A Primer on Patents

Everything you needed to know about patents but were afraid to ask…

By Pin Tan, Patent Attorney and Managing Partner of Lightbulb IP

Protection for New and Useful Inventions

Patents provide broad protection over inventions or discoveries that are both new and useful by giving patent holders the exclusive right to make, use, sell, or offer to sell their patented inventions. This means a patent holder can exclude third parties from making, using, or selling his or her patented invention. Unlike other forms of intellectual property protection, a patent holder’s exclusive rights extend to third parties who independently develop or discover the invention.

Types of Patents and Patent Applications

There are three types of patents and patent applications, namely, utility, design, and plant patents. Utility patents protect the way an invention is used or the way it works, while design patents protect the decorative appearance of an invention such as its shape or surface ornamentation. Plant patents protect new and distinct varieties of plants that have been asexually reproduced. With certain exceptions, utility and plant patents have a term of 20 years, while design patents have a term of 14 years.

It is important to note another type of patent application called a provisional patent application. Provisional applications are granted a filing date and “patent pending” status just like their non-provisional counterparts. However, a provisional application expires after one year, is not examined, and cannot become a patent without first converting it to a non-provisional application. However, there are fewer formal requirements for a provisional application, which typically lowers costs for preparation and filing. Because of this, provisional applications are often used as a vehicle to disclose an invention to establish a filing date with the U.S. Patent and Trademark Office.

Brief Overview of the Patent Process

Once filed, a patent application will be entered into the examination queue at the U.S. Patent and Trademark Office. The waiting period is typically at least 24 months from the date of filing but may be more or less (and sometimes substantially more).

During examination, a patent examiner will search for prior art that discloses some or all of the invention as claimed in the application. The “invention as claimed” is the invention as specifically recited in the claims of the patent application.

Typically, prior art consists of existing patents and patent publications filed by others or even the applicant him or herself (if for example filed more than one year ago). Prior art is not limited to patent references however. The Examiner may cite virtually any other printed publication or other material (printed or otherwise) that predates the invention, if that material was accessible to the public. In addition, if an applicant is aware of relevant prior art, this prior art must be disclosed to the patent examiner for consideration as well.

If prior art references (alone or in combination) disclose the invention as claimed, the patent examiner will issue an Office Action that sets forth the reasons why a patent cannot be granted at this stage. The applicant may then set forth arguments, claim amendments, and make appeals, among other things, in response to the Office Action.

Once the patent examiner is convinced that the prior art does not disclose each and every element of the claimed invention, a patent will be granted. If the patent examiner remains unconvinced, the patent application could ultimately become abandoned.

Requirements for Patentability

There are two main requirements for an invention to be unique and thus patentable in the United States. First, the claimed invention must be novel. Novelty is defined under 35 U.S.C. § 102 and generally means that the claimed invention is not disclosed by any single prior art reference. For example, no single prior art reference discloses each and every element of the claimed invention.

Second, the claimed invention must be non-obvious. Non-obviousness is set forth in 35 U.S.C. § 103 and generally means that no one or more prior art references render the claimed invention obvious. A patent examiner may combine teachings from two or more prior art references to deem a claimed invention obvious (i.e., disclosed by the prior art). The patent examiner may also assert that a claimed invention is obvious over a single prior art reference, especially if such reference shares some elements or functionality with the claimed invention. This assertion may be made on the basis that one or more references suggest, but not necessarily explicitly disclose, elements of the invention. For this reason, an obviousness finding can be difficult to refute.

Regarding patent protection abroad, each country (and there are some regional patent applications) typically has its own requirements to obtain patent protection within its jurisdiction. For the most part however, the standards by which an invention is judged unique are similar to the novelty and non-obviousness requirements described briefly above. The Patent Cooperation Treaty, to which most countries are a party, provides a useful tool to aid in seeking patent protection abroad especially in cases where an applicant desires patent protection in multiple countries.

Help For Inventors/Creators

There are three stages in a patent’s life. The process begins with preparation of a patent application, which includes preparation of a very detailed disclosure, which describes the invention to be patented. During the preparation phase, a patent attorney’s job is to capture and disclose your invention in words and formal drawings, and also to claim the invention in a way that seeks the broad protection over the invention (without encroaching upon any known prior art).

Once filed, the patent application will be examined as described briefly above. Your patent attorney can help navigate this process by proposing strategies and preparing responses as appropriate to your patent application.

If your invention receives a patent grant and you wish to license or sell your exclusive rights, a licensed patent attorney can also advise or assist you with regard to patent licensing and assignment. In addition, your patent attorney can provide guidance on the proper “care and handling” of your patent grant, including as to the scope of your exclusive rights.

A licensed patent attorney can also offer legal advice and counsel regarding other statutory or common law intellectual property protections that may be available to protect your invention.  Some inventions, works, or creations may be better protected or further protected through a trademark, trade secret, or copyright for example.

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