Intellectual Property: Patents
What is a Patent?A patent is an official document issued ("granted") by the federal government to the recipient ("patentee"), granting "the right to EXCLUDE others from making, using, or selling the invention throughout the United States." (35 U. S. C. § 154)
A patent has 3 basic parts:
- A grant
- A description ("specification") telling how to make the invention, and
- CLAIMS (defining, in words, what is protected).
- Background (describing the technical field of the invention and the problems that existed before the invention,
- Drawings (usually required) showing the invention; and
- Detailed Description(enables readers to make and use invention and shows best mode known to inventor at time of filing - i.e. satisfies statutory duties under 35 U.S.C.112)
- Claims, which define, in words, the limits of coverage claimed by the inventor.
Some BasicsAn essential feature of a patent is its limited life.
As mandated by the Constitution, Congress only has the right to grant patents for "limited times." Congress has set the maximum life of a patent at 20 years (subject to payments of large maintenance fees) from the date of filing of the application, at the end of which the patent right expires. Since it takes about two to three years to process a patent application, the patent owner gets about 17 years during which s/he has the right to prevent others from making, using or selling the patented invention. Thereafter the public gets free use of the invention.
The patent is not enforceable until it is issued. However, once issued, it can be retroactively enforced (subject to exceptions) from the date the patent application is officially published by the government, which may be before the date the patent is issued.
The patent is only issued after an examination by an "Examiner" at the United States Patent and Trademark Office in Arlington, Virginia. Other formalities generally take about two to three years. By law, the government must give the patentee an extension if the government spends more than three years processing the application, unless the delay is the applicant's fault.
After the patent expires (full 20-year period ends) or lapses (is not maintained by payment of the three maintenance fees), the patentee no longer has the right to exclude anyone from making, using or selling the invention of the patent and the public has the benefit of the disclosure in the patent. The government makes the trade of giving the inventor the period of exclusivity for the benefit of (a) having free use of this disclosure after expiration, and (b) having the benefit of the disclosure as soon as it is published for purposes of trying to improve on the disclosed invention. One of the things the Examiner checks is whether the disclosure enables someone of ordinary skill in the field of the invention to make and use the invention. The law also requires the inventor to disclose the best mode of the invention, so if an applicant hides the "best stuff," the patent is subject to invalidation. Accordingly, this is an argument that defense attorneys make in many patent infringement cases. It is important to have a patent attorney prepare the patent application in order to satisfy all these requirements and obtain a patent that can be enforced against infringers. It is pointless to disclose your invention in a patent publication without getting good protection in return.
The public benefits from the grant of a patent because the inventor must describe in the patent specification the best mode of the invention (known at the time of filing the application). Once the patent is issued, the inventor must also make all drawings and patents available for everyone to see. However, the patentee has the right to exclude others from making, using or selling the invention defined in the patent claims of the patent during the term of the patent in the USA. So, for analyzing for infringement, we look primarily to the patent claims alone. The patent claims are what is covered and may or may not be identical to what is described in the other portions of the patent. So, for analyzing for infringement, we look primarily to the patent claims alone.
Why are these documents called "patents?"The word "patent" means open, exposed, or evident. Our concepts of patents came from England and were first enacted by many of the 13 colonies and then written into our Constitution in much the form that the colony of New York had previously enacted them. In England, long before the American Revolution, it was an established practice and part of the law for the King or Queen to grant special exclusive privileges or monopolies to favored people or organizations by means of "Letters Patent," which were documents open to public inspection setting forth such grants. Letters Patent were granted to inventors for limited times as a reward and incentive for new inventions within the realm. With passage of time, the phrase "Letters Patent" was shortened to the term "patent," but both mean the same thing.
- Other Features of Patents
- How to evaluate an Invention
- What a Patent is NOT
- What is Patentable?
- When may One apply for a Patent?
- How to Obtain a Patent:
- STEP 1: Prepare a Disclosure of the Invention
- STEP 2. Conduct a Patentability Search
- STEP 3: Draft and File the Patent Application
- STEP 4: Prosecution of the Patent Application
- STEP 5: Pre-Grant Publication of the Patent Application
- STEP 6: Issuance of the Patent
- Exploitation of Patents
- Enforcement of Patents
Information on this page was supplied with permission from Bruce E. Burdick.