As previously discussed, the main pillars of Intellectual Property are Patents, Trademarks, Copyrights, and Trade Secrets. We are now going to discuss Patents in greater depth.
Definition of a patent
A patent is a legal monopoly granted to an inventor or company for a certain number of years in exchange for disclosing the details of an invention. Patents are used to protect and promote innovation by giving inventors exclusive rights to their creations, allowing them to profit from their efforts and encouraging further innovation.
It is an agreement between the Inventor and the federal government that the Inventor will teach the world how to make and use his/her invention. In return, the federal government will provide the Inventor with a legal monopoly on new features that the federal government has indicated are patentable.
This legal monopoly generally expires 20 years after the filing date of the Inventor’s patent application. The Inventor is then allowed to stop others from making, using, selling, or importing products/services with patented features while the patent is active.
History of Patents in the U.S.
The U.S. Constitution, first adopted September 17, 1787, has a provision in Article I, clause 8 that states:
The Congress shall have 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.
These rights were further clarified in the first patent law in the United States, the Patent Act of 1790, signed into law by President George Washington and established a system for granting patents to inventors and creators.
This Act was followed by the “Patent Act of 1793”, the “Patent Act of 1836, and other legislation over the years.
The last significant patent legislation is the “Leahy-Smith America Invents Act,” passed on September 16, 2011. This Act changed the US Patent System to be similar to those of most of the world. We changed from being a “First to Invent” system to a “First to File” system. In the old “First to Invent” system, an Inventor could be granted a patent if he/she could prove that he/she invented the invention before another entity. The first person to invent an invention would have priority over one who invents later but files a patent application first. This law was changed to give priority to the Inventor who files his/her patent application first.
The Purpose of Patents
The purpose of patents is to encourage innovation by giving inventors and creators exclusive rights to use, sell, and profit from their inventions or creations for a limited time. The patent system incentivizes the development of new and useful technologies, products, and processes, which can benefit society by fostering economic growth and technological advancement.
As indicated above, the purpose of a patent system is to teach the world how to make and use the Inventor’s invention. The world cannot make use of it until the patent expires; generally 20 years after the patent application is filed.
The purpose of a patent is also to reward the Inventor, who initially is the patent owner, for his/her advancement of the science or design. The patent owner is given a monopoly on the novel features for a maximum of 20 years. The rules of supply and demand allow the patent owner to charge a higher price for a patented product, have little or no competitors with equivalent products, and differentiate the patented product from others in the market. Patents can significantly increase income for the patent owner. For this and other reasons, intellectual property is the most valuable asset for most companies.
Types of Patents
The three main types of patents in the United States are utility, design, and plant patents.
Design patents cover new, original, and ornamental designs for an article of manufacture.
A design patent only covers the ‘looks’ of an object. There must be some unique or novel visible aspect of the object to warrant a patent, regardless of how the object functions. For example, take a dish detergent bottle that has a unique shape and is appealing to a consumer. If this shape is different from the shape of currently sold and past dish detergent bottles, it could possibly be patented. The Inventor does not have to show any improved functionality, such as a bottle that drips less or a cap that is easier to attach, since only the ‘looks’ of the bottle matter with Design patents.
Typically, 5% of the patent applications filed are Design Patent applications.
Plant patents cover new varieties of asexually reproducible plants invented or discovered and asexually reproduced.
The part of the plant used for asexual reproduction is not a tuber food part. The plant must be invented or discovered in an uncultivated state to be eligible for a patent.
A plant patent is granted by the United States government to an inventor (or the Inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the patent owner’s right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any part thereof, into the United States. 35 U.S.C. 161.
(Utility Patents cover eligible patent-related inventions, including genes, traits, methods, and plant parts.)
Typically, 1% of the patent applications filed are Plant Patent applications.
Utility patents cover new and useful discoveries or innovations. Utility Patents cover how a new device functions, how a new process works, or a product made by a new process. They cover what the invention does for someone (its utility) and the advantages it provides the patent owner.
Utility patent applications are by far the most common. Typically, 94% of the patent applications filed are Utility Patent applications.
Obtaining a Patent
To obtain a patent, an inventor or creator must file a patent application with the United States Patent and Trademark Office (USPTO) and prove that the invention or creation meets the requirements for patentability. The USPTO will review the application to determine if the invention or creation is new, useful, and non-obvious, and if it meets these requirements, the USPTO will grant a patent.
