Patent Protection

Michael A. Bondi

What is a patent?

A patent is a legal right that allows an inventor to stop others from copying an invention for a limited period of time. The government grants the inventor this right in exchange for the inventor’s public disclosure of how to make and use the invention.

The invention is defined in an application examined and published by a government agency, such as the United States Patent and Trademark Office, the Canadian Intellectual Property Office, etc.

What types of patents are there?

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

Utility patents are granted on articles of manufacture, machines, compositions of matter and processes. The invention must be new, useful, and not obvious to a person having an ordinary level of skill in the related technology.

Design patents are granted on ornamental designs of manufactured articles. The invention must be original and not obvious to a designer having an ordinary level of skill in the related field of design.

Plant patents are granted on plant varieties that are asexually reproducible. The invention must be new and not obvious to a plant breeder having an ordinary level of skill in that field.

How do I get a patent?

Patent rights are granted only after an inventor has filed a patent application and has convinced each country’s patent office that an invention meets all the criteria for patentability.

A utility patent application must contain: (1) a written description of the invention, detailed enough for an ordinary person in the relevant art or technology to reconstruct the invention; and (2) a description of the best version of the invention known to the inventors as of the filing date.

After the application is filed, a patent examiner reviews the application, comparing the invention with prior known technology. Examiners will often initially reject an application because they believe the invention is not patentable.

The applicant and attorney then respond with reasons why the examiner’s initial determination should be reconsidered. Often this process involves amending the application to narrow the scope of protection sought for the invention. If the patent examiner maintains the rejection, the inventor may appeal the decision to an administrative review board and later, if necessary, to the courts.

What is a provisional patent application?

A provisional patent application is an informal patent application filed to establish a priority date. To retain the filing date, a formal patent application must be filed within one year of the filing date of the provisional patent application.

Are there limitations on the right to obtain a patent?

A patent application must be filed within one year from when the invention was first sold, offered for sale, publicly used or publicly disclosed. Otherwise, no patent can be gained no matter how worthy of protection the invention may be. This is called a “grace period” and is not available in other countries.

Who owns a patent?

A patent is a piece of personal property that can be owned, licensed, sold, mortgaged, willed, or inherited.

In the U.S., patent rights are granted only to the first true inventor(s). If there is more than one inventor, they are each joint owners in an undivided interest in the entire patent. Each joint owner, without the consent of the others, may transfer or license her or his right in the patent, without sharing any proceeds she or he may receive. However, a joint owner may not transfer the entire patent without consent of the other joint owners.

When inventions are made by an employee, the patent rights often belong to the employer, depending on the employment agreement between the employer and employee.

Inventions made under government contracts or grants may give the government limited rights under the patent.

What is patent infringement?

A patent is infringed when anyone, without the patent owner’s permission, makes, uses, sells, offers for sale, or imports a patented invention.

Anyone who contributes to infringement (such as a supplier to an infringing manufacturer) or induces infringement of a patent, may also be liable.

Patent infringement can be settled in private negotiations by licensing the rights to an infringer in exchange for royalty payments or other value, such as an exchange of each other’s patent rights.

Patent rights are enforced at law by winning a lawsuit in a trial court. A patent owner might also be able to win a suit with the United States International Trade Commission, if the infringing article is manufactured abroad and imported into the United States.

What are the legal remedies for patent infringement?

Legal remedies for patent infringement include:

  • Preliminary and permanent court orders prohibiting continued infringement;
  • Punitive damages for willful infringement, up to a total of three times the money damages;
  • Attorney’s fees in exceptional cases; and
  • Other remedies depending on circumstances.

How is foreign patent protection obtained?

Foreign patent protection is obtained by following the same basic procedures in each country as in the United States. Under international treaties, this can be done by:

  • Filing a separate application in each country where patent protection is desired;
  • A single application with the European Patent Office, which serves most European countries; or
  • An international application under the Patent Cooperation Treaty, to which most industrial countries belong.

Most countries allow an applicant to treat her or his application as if it were filed on the same date as the home country filing date, if the foreign application is filed within one year after the home country application was filed. The benefit of the home country filing date is important because rights in most foreign countries are granted to whoever is the first to file an application on the same invention.

Most foreign countries do not have a grace period for filing an application after an inventor discloses an invention to the public. If foreign patent protection is desired, a patent application must be on file in the applicant’s home country before making any public disclosure of the invention.