Intellectual Property: Patents

What a Patent is NOT

NOT AUTOMATIC (It must be applied for)
The Government issues patents. The Government does not know you have an invention until you tell it. The Government does not know you want a patent until you file a patent application. The Government has to protect the public by NOT granting patents to applicants for inventions that are in the public domain or that someone else made, and that requires the Government to examine patent applications thoroughly before issuing patents. So, patents do not come automatically. The inventor must apply for a patent and the inventor must prove to the Government that the inventor is entitled to a patent.

NOT A PERMIT OR LICENSE (It is a right to stop others not a permission for you)
A patent is like a fence around a lot, the lot being the "patented invention." Someone else could have a bigger fence surrounding your fence which prevents you from getting to your fenced lot or the Government could, under appropriate conditions, stop you from getting to your fenced lot or could tear your fence down. That is, someone else could have a broader patent that blocks a patentee from making, using or selling the patented invention. Or, there could be a regulation preventing its use. What is granted is strictly the negative legal right to exclude others, to keep them out. For example, new drugs are patented all the time, but FDA approval is required before these patented drugs can be marketed in the US.

NOT SELF-ENFORCING (There are no “patent police”. You and your attorneys enforce it)
The government will not take any positive action on behalf of the patent owner. A PATENT simply grants the right to exclude and leaves it to the patent owner to enforce the right- - - if he can. For this reason, a patent is sometimes called "a mere license to sue." The government's role in case of a suit is to allow the patent owner to use the federal judicial system where suits can be brought and judgments obtained and orders for enforcement made. People, including big and small companies, are often deterred by the existence of a patent and the potential for legal problems if they infringe a patent, but they may think they can design around the patent and achieve the same objectives as the patent. If the patent is written well, it will be a much better deterrent, so the extra price paid to hire a good patent attorney is generally a good investment.

NOT NECESSARILY WORTH ANYTHING (We discussed that above)
Since a patent simply grants the right to exclude, its value rests entirely upon the utility of the invention and the desire of others to use it or to be in possession of the right to exclude. That is, someone might want to buy the patent from its owner. A patent is simply a document and not an invention. The invention is that which is described and claimed in the patent. It is also important to note that a patent may describe an additional invention or inventions beyond what is covered by the claims of the patent. Inventions which are disclosed in a patent but not claimed are, by law, dedicated by the patent owner to the public, so the disclosure must be carefully written. For a patent worth assessment, one can check http://www.2xfr.com/patentvalue_about.asp.

NOT A TRADEMARK OR COPYRIGHT
Patents relate to inventions, while trademarks relate to brand names and copyrights to artistic creations. The United States Patent and Trademark Office handles both patents applications and trademark applications. The Copyright Office handles copyright applications are handled by, which is a division of the Library of Congress. States can (and do) grant state trademark registrations, but only the Federal government can issue patents grants or copyright registrations.

A Brief Word About Trademarks

A TRADEMARK owner has the right to stop others from using a confusingly similar trademark (brand name) in commerce in such a manner as to confuse the public as to the source or origin of goods (or services) bearing the mark. A patent on a trademarked product might allow the trademark owner time to better develop the reputation and goodwill associated with the trademark during the life of the patent (this is the case with many medical drugs), but otherwise has little to do with the trademark. A product shape might be the subject of both a patent and a trademark, but when the patent expires the invention is public whether or not trademarked. However, just because a product may be made after expiration of a product does not mean someone can sell the product under the former patent owner’s brand name. If NIKE has a patent on a sneaker and the patent expires, anyone can make an identical sneaker, but will not have the right to put the NIKE name or insignia on that sneaker without Nike’s permission. For extensive information on Trademarks, see http://burdicklawfirm.tripod.com/tmark.htm.

A Brief Word About Copyrights

A COPYRIGHT permits the copyright owner to exclude others from copying the copyrighted material (books, plays, music, statues, motion pictures, television programs, etc.) but copyright protection does not extend to an underlying invention which might be described in the copyrighted matter. A copyright might stop others from copying a printed publication about a product, but would not stop use of the product itself. For example a copyrighted manual for a cellular phone would not stop someone from building a cellular phone as described in the manual. However, if the cellular phone was patented, the patent would give the patentee the right to stop anyone else from building the cellular phone. For more extensive information on Copyrights, see http://burdicklawfirm.tripod.com/webcop.htm.

