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Patents

A patent is a document, issued by the federal government, that grants to its owner a legally enforceable right to exclude others from practicing the invention described and claimed in the document. Congress allows this right, for a term ending twenty years from the date of filing of an application for patent, to encourage the public disclosure of technical advances and as 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 the others ceases. The public is the ultimate beneficiary of the technical advance.

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 hands of the public i.e., patented or published anywhere in the world, on sale or in public use in this country. This one-year grace period, however, is not available in most foreign countries. A U.S. inventor who wants to obtain corresponding foreign patents must first file an application in the U.S. before any divulgation, whether in written or oral form, of the invention to the public. The description of the invention in the application must be complete enough to enable others to practice the invention. Moreover, the application must describe the best manner ("best mode") known to the inventor of carrying out the invention. The described invention must be new i.e., not invented first by another or identically known or used by others in this country or patented or published anywhere in the world before the actual invention date (not the application filing date). The invention also must be useful i.e., serve some disclosed or generally known purpose.

The requirement of unobviousness means that the differences between the invention and the prior public knowledge in its technical field must be such that a person having ordinary skill in this field would not have found the invention obvious at the time it was made. The proper subject matter of a patent is any product, process, apparatus or composition, including living matter such as genetically engineered bacteria or plants. Special provisions also permit patents directed to certain distinct and new varieties of plants (Plant Patent) and new original and 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.

Why Obtain A Patent?

Most inventors seek a patent to obtain the actual or potential commercial advantages that go along with the right 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 (as where the patented technology results in a better product or produces an old product less expensively) and/or (2) indirectly, by receiving income from the sale or licensing of the patent.

It is important to note that a patent (i.e., the right to exclude others) does not give the inventor the right to practice the invention. The inventor can practice his invention only if by so doing he does not also practice the invention of an earlier unexpired patent. While only one patent can be granted on a particular invention, it is easy to see how more than one patent could be infringed by making a single product. For example, consider that A has a patent on a new type of door and B invents an improved door of this type with a special lock. B could not sell the improved locking door since A's patent broadly covers all doors of this type. On the other hand, A could not incorporate the improved lock in his basic door since B's patent covers this combination. In these circumstances both A and B can be free to practice the best technology (locking door) only if each grants a patent license to the other.

The indirect exploitation of a patent may be exclusive, e.g., by selling all rights in the patent or granting 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 patents held by others which block the path to market. 

How is a Patent Obtained?

Patents are obtained through a complex administrative proceeding in the United States Patent and Trademark Office. Since the legal rules that govern this proceeding are quite extensive and often complicated, 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 right up 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 a patent which might be granted 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. While the attorney's opinion that the invention should be patentable is not a guarantee that the patent will be granted, if he finds that the invention probably is not patentable or economically worthwhile, the considerable cost and effort of going forward with the process can be avoided.

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. Particularly important is the duty to tell the attorney about prior patents or other prior inventions of which the inventor is aware, so this information can be disclosed to the Patent and Trademark Office. 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 application and a filing fee are then sent to the Patent and Trademark Office to effect a filing.

Congress has recently authorized a new form of preliminary patent application known as a Provisional Application, which can be filed at a lower cost and without claims and certain other formalities. This Provisional Application is not examined, but must be replaced by a conventional application within a year. The benefit of this new form of application is that it does not count in determining the expiration date of the patent, which is measured from the date of filing of the conventional application.

The filing of an application for a patent does not create any enforceable rights since the courts will only stop an infringer after the patent is granted. Nevertheless, marking a device Patent Pending or Patent Applied For may discourage potential infringers since 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 U.S. Patent and Trademark Office. After the patent has issued, it is also good practice to mark the products sold under the patent with the patent number because it gives the inventor certain additional legal rights.

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 write a letter (called an Office Action) commenting on it. The First Office Action often is a refusal to grant the patent, and the applicant then has an opportunity to modify the application to overcome the Examiner's objections. With the inventor's help, the patent attorney will reply in writing to the Office Action, usually making some changes and arguing that others are not necessary. Typically, at least two such exchanges between Patent Examiner and attorney are necessary to resolve all the legal and technical issues. In general, it now takes an average of about 18-22 months from filing to complete the examination process. During this period the application is kept secret, i.e., only Government personnel and persons authorized by the inventor are permitted to examine the 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 until it expires it also is necessary to pay progressively higher maintenance fees at 3 1/2, 7 1/2 and 11 1/2 years after the original grant.

While the patent grant makes the information in the application available to the public, the inventor has the right to prevent others from making, using or selling what is claimed for as long as the patent remains in force.