Definition

A patent is a contract between the United States Government and an inventor granting the inventor an exclusive right to manufacture, use and sell the invention for a fixed period of time.  The right to a patent encourages people to invent and makes it easier for inventors to obtain investment money to develop their inventions.

Inventions Subject to Patents

Only new and innovative discoveries and inventions that relate to the following can be patented:

  • Any new and useful process, machine, manufacturer or composition of matter, or any new and useful improvement thereof
  • Any distinct and new variety of plant
  • Any new, original or ornamental design for an article of manufacture

Assuming an idea, discovery or invention fits into the above categories, it must also be significant and serve a useful purpose to be entitled to protection under the law.

Prior Use or Description

A patent will not be issued if the invention has been described in any written publication, was in public use or offered for sale in the United States for more than one year before an application for the patent was filed or if there is has been a prior conflicting patent.

Pre-patent Rights

Until a written and dated record of work on a new concept is made, an inventor has no rights; mere ideas that have not been recorded are not protected under the patent law.  After an inventor has created a written record of his/her invention, but before the patent application if filed, the invention is generally treated as a ‘trade secret’ (see below).  If a third party improperly obtains the inventor’s records and either applies for a patent or further develops the invention, the inventor will have a claim for an injunction (court order directing a party to stop an activity) or damages against the party who improperly obtained the information.

Patent Pending

After the patent application has been filed for but before ‘letters patent’ are issued, the inventor or manufacturer of an invention will generally mark the product ‘patent pending’ to warn others of potential patent infringement should the patent subsequently be granted.

Rights Conferred by a Patent

A patent gives the inventor exclusive rights to the invention for a period of time. This includes the right to use, make and market the invention and to bring a lawsuit to prevent someone else from ‘infringing’ (copying, using or selling) the invention and for damages resulting from the infringing party’s use of the invention.

Procedure for Obtaining A Patent

In order to obtain a patent and exclude others from making, using, or selling an invention, the inventor must complete a patent application and file it with the Federal Patent and Trademark Office in Washington.  Only attorneys and agents recognized by the U.S. Patent Office can represent inventors before the patent office.

Applicant for a Patent

Only the inventor or the inventor’s guardian or estate can obtain a patent.  While the inventor can prepare the patent application him/herself, it is highly recommended that an applicant retain an attorney to assist in the process. The attorney may have a drawing or model of the invention prepared to conform to the requirements of The United States Patent Office.

Patent Examiner

A patent examiner, employed by the United States Patent office will review a validly filed patent application. The inventor and the examiner work together to define what the patent covers; if there is a dispute, the parties will try to work out an agreement.  The examiner will search for prior patents both in the United States and in foreign countries to determine whether the invention is new; based on this search the application will be allowed or disallowed in whole or in part.  Once an application is “allowed” or accepted, a description of the patent will be published in The Official Gazette.  Publication allows anyone who objects to the patent to communicate with the patent office.  If there are no objections, upon payment of an application fee, the inventor will receive a ‘patent deed’.  If the patent is denied, the inventor may appeal to a Board of Appeals within the patent office and thereafter to the courts.

Interference

If the patent examiner discovers two or more pending applications for the same invention, the examiner will initiate a proceeding called an ‘interference’.  A hearing will be held to determine who is entitled to the patent.  At the hearing a determination will be made as to who first built and tested the invention and who filed the first application.  Inventors are well advised to date, sign and fully document an invention and to file the patent application at the earliest possible time.

Necessary Documents

When applying for a patent the inventor must file a petition or request directed to the Commissioner of Patents to grant ‘letters patent’, together with a description of the invention, accompanying drawings, a summary, a title of the invention. An affirmation stating that the applicant believes that he/she is the first investor and a fee must accompany the application.  The issuance of letters patent creates a presumption that the patent is valid.  The patent may, however, be attacked in the federal courts.

Enforcing a Patent

After a patent is issued, the owner must take appropriate steps to protect the patent from infringement. If the owner of a patent discovers that another is wrongfully making unauthorized use of the invention, the first step that is usually taken is to send a ‘cease and desist’ letter to the infringing party, demanding that the unauthorized use be immediately discontinued.  Often, notification to the violator will result in an agreement whereby the violator will terminate the wrongful conduct.  If  attempts to negotiate a voluntary termination of the unauthorized use fail, the inventor must file an action in the Federal District Court to enforce the patent, alleging an “infringement”.  In the Federal Action, the inventor will ordinarily apply for an “injunction”, i.e., an order preventing continued unlawful infringement of the patent; in addition the inventor may claim money damages.  The money damages aspect of an infringement lawsuit will ordinarily include the payment of royalties and/or an accounting of profits earned by the entity that violated the patent.

Duration of Patents

The life of a utility patent (machines, articles, compositions, production process) is 20 years from the date of filing.  Design patents are granted for a term of 14 years.  Plant patents (granted to one who has invented or discovered a distinct or new variety of plant) are granted for a term of 17 years.

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