Patents FAQ

Q: How do you get started with patent protection?

A: The best starting point for a patent requires that someone, preferably the inventor, describe the idea in writing and with drawings or illustrations (if necessary), which can then be used to outline a search of patents and other literature in the field. If the search indicates a patent may be possible, then a patent application may be prepared. After examination, a patent may be issue based on the patent application.

Q: Are there different types of patents?

A: There are three classes of patents: utility patents, plant patents (for a living plant) and design patents. Each type of patent covers a different field of invention. Title 35 of the United States Code is the patent statute.

Q: What does a patent application consist of?

A: A patent is issued based on a patent application. A patent application is given a serial number and filing date, upon filing of the same at the United States Patent and Trademark Office. If the application is permitted to become a patent, the patent is given an issue date and a Patent Number. By tradition only, issue dates are always on a Tuesday.

In March 2013, the United States went from a first to invent system to a first to file a patent application system, the latter system having been the law in most countries. Now the United States patent system complies with the first to file system found in the vast majority of countries in the world. So all other matters being equal, the sooner you file your patent application, the better off you will be.

Q: How long does a patent last?

A: Utility patents and plant patents have a life measured from whatever the issue date is to 20 years after the filing date. That is to say, the effectiveness of the plant and utility patents is measured from the issue date to the end of the referenced 20-year term. Due to a recent change, if the term of a utility patent is less than 17 years as a result of a delay caused by the Patent and Trademark Office, the term will automatically be extended to be at least 17 years.

Design patents issuing on applications filed before December 18, 2014, have a life of 14 years from the issue date. Design patents issuing on applications filed after May 15, 2015, have a life of 15 years from the issue date.

Also, the Patent Office will now publish patent applications 18 months after filing unless a request is made to the contrary. Even if a request is made not to publish the application, in the event that the case is eventually filed in foreign countries, the inventor or the patent attorney for the inventor has 45 days after that foreign filing, wherein the request to keep the application secret and unpublished must be withdrawn. This brings the United States patent law into compliance with the rest of the world.

As a further result of that modification, the patent term for a utility patent has been changed again to a minimum 17 years, unless the delay is caused by the patent applicant. Earlier, the patent term was changed from 17 years from date of issue to a point measured from the issued date point 20 years beyond the filing date. The effect of this change, in most cases, was to increase the life of a patent to run more than 17 years. However, Patent Office delays can delay the issuance of a patent and therefore shorten the life of a patent, were it not for the extension favoring the 17-year rule. To reiterate, United States patent law has now been modified to make the minimum patent life in the United States 17 years unless the patent applicant caused the delay. Thus, if the United States Patent Office causes the delay, the patent will automatically be extended, giving the patent a life of at least 17 years.

Q: Is the first person to file the one who gets a patent?

A: A recent change in patent grants a great advantage to the person who files a patent application on an invention first. This is a major change, because the first to invent used to have a good chance of getting a patent, in spite someone else filing first. One positive rationale is that this change helps get new technology to the public sooner. One negative rationale is that this change favors the wealthier inventor.

With regard to a plant patent, whoever invents or discovers and asexually reproduces any distinct and new variety of plant may obtain a plant patent. Generally, such new plants are produced by grafting and not from seeds.

With regard to a design patent, whoever invents any new, original and ornamental design for an article of manufacture may obtain a design patent therefor. It is quite possible to protect an article of manufacture with both a utility patent and a design patent.

With regard to a utility patent, whoever invents or discovers any new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereon may obtain a patent therefor. The utility may even protect the idea behind the invention. This, of course, is subject to other limitations of the patent law.

The other requirements to which a utility patent or any patent may be subject are:

  • Whether anybody has done it before
  • Whether the item or subject matter sought to be patented has been publicly disclosed or offered for sale
  • Whether the item is obvious in view of prior work that was done in the area to which it pertains

No patent may be renewed. Any improvement in a patent must meet all patent requirements to be patentable.

Whether anybody has done it before raises some interesting questions. There have been situations where an invention has been searched prior to filing the application. Then the application was filed. The Patent and Trademark Office did a search and issued a patent. After all of that, a reference was discovered in a publication on the invention covered by the patent, with that reference being published more than one year before the patent application was filed. As a result, the patent could not be enforced.

Whether the item or subject matter sought to be patented has been publicly disclosed or offered for sale also is related to the one-year limit. If the inventor does either of those more than one year prior to filing, the inventor has lost the right to file an application. If the inventor files within that one-year limitation, the inventor may do so in the United States but not in most other countries.

Q: What does a patent examiner do?

A: Obviousness, like beauty, is in the eye of the beholder. A patent examiner, whose job is to examine patent applications and determine if the invention is patentable, considers almost everything obvious. A patent attorney, whose job is to get a patent application through the Patent and Trademark Office, considers nothing obvious.

