What Every Inventor Should Know about Patents
*This article first appeared in Inside Counsel Magazine on August 21, 2014:
What exactly is a patent? While most everyone knows that a patent protects one’s rights to an invention, very few people understand what a patent actually is, or what a patent does. A U.S. patent is an intellectual property right granted for a limited time by the government of the United States in exchange for public disclosure of an invention. It is 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 U.S.” Some, however, see a patent as much more than a property right. To people that have spent countless hours building gadgets in their garages, a patent is proof that one has officially become an inventor – like Tesla, Bell or Edison. For such hardworking innovators and entrepreneurs, obtaining a patent is the realization of a dream!
The Different Kinds of Patents
To begin with, inventors should understand that there are three different types of patents. The most common version is the utility patent, and this is the kind of patent most people mean when they use the term “patent.” A utility patent covers the invention of a machine, a manufacturing process, composition of matter, or any new and useful improvement thereof. Such a patent generally protects the way an invention is used and works. The second kind of patent is a design patent, which protects the way an article looks – that is, the ornamental features of an object. This kind of patent is appropriate for unique and innovative designs. Finally, there is a plant patent, which is granted for inventing, and asexually reproducing, a new and distinct variety of plant. However, in J.E.M. AG Supply Inc., d/b/a Farm Advantage Inc. et al. v. Pioneer Hi-Bred International Inc., the Supreme Court ruled that utility patents can also be issued for plants developed through genetic engineering.
There is almost no limit to the kind of subject matter that can be patented as long as it is new, novel (non-obvious) and useful. However, one cannot patent laws of nature, physical phenomena, or abstract ideas. In June of this year, the Supreme Court addressed the issue of abstract ideas in Alice Corp. v. CLS Bank International. The Court invalidated Alice Corporation’s patents for an electronic means of exchanging financial obligations between two parties, holding that these patents were drawn to abstract ideas, and that computer implementation did not transform these ideas into patentable inventions.
The Patent Process
By becoming familiar with the section on patents on the USPTO website, and the steps presented in this flowchart, one will gain a much better idea of the patent process. It should be noted that if one needs to protect both the functional and the ornamental characteristics of one’s invention, it may be necessary to obtain both utility and design patents. In fact, for some inventions, these two qualities may be difficult to separate. The different types of patent applications can be seen here.
The Patent Search
Prior to filing an application, it is important to conduct a thorough search of all previous public disclosures – commonly called “prior art” – including previously patented inventions in the U.S., foreign patents, and printed publications. Such a search is not required, but an application will be rejected if the USPTO uncovers relevant patents or non-patent literature when it conducts its own search. Further, even if the patent is granted, it may be invalidated later, during post-grant review proceedings, if it turns out that a similar, existing patent can be claimed by another. Therefore, it is a good idea to utilize the services of a qualified agent or attorney that has experience in conducting prior art searches.
Provisional and Non-provisional Patents
One option for inventors is to first file a provisional application for patent. Such an application can be filed without a formal patent claim, oath or declaration, or prior art statement. If filed properly, a provisional application can serve as a cheap, fast and easy way to establish an early patent filing date. The provisional application must describe the invention completely. However, a provisional patent application lasts only 12 months and cannot be extended; therefore, it is important that a non-provisional patent application be filed within this timeframe. Non-provisional applications are more costly and involved, and filing these will likely require the assistance of a qualified patent attorney. But, by filing a corresponding non-provisional application that references the provisional patent, the patent term can effectively be extended to 21 years (i.e., 1 year of protection under the provisional patent plus 20 years of protection under the non-provisional patent). Upon filing a provisional application, an inventor may legally begin using the “patent pending” label as a warning to would-be infringers.
The Denial or Loss of a Patent
A patent may be denied for a number of reasons. These include anticipation, obviousness, and insufficient description. The USPTO may also issue a denial simply because the patent was filed under the incorrect application or because the incorrect amount of fees was paid. It is therefore a good idea to work with a qualified patent attorney to ensure that an application is not rejected because of a simple, avoidable mistake. Further, once a patent is issued, maintenance fees are required for utility patents 3 ½, 7 ½ and 11 ½ years after the patent grant. If these fees are not paid, the patent can be lost. Plant patents and design patents, however, require no such maintenance fees. Inventors should also be aware that while plant patents and utility patents have the same 20-year duration, design patents last only 14 years.
The Rules of the Game Have Changed
With the implementation of the America Invents Act (AIA), the U.S. has adopted a “First Inventor to File” system for patent applications filed on or after March 16, 2013. Prior to this date, the U.S. followed a “First to Invent” system wherein one could still receive a patent even if one filed an application after someone else as long as one could sufficiently document that they were the first to make the invention. Under the new rules, it has effectively become a race to the patent office wherein the first inventor to file generally obtains the patent. However, inventors would be wise to seek counsel from a qualified patent attorney even when filing for a provisional patent to establish an early filing date. An incorrectly filed provisional patent application can result in the later denial of the non-provisional application – and this could mean losing the right to patent one’s invention forever!
John F. O’Rourke is a registered patent attorney and inventor at WHGC, P.L.C. He has nearly 40 years of overall experience in the applied sciences. He counsels and represents clients in matters concerning technology and intellectual property law. Mr. O’Rourke has prepared several hundred original U.S. patent applications across a broad spectrum of technical disciplines. [email protected]