What Is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. US patent grants are effective only within the US, US territories, and US possessions.

The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Patentee cannot however make, use, offer for sale, or sell, or import his own invention if doing so would infringe the prior rights of others. Ordinarily there is nothing that prohibits a patentee from making, using, offering for sale, or selling, or importing his own invention, unless doing so infringes another patent which is still in force. For example, a patent for an improvement of an original device already patented would be subject to the patent on the device.

How Long the Patent Protection Lasts?

The term of a new utility patent begins with the date of the patent grant and usually ends 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. A maintenance fee is due 3 1/2, 7 1/2 and 11 1/2 years after the original patent grant.  Design patents last 14 years from the date of the patent grant, and no maintenance fees are required for design patents.

After the patent has expired anyone may make, use, offer for sale, or sell or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. The patent terms may be extended for certain pharmaceuticals and in certain other circumstances.

Types of Patents

Novelty And Non-Obviousness: Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

• the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

• the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained.

If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else.

If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, the inventor must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.

Even if the invention is not exactly shown by the prior art, and involves one or more differences over the similar already known technology, a patent may still be refused if the differences would be obvious. The invention must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

Provisional Application for a Patent

Provisional application establishes an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

After filing a provisional application, the applicant has up to 12 months to file a non-provisional application for patent. The claimed invention in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional applications are not examined and will become abandoned 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

Who May Apply For A Patent

Only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or, if there is no joint inventor available, a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

Assignments and Licenses

A patent is a personal property and may be sold to others or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee. The patent law provides for the transfer or sale of a patent, or of an application for patent, by an an assignment in writing. The assignment may transfer the entire interest in the patent. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had.

The assignment can also be for a part interest, e.g. for a half interest in a patent. An assignment can also be done for a particularly specified part of the United States.

Joint Ownership

Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit provided they do not infringe another’s patent rights, without regard to the other owners, and may sell the interest or any part of it, or grant licenses to others, without regard to the other joint owner, unless the joint owners have made a contract governing their relation to each other. It is accordingly dangerous to assign a part interest without a definite agreement between the parties as to the extent of their respective rights and their obligations.

The owner of a patent may grant licenses to others. Since the patentee has the right to exclude others from making, using, offering for sale, or selling or importing the invention, no one else may do any of these things without owner's permission. A patent license agreement is in essence nothing more than a promise by the licensor not to sue the licensee. A license is a legal contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.

Infringement of Patents

Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent.

If a patent is infringed, the patentee may sue for relief in federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also hold that that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

Patent Marking and Patent Pending

A patentee who makes or sells patented articles is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.

Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the US PTO. The protection afforded by a patent does not start until the actual grant of the patent.

Treaties and Foreign Patents

The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wishes to obtain patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.

A patent treaty which is adhered to by 140 countries, including the United States, is known as the Paris Convention for the Protection of Industrial Property. The treaty provides that on the basis of a regular first application filed in one of the member countries (e.g. in the US), the applicant may, within 12 months (6 months for design patents) apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over applications for the same invention that may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the first application, will not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention.

Another treaty, known as the Patent Cooperation Treaty (PCT), is presently adhered to by over 90 countries, including the United States. The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format. The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed.

[Based on US PTO Materials]