The requirements to obtain a patent include novelty, non-obviousness, usefulness, and enablement.
Novelty requires that all of the elements of an invention have not been made public in a single reference. A rejection for lack of novelty is 35 U.S.C. 102 ‘Anticipation’.
A reference is any publicly available article, paper, document, description, advertisement, video, audio track, simulation, model, device, or process which discloses at least one element of an invention.
If all of the elements of an invention are found in several references, and it is obvious to combine these references, the invention receives an ‘Obviousness’ rejection under 35 U.S.C. 103.
All inventions should have a practical use. If an invention has no practical use, it is rejected as lacking usefulness under 35 U.S.C. 101.
The patent application is required to ‘teach one of ordinary skill in the art to make and use the invention’. Failure to provide enough detail or clarity in the patent application to enable one to make and use the invention will result in an ‘Enablement Rejection’ under 35 U.S.C. 112.
The Application Process
The process for obtaining a patent involves drafting and filing a patent application and responding to office actions. The Applicant can also conduct a patent search. A search is optional since the USPTO conducts a global patent search when examining your patent application. An Applicant would conduct a patent search for his/her benefit to determine what parts of an invention are already known.
Drafting and filing a Utility application can become a time-consuming and expensive process, so it is good to know before what is already known and what is left to protect.
Rule 56 in title 37 of the Code of Federal Regulations requires Applicants to notify the U.S. Patent And Trademark Office of relevant prior art uncovered or known by the Applicant. Therefore, if an Applicant performs a search, he/she is obligated to notify the USPTO of relevant references found in the search. The Examiner may use these references to reject the patent application.
The Applicant is required to file a Declaration indicating that the Inventor is the first and true Inventor of the inventions described and that he/she did not copy it from any other person or entity.
An Application Data Sheet (ADS) with general information about the Inventors, previous related applications, assignees, and other information is typically filed with the patent application. It is not required but is strongly recommended to meet various filing requirements.
A Transmittal Cover sheet indicating the number of text pages, figure sheets, and supplemental papers is also filed with the application.
The application and related papers are uploaded in Microsoft Word or Adobe Acrobat format to the USPTO website https://www.uspto.gov.
The Applicant will receive an initial electronic filing receipt for the papers filed with a USPTO application serial number and filing date.
Examination of a Patent Application
After the application has been uploaded, it is considered a ‘filed’ and ‘pending’ patent application. The USPTO reviews the application for formalities and notifies the Applicant of any shortcomings. For example, they check to verify that all the required parts of the application and related papers have been filed. The USPTO sends notices of missing parts and other problems.
Any problems regarding missing or incorrect content may cause the USPTO to refuse to give the application a filing date.
Once the application has met all the formalities, it is assigned to a group art unit based on its subject matter and an Examiner in the Group Art Unit. Usually, there is a backlog of patent applications for each Examiner to examine, so there is a waiting period of generally between 12 -18 months before the Examiner can examine the patent application.
When it is time to examine the application, the Examiner identifies elements of the invention that are disclosed in each claim of the patent application.
The Examiner then performs a prior art search looking for the elements of the claims in published documents globally to result in prior art documents. The prior art search includes pending patent applications, active issued patents, expired patents, and published papers and articles.
The Examiner then decides which elements are disclosed by one or more prior art documents found in the search.
If all of the elements of a claim are found in a single reference, the claim may be rejected as being ‘Anticipated’ by the prior art reference under 35 U.S.C. section 102.
If the elements of a claim are found in two or more references, and it is ‘obvious’ to combine the elements in the references into a single invention, the claim may be rejected as being ‘Obvious’ in view of the prior art reference under 35 U.S.C. section 103.
Applications may also be rejected under other sections of the USPTO Rules for not being ‘enabling’, not ‘specifically claiming’ the invention, and other reasons; however, these are the most common rejections.
Some inventions may deal with ‘nonpatentable’ subject matter. The USPTO will refuse to issue a patent on some subject matter, even if novel and non-obvious. This refusal may be for various reasons, such as ‘public policy’. An example would be restricting Applicants from obtaining a monopoly (an issued patent) on life-saving medical procedures, thereby allowing all to use the medical procedures.
Another subject matter restriction on patents would be for ‘Abstract Ideas’. Claims directed toward ‘Abstract Ideas’ have no outward physical sign that a claim is being executed and, therefore, cannot be enforced. An example would be a claim directed to a process that involves ‘mental steps’. Since there is no physical evidence of the execution of the process, it cannot be enforced in Court. Therefore, it makes no sense for the USPTO to issue claims that cannot be enforced.
