What is a Patent?
A patent is a grant from the government to an inventor which gives the inventor the right to exclude others from making, using or selling the invention protected by the patent during the term of the patent.
How is a patent obtained?
Patents are obtained by filing an application with the United States Patent and Trademark Office in Washington, D.C. The application must describe in detail the invention and state particularly what the inventor believes the invention is. The application is examined by the Patent and Trademark Office, and a patent is granted if the requirements of the law are met, including the requirement that the invention be new and unobvious to a person of ordinary skill in that particular art.
Are there different types of patents?
Yes. There are three kinds of patents — utility, design and plant.
How long does a patent last?
A utility patent, once granted, lasts for 20 years from the date the patent application was filed in the Patent and Trademark Office. This term is subject to periodic payments of maintenance fees, otherwise the patent expires. A patent cannot be renewed. After expiration, the subject matter of the patent is freely available for use by the public. A design patent lasts for 14 years from the date the patent issues. The term for a plant patent is the same as the term for a utility patent.
What kinds of inventions are patentable?
To be entitled to a patent, the invention must first fall into one of four broad classifications-machines, articles of manufacture, methods and compositions of matter, or improvements of any of these. In addition, the invention must be new and unobvious to one of ordinary skill in the art. Certain prior events, such as publications, public use, offers of sale, and knowledge of the invention by others will prevent the issuance of a patent for the invention.
How does an inventor determine
if an invention is patentable?
A patentability search can provide a good indication of whether a patent can be obtained on an invention. A patentability search includes a search through Patent Office records, a review of other relevant information, such as trade publications, together with the inventor's own knowledge of what is already known in the relevant art. However, a truly complete patentability search is both difficult and expensive, and necessarily is limited to publically available information.
Is a patentability search required
before a patent application can be filed?
No, but some inventors choose to authorize a search as a way of obtaining a preliminary opinion of the likelihood of getting a patent. If the results of the search indicate that an application for a patent would likely be unsuccessful, the inventor may choose to avoid the cost of preparing and filing the application. On the other hand, some inventors choose to go straight to the preparation and filing of an application, saving the cost of the search.
Must an inventor patent his invention
before selling products embodying the invention?
No. There is no requirement that a product be patented before it can be sold. However, an infringement search may be desirable in some cases to minimize the possibility of inadvertently infringing on someone else's patent.
Are there limits on when a patent application can be filed?
Yes. A patent application must be filed within one year after the invention has been in public use or on sale in the United States, or patented or published anywhere in the world. If experimentation through extensive use is necessary, this experimental use may not start the clock running on the one year period under some circumstances. If protection is desired in foreign countries, it is usually necessary to file the application in the United States before any unrestricted disclosure of the invention to third parties.
What benefits does a patent confer on the owner?
A patent is a form of property, and can be used or sold like many other kinds of property. A patent permits the owner to prevent others from making, using or selling the invention without permission. Thus, the owner can prevent use by others, or can grant permission in the form of a license in return for a specified payment, or “royalty.” A patent can be sold outright, after which the new owner has all of the rights once held by the original owner. In many cases, ownership of a patent is the only way an individual or small business can successfully compete with a larger company, since a patent can help protect the investment made in the invention against a copier who would otherwise avoid the costs and risks of developing a new product. In addition, “patent pending” may be placed on the product and related materials during the time the application is pending in the Patent Office. The Patent Laws have recently been substantially amended, and the manner in which rights are acquired and protected will be changing drastically in the coming years. In general, rights will be awarded to the first inventor to file an application, rather than to the first inventor who may have filed later than another inventor.
Can an invention be protected
before a patent application is filed?
Yes, but only to a limited extent, and only if the inventor takes care to do certain things. First, careful records should be kept documenting when and how the invention was made. Second, if it is disclosed to a third party, a written agreement to keep the information secret for a reasonable period of time should be obtained, if possible. Ultimately, though, rights in the invention will be based on whatever patent protection can be obtained. For this reason, it is best to contact a patent attorney as early as possible in the process so that rights in the invention are not inadvertently lost.
Can the inventor prepare and file
his/her own patent application?
Yes. However, the rules of the Patent and Trademark Office are complex and change frequently. It is most unlikely that anyone without significant training and experience could obtain a patent which would provide reasonable protection for the invention. Substantial training and experience are necessary in order to successfully prepare applications and obtain patents. For this reason, attorneys who practice before the Patent and Trademark Office are required to pass a separate examination before they are permitted to represent others. A patent attorney can also assist the inventor in doing a patentability and infringement search, negotiating the licensing or sale of the patent, assisting in the design of a plan for marketing the invention and, if necessary, enforcing the inventor's rights against infringers.
All the information provided on this web site is of a general nature, and is not intended to address individual circumstances or the needs of any particular person or entity. This information is provided with no guarantee of completeness, accuracy, or timeliness. It is not intended to and does not render legal or other professional services. No one should act upon such information without appropriate advice and a thorough examination of the facts in a particular situation. Thad Adams assumes no liability for reliance on the information contained on this web site and reserves the right to make any change to the content without prior notice. Nothing on this website is intended to be legal advice, and is not legal advice. Nor is this website connected in any way with Adams’ employer, the law firm of Shumaker, Loop & Kendrick, LLP.