Automatic Nature of Trademark Rights & Copyrights

Unlike patents, rights in trademarks and copyrights are partly automatic in the USA. Trademark rights in the USA are automatically acquired by using the trademark in commerce and copyright is automatically acquired by merely creating the artistic work, in both cases without doing any more or filing any application. In each case, however, important additional rights, particularly with respect to enforcement, are obtained by REGISTRATION of the trademark (through the US Patent and Trademark Office) or REGISTRATION of the copyright (through the Copyright Office of the Library of Congress).

Now, back to Patents....

A patent cannot be kept secret, but a patent application or "patent pending" is kept confidential by the United States Patent and Trademark Office for at least 18 months after it is first filed. An essential aspect of obtaining a patent is that a full and complete "enabling" disclosure of the "best mode" of the invention is made so that others may practice the invention when the patent expires (absent some superior right in others). The only secrecy in the patent system is that, by law, the application for patent is maintained in secrecy by the Patent and Trademark Office for 18 months following the date it is first filed as a patent application. Remember, the word “patent” means open to public view. The day the patent issues, copies are made available to anyone who wants them (paper copies for a modest price and electronic copies for free). So a patented invention cannot be suppressed or kept secret and any contrary belief is simply a misconception. There are situations where the Department of Defense, which has the option of reviewing new patent applications and placing a “secrecy order” on them preventing publication of the application or issuance of a patent, but those are very rare and any inventor receiving a secrecy order should immediately contact a patent attorney experienced in handling military classified patent applications, as the inventor is generally entitled to compensation from the Government. The most a patent owner can do in keeping the invention off the market is fail to commercialize the invention himself or refuse to allow others to do it by refusing to grant licenses and by patent infringement actions against any infringers. Thus an inventor comes to a legal fork in the road and must either choose to keep the invention secret and NOT patent it or to patent it knowing that it will be publicly disclosed in the patent. In other words, inventions, may be suppressed by keeping them out of use and secret, but patents are public documents that can neither be kept secret nor suppressed.

A patent cannot be enforced outside the country or region that granted it. A U.S. patent can only be enforced in the US, including U.S. territories and possessions. A U.S. patent is not a Canadian patent, a Japanese patent, or a European patent, so it cannot be enforced in Canada, Japan, Europe or in any other foreign country. To do that patents must be obtained in those countries or regions, and this is often done by use of an “International Patent Application” (under the Patent Cooperation Treaty, which virtually all countries follow). However, the importation of products from abroad which infringe a U.S. patent may be stopped (the US Customs Service will even help) and the infringer may be sued here and any US seller may be sued here. But, a US patent can be the basis for a foreign patent if timely foreign application is filed. The United States has ratified several teaties which provide significant advantages for those wishing to seek foreign patent protection, based on a patent application filed in this country. The details and provisions of such treaties are beyond the scope of this brochure but can be explained by a registered patent lawyer. Suffice it to say that securing foreign patent protection can be very expensive. Even so, foreign patent protection must be considered early since foreign patent laws generally place much more emphasis on early filing. Due to the expense, foreign patent protection may not be worthwhile unless a market for the patented invention abroad is important to the patent owner. Note:There is an "international patent" which can be obtained through a special application filed at the US Patent Office and which can be made effective in both the US and nearly all major countries under the Patent Cooperation Treaty or "PCT." A registered patent attorney should be consulted before attempting to file a PCT application so that it is done properly, as otherwise all rights could be lost world-wide, leaving absolutely no protection anywhere.

The grant of a patent does not provide any assurance that practice of the patented invention will not infringe a patent owned by another.

Example: Mary invents and patents the wheel. John invents and patents a special wheel for a cart, a cartwheel. Who can make the cartwheel. John can't, even though he invented the cartwheel, because a cartwheel is a wheel and Mary has a patent on the wheel. Mary can't because John has a patent on cartwheels. (The solution is a "patent license" from one or both to the other or for one to sell a patent to the other or for them to join forces.) So…if this is true…why get a patent? Suppose John never patented the cartwheel. Now he can't do cartwheels because of Mary's wheel patent. But, Mary can do cartwheels because John did not protect cartwheels with a patent and thus has no right to stop her. Mary does cartwheels and John cries because he did not get a patent.

Information on this page was supplied with permission of Bruce E. Burdick.


Patents | What is Patentable?