A typical example of obviousness assumes that a person has come up with an invention comprising elements A, B, C, D and E. A patent or other disclosure is known showing elements A, B, C, F and G in combination. A second patent or other known information shows that F and E are equivalent. A third patent shows that G and D are equivalent. The examiner could thus combine these three patents and say that it would be obvious to substitute equivalents from one patent into another patent and render the idea set forth in the patent application obvious.

There are exceptions to this obviousness rule. If the sum of A, B, C, D and E produces a synergistic, new and unique result instead of an obvious result, the combination may still be patentable. For example, if a certain combination of well-known elements is formed and can be proven to cure AIDS or cancer, that combination of known elements for that purpose may well be patentable.

Q: How has patent law changed in recent years?

A: One of the major changes in patent law occurred as a result of Diamond vs. Chakrabarty, 447 U.S. 303; 206 U.S.P.Q. 193 (1980). Prior to that case, the rule was that life forms could not be patented. The particular patent application was denied by the Patent and Trademark Office. The proper appeals led to the United States Supreme Court. The Supreme Court held that the genetically modified bacteria adapted to break down crude oil was patentable, even though it was a life form. The genetically modified bacteria were held to be patentable because of the modification to the naturally occurring gene. The Patent and Trademark Office has created a new division to handle patents of this type.

Another major change in the patent law revolves around the patentability of business-related processes. In State Street Bank & Trust Co. v. Signature Financial Group, Inc. 149 F3d 1368, 47 USPQ2nd 1596 (Fed. Cir. 1998), United States Patent 5,193,056, relating to a data processing system for implementing an investment strategy, was held to define a proper invention and not subject to summary judgment. The case was then sent back to the lower court for an infringement trial. There were certain physical acts required beyond the computer, which led to the court's decision. The effect of this decision, for which certiorari was denied, permits patentability of some business processes. With the court modification permitting patenting of business methods, modifications to the patent laws have been made to permit the earlier user of the business plan to avoid patent infringement.

Bilski v. Kappos, 130 S. Ct 3218, 561 U.S. Part 2 (2010), was a case decided by the Supreme Court of the United States. While this case could have overruled the State Street case, it did not, even though it held the matter in question unpatentable. Thus, a holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue" — an investigative tool, for determining whether some claimed inventions are processes — still survives. Despite finding the claims at issue to be ineligible for patenting as abstract ideas, the court refused to categorically exclude all business methods from the patent system. The court's application of the abstract idea doctrine and dismissal of the State Street Bank useful, concrete and tangible test failed to deliver a new test to help practitioners determine the distinction between a patent-eligible process claim from an ineligible abstract idea.

To obtain a plant patent, a plant must be asexually reproduced. Asexual reproduction refers to a plant produced by grafting or similar means, rather than a plant produced naturally or from a seed. A naturally occurring plant, even if it is able to be asexually reproduced, is not patentable.

A design patent protects the appearance of an article. The design patent is much simpler to write up than a utility patent or a plant patent. Thus, a design patent is less expensive to prepare, file and prosecute.

Each utility patent is basically its own short story describing the particular invention, which has utility in sufficient language, so a person may develop blueprints from the patent and produce whatever is described. The short story (or utility patent) must disclose how to make the device. The claims at the end of the utility patent define the scope of the invention.

Q: How long does a patent last?

A: With a utility patent or a plant patent, the owner of the patent may stop others from making, using or selling the patented idea for the life of the patent. Design patents issuing on applications filed before December 18, 2014, have a life of 14 years from the issue date. Design patents issuing on applications filed after December 18, 2014, have a life of 15 years from the issue date.

No patent is renewable.

Under certain circumstances, a drug patent may be extended. The extension is granted sometimes, because the Food and Drug Administration may not approve a patented drug for use until the patent has almost expired.

The reason the rights under a patent are phrased in a relatively negative fashion is that sometimes, in fact quite often, a new patent is an improvement on an old patent. In order to produce an invention under a patent, an item protected by a still-enforceable patent may have to be used. This cannot be done without permission from the holder of that patent. Thus, it becomes clear why there is this somewhat negative limitation of patent rights.

Q: Can you give an example of how the patent protection process works?

A: Let us assume for the sake of argument that four patents exist. The first patent covers invention A. The second patent covers invention B. The third patent covers invention C. The fourth patent covers a combination of invention A, B and C. Further assuming that all four patents are still valid and have not expired, patent rights in the negative limitation of being able to stop someone from making, using or selling a patented invention can be defined as follows.

The owner of the combination patent utilizing A, B and C must buy the required components from the owners of the respective patents or their licensees. As long as the owner of the combination patent buys the A component from the owner of Patent A, the B component from the owner of Patent B, and the C component from the owner of Patent C, there is no problem. The owner of the combination patent is free to make as many combinations and sell as many combinations as desired — provided each combination is made from the properly purchased components.

Each component may also be purchased from a duly authorized licensee of a patent holder. A retailer or wholesaler buying from a patentee is inherently authorized to make sales of the item. The only restriction on the sale is that it cannot be for the purpose of assisting a patent infringement.