The Examiner drafts and sends a report referred to as an ‘Office Action” to the Applicant indicating the results of the search and examination.
The Applicant is allowed to amend the claims and provide written arguments in response to the rejections.
Typically, two to three Office Actions are sent over the course of three years, with the last being a Final Office Action.
Maintaining a Patent
To maintain a patent, the patent owner must pay maintenance fees to the United States Patent and Trademark Office (USPTO) at 3.5, 7.5, and 11.5 years after the patent’s issue date over the life of the patent. If the maintenance fees are not paid, the patent will expire, and the Inventor or creator will lose the exclusive rights to use, sell, and profit from the invention or creation.
Description of Fees
Most of the cost to file a patent application is the Patent Attorney’s time. Even if you plan to draft and file a patent application on your own, most likely, you will need a Patent Attorney to make the legal argument in response to an Office Action. The time to draft and file a Utility Patent varies based on the complexity of the subject matter and the assistance provided by the Inventor. However, an average Non-provisional Utility Patent Application is roughly twenty hours. Patent Attorney billable rates can easily be in the $300-$500 per hour range.
The USPTO patent filing fees include a basic filing fee of $128/$64, a search fee of $280/$140, and an examination fee of $320/$160 for Small Entities/Micro Entities, respectively.
A Small Entity is defined as an entity having less than 500 employees. One qualifies as a Micro Entity if the owners are individuals who a) currently have fewer than five patents in his/her name and b) have made less than $212,352 last calendar year.
One may also qualify as a Micro Entity if the owner is a non-profit organization if:
- a) the Applicants obtain the majority of their income from a United States institution of higher education; or
- b) the Applicants have assigned, granted, or conveyed, or be under an obligation by contract or law to assign, grant, or convey an ownership interest in the application to a United States institution of higher education.
Enforcement of a Patent
Enforcement of a patent refers to protecting and defending a patent holder’s rights to their patented invention. Enforcement can involve legal action against individuals or companies infringing on the patent holder’s rights by making, using, selling, or importing the patented invention without permission.
Patent infringement involves making, using, selling, or importing a patented invention without permission from the patent owner.
One can only enforce an issued, active patent application.
The alleged infringing device/process should fall under the wording of a claim of the patent to cause a patent infringement of that claim.
If the alleged infringing device/process lacks one or more elements of a claim, it does not infringe the claim.
There are usually multiple issued claims in a patent that allows the patent owner multiple chances at catching an infringer. Usually, the claims vary in breadth; some cover more subject matter than others. A broader claim is like a large net having a greater ability to catch an infringer. However, if the claim is too broad and covers elements known before the invention, the claim may be invalid for being overly broad.
More specific claims are less likely to be overly broad, but they are smaller ‘nets’ and make it more difficult to catch the infringer.
Patent litigation involves legal proceedings to resolve disputes over patents.
U.S. patent litigation is a legal process in which the patent holder (Plaintiff) alleges that a party (Defendant) has made, used, sold, or imported into the U.S. a product/process that infringes at least one claim of the Plaintiff’s patent. The Plaintiff initiates the process by filing a Patent Infringement Complaint in a federal District Court that has personal jurisdiction over the Defendant.
The Defendant may allege that the patent was improperly granted (Invalid) and that it is invalid and cannot be enforced if it can find evidence that Plaintiff has failed to meet the requirements above for obtaining a patent.
Evidence and witnesses are brought by both sides before a judge or jury to determine the patent’s validity and, if valid, infringement of the patent.
If the patent holder is successful, the Court may award damages and an injunction ordering the accused infringer to stop using the patented technology.
Patent litigation can be very time-consuming and expensive. One large litigation I managed ran for more than six years, and legal fees were $3.5M. This litigation had two plaintiffs, my company was the exclusive licensee of the patents, and the other Plaintiff was the owner of the patents.
Obtaining and protecting a patent is important because it allows the Inventor or owner of the patented invention to have exclusive rights to make, use, sell, and import the invention for a certain period. This exclusivity can give the Inventor or owner a competitive advantage in the market. It can also be a source of income through licensing or selling the patented invention to others. In addition, obtaining a patent can also be a way for an inventor to recognize and protect their intellectual property and to establish their credibility and reputation in their field.
If you need help with a patent, contact us at Zale Tech Law.