PATENT PRIMER
©2009 Dennis Donahue
In 1859, Abraham Lincoln concluded a lecture on discoveries and inventions with a famous quote praising our patent system
as adding "the fuel of interest to the fire of genius." Lincoln also declared, "The great difference
between the Young American and Old Fogy is the result of Discoveries, Inventions, and Improvements." Lincoln,
himself a patent holder, described inventors as the "sole hope of the future." Today, the future of American
business and growth does indeed depend on the advancement and protection new ideas.
In
legal terms, patents are personal property that can be owned, purchased, sold, licensed, or used as collateral.
Our patent system grants inventors the following rights and protections:
- Exclusive
rights to their ideas for a limited time, even if they never make it to market or are ever put to actual use.
- The
right to exclude others from making, using, selling, offering for sale or importing the patented invention.
Patent offices do not determine whether an invention to be patented infringes on any prior patent. It is possible
that an improvement on an existing product or prior invention may be patentable, but the improvement could also infringe on
one or more prior unexpired patents. This is why it is important to seek legal counsel to research prior patents and
determine if the use of your invention infringes on someone else's patent and visa versa.
What constitutes a patentable invention?
- Generally, a patent can
be granted on any invention that is a new and useful process, machine, manufacture or composition of matter, including any
new and useful improvement thereto.
- The invention must be novel and cannot be obvious.
- The U.S. Patent &
Trademark Office (USPTO) grants three kinds of patents: Design patents which protect
the ornamental design of a manufactured item; Plant patents which protect asexually
reproduced plants, and Utility patents which can include "anything under the sun
that is made by man" (the Supreme Court's words, not mine!)
- The USPTO will not allow patents on laws of nature,
physical phenomena, abstract ideas, or inventions that are not useful, such as a perpetual motion machine or an invention
that is offensive to public morality.What's the process we will go through, and why do we need an Attorney?
What's the process we will go through, and why do we need an Attorney?
- Research
into prior inventions and patents to determine potential patentability or possible infringments
- Drafting of technical
claims and drawings for invention
- Timely submission of application and fees to the the US Patent Office
- Review
of application by patent office examiners
- Possible revisions, appeals, and other submissions requested by the USPTO
- Final
issuance of the patent!
Preparing patent applications and conducting proceedings with the
USPTO to obtain patent protection requires the knowledge of patent law and the USPTOís rules and regulations, as well
as knowledge of the scientific or other technical matters involved in the particular invention. Accordingly, when selecting
a patent attorney, keep in mind the person's technical qualifications as well as their legal experience. Although the USPTO
allows inventors to prepare, file and prosecuted their own applications, it also warns inventors that "unless they are
familiar with these matters or study them in detail, they may get into considerable difficulty... there would be no assurance
that the patent obtained would adequately protect the particular invention."
What's the rush?
- The USPTO strongly advises inventors to quickly contact
a registered patent attorney or patent agent, if they believe they have something worth patenting. This also appiies
to companies whose employees have inventions related to the business. Waiting too long to contact a patent attorney
could be detrimental to protecting your rights in the invention. Once it's out there, it's fair game. In
fact, The USPTO warns, " any public use or sale in the United States or publication of the invention anywhere in
the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of an
U.S. patent on it. Foreign patent laws in this regard may be much more restrictive than U.S. laws."
- The
patent laws of the United States and other countries limit their enforcement of patents to the patents issued by the respective
country's patent office. For example, Federal Courts in the United States will enforce patents issued by the USPTO, but courts
in England, Germany and Japan will not enforce the same U.S. patent in their respective countries. Therefore, to obtain international
protection for an invention in several countries, a corresponding patent must be obtained from the patent office in each of
these countries. That can be taken care of through foreign associates working with your attorney in the US.
