PATENTS

A. What is a Patent?

   A patent is a grant issued by the U.S. government giving the holder rights regarding the invention, wherein the rights are measured according to the subject matter "claimed" in the patent. The basis of U.S. patent rights is found in the Constitution (Article I, Section 8): "The Congress shall have the Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

   The term characterizing the rights under a patent is commonly phrased as: "a right to exclude others from making, using and selling the invention as claimed." But, these rights under a patent are qualified. For instance, another person may hold a basic patent on an invention which controls over improvement patents relating to that invention. This is called a domineering patent. In this case, the holder of a domineering patent can prevent inventors of improvements from practicing their patents. Other situations can also arise. For instance, you may receive a patent on an invention in an area that is regulated or even prohibited by state law. In such a case, you may not have the right to practice your invention, even though the U.S. Patent & Trademark Office (USPTO) granted you a patent on the invention and no one else owns a domineering patent on the technology. Also, anyone practicing his/her invention must do so using common sense and reasonableness so as to avoid being sued for negligence. Still further, the holder of a patent is required not to "misuse" it. What this means is that inequitable licensing arrangements may result in a court of law invalidating the patent because of misuse of the patent right.

    There are three types of patents: Utility (which protects structural and functional features of an invention, Design (which protects ornamental appearance of an invention) and Plant (which protects an asexually reproduced plant, as for example a new type or rose). A patent is applied for by filing a patent application with the USPTO in Washington. A patent has at least one "claim". It is the claims which legally define what the invention is and, importantly, the extent of your rights in terms of controlling the making, using and selling of your invention.

    Be aware that not timely filing a patent application can have serious consequences. You must file a patent application within one year of any public disclosure or offer for sale of the invention. Also, the minute you attempt to sell or publicly disclose the invention, your foreign filing rights may be lost unless you already have a U.S. application on file and the requirements set forth in an applicable international patent treaty apply to your situation.

 

B. Types of Patents

    There are three kinds of patents: utility patents, design patents and plant patents.

    Utility patents are available for inventions having useful operation, ergo the term "utility". Examples of subject matter suitable for utility patent protection are machines (such as an apparatus to make paper), manufactures (such as a sheet of paper) and compositions (such as a chemical used in making paper), and processes (such as a method for making paper). Utility patents have a term (in most cases for patent applications filed on or after June 8, 1995) of 20 years from the date of filing. A utility patent application includes a "specification" in which a description of the invention is given that is complete enough so that somebody skilled in that art could make and build the invention without an undue (excessive) amount of experimentation. Except for some chemical inventions and some other instances, a drawing showing the invention must be included. The utility patent application ends in one of more "claims" which define the subject matter of the invention in legal terms.

    Design patents protect the ornamental appearance of an article, ergo the term "design". A design is represented by a drawing and a brief specification. The specification is usually merely a description of the various figures of the drawing, and a single claim defines the inventive subject matter. Design patents have a term of 14 years.

    Plant patents protect newly discovered asexually produced varieties of plants, for example a uniquely colored rose.

    Utility patents usually afford broader scope of protection than design patents because the description (specification) and definition (claims) of the patent can often cover alternative embodiments, whereas a design is pretty much held to what is shown. In instances where the heart of the invention involves operational details, internal moving parts, electronics, steps of assembly and manufacture, etc., a utility patent application is the choice. In instances where the heart of the subject matter is appearance, such as scroll work, then a design patent application is the choice.

    In some instances, design and utility patents can be applied for with respect to the same invention, wherein the utility patent application is intended to protect the utility aspect and the design patent application is intended to protect the design aspect.

 

C. How is a Patent Obtained?

    A formal application must be filed with the U.S. Patent & Trademark Office (USPTO). The patent application must set forth in detail the subject matter of the invention, and in doing so the best mode to carry out the invention, as the inventor best believes. The USPTO charges a filing fee to process a patent application.

    Upon filing of a regular patent application, the USPTO assigns the patent application to an Examiner who will then read it over and perform a search of prior art (usually patents and other publications) to ascertain if the invention is both "novel" and "unobvious". The Examiner will then prepare an "Office Action" which usually contains one or more grounds of objection or rejection. The Office Action is then sent to the inventor (or the inventor's attorney if he/she has one).

    The inventor then has an opportunity to amend the patent application to overcome the Examiner's grounds for objection/rejection and/or argue the Examiner is erroneous (this is referred to in patent parlance as a "traverse").

    The Examiner will then consider the amendment, and either agree to allow the patent application to mature to a patent (known as an "allowance") or again object/reject.

    If an allowance is granted, the USPTO will request payment of an "issue fee". The patent usually issues about three months after the payment is made.

    On the other hand, if an objection/rejection is given, either now or at the next go-round, the Examiner will mark the Office Action as "final". Now the options of the inventor are limited. For example, a new patent application can be filed to force the Examiner to consider new argument (this is known as a Continuing Practice Application), file an appeal to the Board of Patent Appeals and Interferences (a board made up of three Examiners-in-Chief, who render considered, impartial opinions), and/or by visiting or phoning the Examiner in hopes of winning his/her favor.

