A United States patent is a grant by the U.S. Government to
an inventor. The patent grant gives the inventor the right "to
exclude others from making, using, offering for sale, or selling
the invention throughout the United States or importing the invention
into the United States."
To be patentable, an invention must be new or "novel." The invention must also not be obvious to a "person of ordinary skill in the art." Such non-obviousness is determined in view of all the prior art that exists (whether or not the inventor personally knows of the prior art).
Obtaining a Patent
To obtain a patent on your invention, you must file a written
application with the United States Patent and Trademark Office
(USPTO). You may file the application yourself, or you may hire
a registered patent attorney or a registered patent agent to
prepare and file the application on your behalf.
The patent application must fully describe and particularly claim
the invention. A utility patent application includes several
sections, including the background, a summary of the invention,
a detailed description of a preferred embodiment (implementation),
drawings illustrating that preferred embodiment, claims that
particularly define the invention, and an abstract of the invention
A USPTO Examiner examines the application. The Examiner searches
the prior art available at the USPTO (which consists principally
of previously issued U.S. patents, but also includes textbooks
and technical publications). The Examiner issues a written "Office
Action" giving the USPTO's initial opinion about whether
the invention is patentable.
If you are successful in convincing the USPTO that the invention
is patentable, the USPTO allows your patent application. After
you pay the issue fee charged by the USPTO, the USPTO issues
and publishes the patent.
Typically, the examination process takes 18 to 24 months. Some applications may take much longer. While your application is pending in the USPTO, the USPTO keeps the application secret (although the USPTO may begin publishing some pending patent applications beginning in September 2000).
When Should I File My Patent Application?
The law requires that you file your U.S. patent application within one year of certain events. Offering for sale a product incorporating the invention (even if the offer did not lead to an actual sale), or publishing a description of the invention start this one-year period. However, most countries other than the United States do not provide this one-year period. Therefore, if you anticipate seeking patent protection outside the United States, you consider filing the original patent application before publicly disclosing the invention or selling product incorporation the invention.
Should I Search the Prior Art?
Before filing a patent application, you may want to know
what "prior art" is likely to be relevant in determining
whether your invention is patentable. In many instances you will
know what prior art is closest to your invention. In other instances,
you may want to perform a search of the prior art. Such a patentability
search may give you an approximate idea of whether your invention
is patentable, and if so, the possible breadth of patent coverage
you may be able to claim. The results of the search will allow
you or your patent attorney to more precisely focus on what makes
your invention different from the prior art.
However, no search is perfect. During examination of the application, the USPTO Examiner may find prior art that is closer to the invention than the art discovered in the search. Even after the patent issues, another party (such as a potential infringer) may discover pertinent art that was not uncovered in the search or by the USPTO.
Length of Patent Protection
Patent protection begins on the day the patent issues.
For a utility patent that issues on a patent application
filed today, patent protection expires 20 years after the date
the application was first filed with the United States Patent
and Trademark Office. Maintenance fees must be paid approximately
3, 7, and 11 years after the patent issues. If the maintenance
fees are not paid, the patent will expire.
Plant patents also have a term that ends 20 years from
the date the patent application was first filed. There are currently
no maintenance fees required for plant patents.
A Design patent has a term of 14 years from the date the USPTO issues the patent. There are currently no maintenance fees required for design patents.
Outside the United States
Patents are territorial, and generally may be enforced only
in the country that issues them. Thus, United States patent rights
extend throughout the entire United States, its territories,
and possessions. However, United States patent rights do not
extend to other countries. Therefore, you must seek patent protection
in each country in which you want to have patent protection.
You must consider many factors in deciding whether to try to
obtain patent protection in a particular country.
There are certain treaties among many of the major industrialized countries that make the process of applying for patent protection in other countries somewhat simpler than if you had to approach each country individually. However, the process of obtaining patent protection outside the United States remains rather expensive.
A person infringes a patent when that person (or company)
uses one of the rights granted by the patent by making, using,
offering for sale, or selling the invention covered by the patent.
To be covered by a patent, a product or process must include
every element of the portion of the patent called the "claim."
If the product or process includes all the elements of the patent's
claim, the product or process infringes the patent. This remains
true even though the product or process adds additional elements
not included in the patent. However, if an element of the patent
claim is missing from the product or process, the product or
process likely does not infringe the patent (although there are
exceptions). A person who improves a product patented by another
by adding to the patented product may be able to get a patent
on the improved product, yet still infringe the original patent
if the improved product includes all the elements of the claim
of the original patent.
The patent owner may file a lawsuit against an accused infringer
to force the infringer to stop making the infringing product,
or to obtain money damages for the infringement, or both. The
court then determines whether the accused product or process
infringes the patent. The court may also find that the patent
is invalid, which is a conclusion that the USPTO should not have
issued the patent. Once a patent is found to be invalid, it cannot
be enforced against anyone.
Before you begin manufacturing or selling a product, you may
want to have an infringement search done. The purpose
of an infringement search is to help determine if there are patents
that your product is likely to infringe. If so, you may be able
to redesign the product, or obtain a license from the patent
holder. However, it is impossible for an infringement search
to uncover every potential infringement issue. Therefore, the
results of an infringement search cannot guarantee freedom from
an infringement question.
Profiting From Patent Rights
You can profitably exploit the "right to exclude"
provided by a patent in many ways.
You may use your patent rights to help keep competitors at a
There are many ways the use a patent right to help you and your business. An attorney with a range of experience in handling such rights can help you explore your options.
Webster, New York 14580
585 / 423-9215