If the owner of the combination patent buys component A in a foreign country and imports it into the United States for use in the invention covered by the combination patent, the owner of Patent A can use Patent A to stop that action. If the owner of the combination patent buys the component A from any source other than an authorized source of the owner of Patent A, the owner of the combination patent has a tremendous problem and is guilty of infringement.

Likewise, the owner of Patent B can sell component B to anyone. However, the owner of Patent B cannot sell the patented component B to anyone that he knows will use that component B to make the A plus B plus C combination to infringe the combination patent. The owner of the patent relating to component B would be a contributory infringer with regard to the owner of the combination patent. Thus it becomes clear why rights under a patent are negatively defined.

Q: What is the advantage of having a patent?

A: The big advantage of having a patent revolves around the protection offered by federal law. Anybody copying a patent without permission, and thereby infringing the same, can be brought into Federal Court. The Federal Court can triple the damages a jury would award and require the copying or infringing party to pay the attorney fees for the patent owner. If one party brings a lawsuit against another party, the general rule of law is that each party will pay its own attorney fees. With this provision that attorney fees must be paid by the defendants if the suit is lost combined with the treble damages, the great advantage of this statute becomes clear.

Q: What does it mean to say "patent pending"?

A: If a person actually has a patent application on file at the United States Patent and Trademark Office, that person may mark covered devices as "patent pending." To falsely mark patent pending on a device without actually having an application on file subjects the claimant to severe civil and criminal penalties under the law. After the patent has issued, it is a good idea to mark the patent with the patent number. In this way, everyone using the product will be on notice that the product is protected by a patent. Then anyone copying the product can be subject to maximum damages.

Some patents can be held invalid. For example, there is usually a patent search prior to filing of a patent application. The Patent Examiner will also conduct an independent search on the application as filed. A patent may then issue. After the patent issues, it is sometimes discovered that someone developed the subject matter of the patent more than one year prior to the filing of the patent application. Such a discovery renders the patent invalid.

Q: What is the difference between a patent and a monopoly?

A: Throughout history, patents have been confused with monopolies. Monopolies for the most part are considered unacceptable. However, with the first patent being granted in the Third Century BC in Greece and the first patent act being instituted in Venice in 1474, patents have advanced the cause of technology. The patents throughout history have been found to promote technology and to promote advances. A patent gives the patent owner a chance to make money on the invention covered by the patent until the patent expires.

Q: When were patents first issued in the U.S.?

A: In the United States or what is now known as the United States, the first patent statute issued in Massachusetts in 1641. In the 1800s, a very important state patent was issued in New York to John Fitch for making steamboats. However, as is well-known, Robert Fulton's design of a steamboat became better known and was probably superior to that of John Fitch.

In the first United States patent are included the signatures of Thomas Jefferson, George Washington and Edmund Randolph. These three men were the top government officials of the day. They acted as the examining office for that patent. Today this function is performed by the United States Patent and Trademark Office, under control of the Commissioner of Patents and Trademarks, as a part of the Department of Commerce.

In what appears to be a minor reorganization which became a federal law in 1999 and should not affect the functioning of the Patent Office, the Patent Office has been separated from the Trademark Office and a commissioner appointed for each branch. These commissioners still report to a person in the United States Department of Commerce. However, the title of the Commerce Department head has been changed from Commissioner of Patents and Trademarks to Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

In 1790, the Federal Government completely took over the duties of issuing patents. The current patent act is based, with modifications, on the 1952 Patent Act. A patentable invention since 1952 has been based on what is called "The Standard of Nonobviousness." In other words, is what has been done worthy of a patent? If it is worthy of a patent, there is nothing known in the world that can render the particular invention sought to be patented obvious.

It is quite possible to file a patent application based on a device that has not been constructed. It is, however, always advisable to make and test a device before a patent application is filed. The constructed device may well indicate required changes in the device to improve its function. The changes may not be covered by the patent application and the resulting patent.

Q: What constitutes patent infringement?

A: If somebody makes a device that might infringe a patent, the device must be analyzed to determine whether it performs substantially the same function for substantially the same result in substantially the same way as the patented device. If the device reads on the claims of the patent and meets the other criteria, there is an infringement.

Ownership of a patent belongs to the inventor or inventors named thereon, without a countermanding agreement. This agreement should be in writing. Otherwise, if an inventor builds a device for a person or a company, the inventor owns the patent on the device, with the person or company having only the right to use the device during the course of business.

Another change in the law is a federal requirement for an invention promotion service to provide evidence regarding its success rate. Such a service must disclose how many inventions have been successfully manufactured and its percentage rate of success. Hopefully, this change will eliminate most of the undesirables from that business.

To attempt to file for a patent on your own without the help of an experienced patent attorney is to risk problems including loss of potential profit. Call the Law Office of Mathew R. P. Perrone, Jr., today for a free consultation or complete the online form.

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