What is a patent?
A patent is a grant of a property right which permits the owner of the patent to exclude others from making, using, or selling the invention as claimed in the patent. United States patents are granted by a special branch of the Department of Commerce called the U.S. Patent and Trademark Office (USPTO).
There are three different types of patents that are available under U.S. law:
(1) a utility patent on the functional or structural aspects of an apparatus, composition of matter, method, or process;
(2) a design patent on the ornamental design of useful objects; and
(3) a plant patent on a new variety of living plant.
Each type of patent confers the right to exclude others from infringing on the invention, industrial design, or plant variety. In return for getting a patent and receiving the right to exclude others, the patent owner must relinquish the secrecy of the invention and fully disclose the best mode of making and using the invention to the public.
What are the Conditions for Obtaining a Patent?
1. Novelty- the invention is not “anticipated” or identical to an invention disclosed in a single piece of prior art.
2. Non-Obviousness – the invention must be different enough from the prior art so as to not be obvious in view of a person reasonably skilled in the relevant art.
3.Utility- the invention must have a useful purpose. Almost all inventions nowadays meet the utility requirement other than inventions such as perpetual motion machines.
A patent cannot cover a pure law of nature or a mathematical algorithm. There is also a time limitation within which the inventor may file a patent. Under U.S. law, a patent must be applied for within one year of the date of first offer for sale, public use, or publication of the invention.
Who May Apply for a Patent?
Under U.S. law, only the inventor may apply for a patent. If the inventor is deceased, application may be made by the inventor’s legal representatives, who is usually the administrator or executor of the inventor’s estate. Usually, companies file patents in the name of inventory employees by way of invention assignment. Employers should be cautious and make sure each of their employees and independent contractors has signed an invention assignment agreement with them upon start of the employment or consulting services.
Two or more inventors may apply for a patent as joint inventors though they did not physically work together on an invention, did not contribute equally to the invention, or their contribution is not represented in every claim of the invention. However, each inventor must claim some role in the final conception of the invention. An employer, supervisor, investor or venture capitalist is not a joint inventor and cannot be named in the application as an inventor. If the inventor refuses to sign the application or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply for a patent on behalf of the refusing inventor.
How Long Does a Patent Last?
The term of a U.S. utility patent is 20 years from the date on which the application for patent was filed. If the application contains a specific reference to an earlier filed application under 35 U.S.C. §120 for Continuation (applications that broaden the scope of a previous disclosed invention) and Continuation-in-Part (applications that add new matter or material to a previously disclosed invention) applications, §121 for Divisional (applications that arise from dividing a previous application that contains two separate inventions) applications or §365(c) for International applications, the term begins from the date the earliest such application was filed.
Issued utility patents are subject to the payment of periodic maintenance fees which must be paid at intervals during the life of the patent. Failure to pay these fees results in the expiration of the patent.
How About International Patent Protection?
The United States is a signatory to several major international conventions which permit U.S. inventors to seek foreign patent protection. The most important of these is the Patent Cooperation Treaty (PCT) ratified in the 1970’s. The PCT provides for the filing and processing of a single international patent application in a special branch of the USPTO called the U.S. Receiving Office. The PCT process is akin to an “options” contract in which a single application is filed which claims the right to file in over all PCT member countries of the world and “locks in” the US patent application filing date as the priority day for patent filing in those member countries should the applicant decides to seek patent protection there. The PCT provides for a preliminary examination procedure which is given weight by regional and national patent offices of member countries. International protection must be procured within one year of the U.S. filing date in the case of a utility patent.