    If the inventor does not respond to an Office Action within a set time limit (or pay for a permissible extension of time thereafter), then the patent application is said to have become "abandoned". In some cases an abandoned patent application can be revived upon the prompt filing of a petition to revive accompanied by a response to the Office Action, along with a fee, provided the abandonment was either "unavoidable" or "unintentional".

    Following is a flow chart of the process:

 

D. Patent Term

    Utility patents having a date of filing prior to June 8, 1995 have a maximum term of 17 years from the date of issuance or 20 years from the date of filing (or if the patent application has a priority reference to one or more earlier filed patent application(s), then 20 years from the earliest filed patent application in the chain), whichever is longer. Utility patents issued on or after June 8, 1995 have a maximum term of 20 years from the date of original filing (or if the patent application has a priority reference to one or more earlier filed patent application(s), then 20 years from the earliest filed patent application in the chain), whichever is longer.

    Design patents have a term of 14 years from the date of issuance. For plant patents, the term is the same as for utility patents.

    Patent terms are not renewable. Further, patent terms for some patents may be other than those indicated above for several reasons.

    1. Utility patents are subject to periodic payment of maintenance fees, and if the fee is not timely paid, the patent will prematurely expire.

    2. Utility patent term may be increased for time during certain procedural matters within the U.S. Patent & Trademark Office.

    3. The patent may be subject to a terminal disclaimer, wherein it is designated to prematurely expire on the date when another related patent expires.

 

E. Maintenance Fees

    The U.S. Patent & Trademark Office (USPTO) charges a periodic fee AFTER you receive your patent. These are known as maintenance fees. If the fee is not timely paid, your patent will expire (lapse). There are three of them, spaced out over the life of the patent. The amount that is paid depends on whether you are classified as "small entity" or a "large entity" (large entity happens when you assign your patent to an organization having 500 or more employees).

    Now, before you get mad at the USPTO for doing this to you, first consider the rationale behind it. The cost of processing a patent application is on the order of thousands of dollars (based upon adding-up all normal USPTO processing fees). Obviously, if an inventor had to pay this kind of money at filing or at issuance, very few people could afford to get patents. So, to make the system available to Mr. & Mrs. John Q. Public, the USPTO artificially sets low filing and issue fees, but gets back its costs later, after the inventor has had time to make some money off the invention. Make sense?

    Maintenance fees are due at 3, 7 and 11 years and must be paid by the sixth month thereafter. A late fee must also be paid if you pay during a subsequent six months "grace period". After that, if you haven't paid, the USPTO notifies you that your patent has expired.

    It might be possible to revive an expired patent within two years of the due date plus grace period (ie., within two years following the applicable 4th, 8th or 12th anniversary year), if a petition is filed alleging either an "unavoidable" or an "unintentional" delay in making the payment. Since the petition fee is costly, and it might be possible for someone to gain intervening rights of use, this procedure should be avoided.

 

F. Advantages of a Patent

    Firstly, a patent represents that the inventor was, in fact, the first, original inventor of the inventive concept defined by the patent claims. This formal recognition is really just as important as any reason for obtaining a patent. Obtaining a patent solely for this reason may not put bread on the table, but then it does give credit where credit is due. The reason is that an Examiner at the U.S. Patent & Trademark Office (USPTO) will do his own thorough search to see if anyone has previously devised anything that is the same as the invention (which is called anticipation) or suggests the invention (meaning your idea may be obvious to someone skilled in the art); if your invention survives this scrutiny, then the USPTO declares you to be the original inventor. Another benefit derived by this declaration of the USPTO is the fact that your patent is published, thereby further enhancing public recognition of your achievement.

    Secondly, a patent represents the potential to make money. The reason for this is that the patent laws grant to the holder of the patent the right to exclude others from using, selling or making the invention defined by the claims for a number of years. This monopoly is granted by the federal government and it allows you to control competition. Clearly, such an advantage can have very great worth if your invention has commercial value. Because it is possible under the patent laws to sell or assign a patent to other persons and companies, the patent holder possess significant potential economic power that competitors must reckon with.

    Thirdly, a patent represents an impressive sales tool. When an inventor conceives of an idea, there is no way of knowing whether the idea is truly new. The bottom line is that the vast majority of companies don't want to be bothered with new idea submissions unless you have a patent or are patent pending. Why? Because a patent means you've overcome significant hurdles: you've clearly defined the invention, you've survived examination at the USPTO, and you've decided your idea is meritorious enough to invest your time and money into it. Thus, commonly, inventors utilize their patent (or patent application) as a submission piece for sending to companies, the specification and the drawings serving to clearly and effectively articulate the invention. So, a patent (or a patent application) can serve as an excellent marketing tool for your invention.

    There are many other reasons why inventors seek patents. For instance, another underlying reason may be defensive in nature, in order to prevent a potential competitor from employing a new technology which the inventor, personally, has no interest in using. In any event, obtaining a patent is a true milestone achievement, the fact it can also make the inventor some money is the bonus that makes all the hard work worth it.