Patents stimulate private investment in new, useful and non-obvious technological information (inventions) through the granting of exclusive property rights to the patent holder.
1. What is a patent?
The subject matter of patent is the invention or discovery of any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement of a previously existing process, machine, manufacture or composition of matter. Patents may also protect ornamental features (designs) rather than the function of articles.
Invention is the absolute prerequisite to patentability, and it is defined as the finding out, contriving, or creating, by the action of intellect, of something not existing or not known before.
For an invention to be patentable, the invention must be:
1. New, which means that the person applying for the patent must be the original inventor of the object claimed, and that the invention must not have been known or used by others before the discovery of it; and
2. Useful, which means that the invention must be capable of being beneficially used for the purpose for which it is designed; and
3. Non-obvious, which means that for an invention to be patentable it must, at the time of the invention or discovery, be an improvement over the prior art which would not be obvious to a person of ordinary skill in that art.
2. Who holds the property rights?
The first inventor holds the property rights.
o In the United States, the first person to invent the claimed subject matter may apply for and receive a patent.
o Note: The first person to file an application for a patent may not receive that patent if it can be proven that that person is not the first person to invent the claimed subject matter.
Where more than one person is the inventor, all of the inventors hold the property rights.
Patents may be sold, assigned, willed or otherwise transferred to people other than the inventor or inventors of record. Upon the filing of the appropriate documents of assignment with the Patent and Trademark Office, the assignee obtains all of the rights and limitations granted to the inventor.
3. When do rights vest?
A new, useful and non-obvious invention becomes eligible for patent registration when it is both:
1. Conceived, which occurs at the time the inventor has formulated and disclosed a complete idea for a product, process or composition, and the resulting invention is made sufficiently plain to enable those skilled in the art to understand it; and
2. Reduced to practice, which occurs at the time the invention is perfected, successfully performed, and adapted to actual use.
4. What are the rights/limitations?
The issuance of a patent grants to the inventor (the patent registrant), for a limited term, the right to exclude others from:
o Making, using, offering for sale, or selling the invention throughout the United States, or importing the invention into the United States; and
o If the invention is a process, the right to exclude others from using, offering for sale, or selling throughout the United States, or importing into the United States, products made by that process.
A "utility" patent (defined below) generally provides up to 20 years of exclusive rights from the time the patent application was filed.
A "design" patent (defined below) has a term of 14 years from the time the patent is granted.
Practical Patent Considerations
o "Utility" and "design" patents: There are two basic types of patents: utility and design patents. The utility patent is the most frequently acquired patent, with the word "patent" being regularly used as meaning "utility patent." The utility patent's subject matter includes machines, industrial processes, composition of matter and articles of manufacture. Utility patents might also be appropriate to protect new tools and machines used in creating new materials, methods or techniques for manufacturing new products.
A design patent protects any new, original and non-obvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, not its structure or utilitarian features.
o Complex applications: Design and utility patent applications are complex legal documents which are beyond the ability of most laypersons to prepare. Thus, it is advisable to consult a qualified attorney when considering the subject. Additionally, because of the complex application process, obtaining a patent can be expensive. Design patents are normally less expensive than utility patents and the prices for either design or utility patents depend upon the complexity of the invention.
o Patent searches: The PTO does not require an inventor to search the prior recorded files before filing an application; however, the inventor potentially wastes a lot of money if the invention is not new and novel. The total body of information which may be searched includes published patent applications, books, magazines, technical manuals, etc. At a minimum, most searches try to look at the same resources that will be reviewed by the PTO examiner. A search may cost $1000 and above, depending upon the level of research.
o Patent marking: Patented products are required to be marked with the word "Patented" or the phrase "Reg. U.S. Pat. and TM Off." and the patent's number. Failure to do so may negate a patent registrant's right to recover damages from infringement. If a patent application is being processed, the applicant may mark the product "patent pending" or "patent applied for" although protection does not begin until a patent has been issued. False or improper use of these markings is prohibited and may subject the offender to a penalty.
Further information concerning patents is presented on the Patent and Trademark Office's website by accessing General Information Concerning Patents. While these materials are helpful, it is advisable to secure qualified legal advice when planning to secure a patent.