of the invention occurs.

The description of the invention in the application must be complete enough to enable others to make and use the invention. Moreover, the application must describe the best manner known to the inventor of carrying out the invention. The described invention must be new"; that is, not identically known or used by others in this country or patented or published anywhere in the world before the date the invention was made. The invention also must be "useful"; that is, it must serve some disclosed or generally known purpose.

Probably the most important requirement for patentability is that the invention must be "nonobviousness". "Nonobviousness" means that the differences between the invention and the prior public knowledge in the related technical field must be such that the invention would not have been obvious to a person having ordinary skill in this field at the time it was made. The most common ground for the rejection of a patent application or the invalidation of a patent by a court is obviousness.

The proper subject matter of a patent is any product, process, apparatus or composition of matter, including living matter such as genetically engineered bacteria or plans. Special provisions also permit patents directed to certain distinct and new varieties of plants (Plant Patent) and new ornamental designs for articles of manufacture (Design Patent). Purely mental processes, newly discovered laws of nature and methods of doing business are not proper subjects for a patent.

III. WHY OBTAIN A PATENT?

Most inventors seek a patent to obtain the actual or potential commercial advantages inherent in being able to exclude others. Given the high cost of research and development, the opportunity to recoup these costs through commercial exploitation of the invention may be the primary justification for undertaking research in the first place.

Patent rights can be commercially exploited in two basic ways: (1) directly, by the inventor's practice of the invention to obtain an exclusive marketplace advantage and/or (2) indirectly, by receiving income from the sale or licensing of the patent.

The indirect exploitation of a patent may be exclusive in nature through the sale of rights in the patent or the grant of an exclusive license. Licenses can be non-exclusive, allowing many parties, including the inventor, to practice the invention simultaneously.

A patent may also provide commercial advantages in addition to the potential for an exclusive market position or licensing income. A patent often lends business credibility to start up ventures and can open doors to both technical assistance and financing necessary to bring a new product to market. An improvement patent may also provide the barter necessary to cross license any basic or dominating patents held by others which block the path to market.

IV.HOW TO OBTAIN A PATENT

Patents are obtained through a complex administrative proceeding in the United States Patent and Trademark Office. Because of the high degree of legal skill required to properly draft a patent application and guide it through the examination process, it is strongly recommended that an inventor seek the assistance of an experienced patent attorney before beginning this process.

Before actually applying to the Patent and Trademark Office there are several important preliminary steps that should be followed to prevent possible loss or damage to future patent rights. One of the most important of these preliminary steps is proper record keeping. Since United States patents are granted to the first inventor, it may become necessary to prove when the invention was made. This is best accomplished by making a complete record of the invention from the first idea through development of commercial products. The invention record should clearly describe the invention with words and pictures (photographs, sketches, drawings, etc.) and should explain fully how it operates or is used. Each page of invention record should be signed and dated in ink by the inventor. The record should also be reviewed as it is made by at least one other trustworthy person who is capable of understanding the invention, who should sign and date the record under the notation "read and understood by. . . ."

Another important preliminary step is the determination of whether the invention is likely to be considered patentable by the Patent and Trademark Office, and if so, whether the patent coverage would be broad enough in its coverage to be worthwhile in a commercial sense. Such a preliminary evaluation of patentability should be made by a patent attorney, based in part on the prior patents and other materials located in a search of relevant records in the Patent and Trademark Office. Because of the subjective nature of patentability the outcome of the patent process is usually difficult to predict with any real certainty. Even so, a negative opinion as to the availability of commercially worthwhile coverage may help avoid the substantial cost and effort of the application process.

The next step in the process of obtaining a patent is the preparation of a patent application. A patent application is a legal document which must fully describe the invention with words and, where appropriate, drawings, and which includes "claims" which define the legal boundaries of the invention. It is essential to the validity of the patent, and its ability to adequately protect the invention, that the invention be described and claimed completely and precisely. Accordingly, the inventor should tell the patent attorney everything about the invention, including what problems it solves and what difficulties were overcome to make it work. The attorney should also be advised by the inventor of any relevant patents, publications or similar devices. The patent application will also contain a Declaration and Power of Attorney form which the inventor must sign indicating that he has read and understood the application and affirming that he is the first inventor. The applicant and a filing fee are then sent to the Patent and Trademark Office to effect a filing.

The filing of an application, in itself, does not create an enforceable legal right. Infringement of the invention can be prevented only after the patent is issued. Nevertheless, the placing of the notice "Patent Pending" or "Patent Applied For" on an invention as permitted after filing may discourage potential infringers because it puts them on notice that they may have to stop production once the patent is granted. It is unlawful to use such a notice unless an application for patent is actually pending in the US Patent and Trademark Office.

In the Patent and Trademark Office the application undergoes a process called examination. After an initial processing stage (which may take 6-9 months or more) a patent examiner will review the application and issue an administrative action called an Office Action commenting on it. Typically, the examiner will refuse to approve some or all of the claims initially submitted by the applicant. Following issuance of the initial Office Action the applicant will have a 90 day period in which to reply and to submit new or revised claims for examination. Typically, at least two such exchanges between patent examiner and attorney are necessary to resolve all the legal and technical issues.

Currently it requires about 18-22 months from the filing date to complete the examination process. During this period, the application is kept secret and only persons authorized by the inventor are permitted to examine the application file.

When the Examiner is satisfied that the application is in proper form and its claims are allowable, the applicant is notified that a patent will be granted upon payment of final government fees. In order to keep the patent in force for the full 17-year term it also is necessary to pay progressively higher maintenance fees at 3-1/2, 7-1/2 and 11-1/2 years after the date of issue. Finally, the law provides that an applicant who qualifies as a "small entity" is entitled to a fifty percent reduction in most fees charged by the Office. Under the rules, a small entity is an individual, a non-profit organization, or a small business.


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    Last updated on 20 October 1995.