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VII. About Patents
All content compiled & written by Baker & Daniels, LLP.
Contents:
What Is a Patent?
What Is a Trademark or Servicemark?
What is a Copyright?
What rights does a Patent convey?
What is the Purpose of the Patent Law?
What is the Term of a Patent?
What Can Be Patented?
What does "non-obvious" mean?
Do I have to file a Patent Application before Selling my Invention?
Who May Apply for a Patent?
What Happens when an Application is filed at the USPTO?
How many People can Own a Patent?
What is a Patent License?
How is a Patent Infringed?
When can I mark My Product with Patent Pending?
Should My Employees Keep Laboratory Notebooks?
What Should I do if I am about to Sell (or Offer for Sale or Publicly Disclose) a New Product that May be Patentable?
How can I find out if my proposed product infringes someone else's patent?
What is Included in a Patent?
What Does a Patent Look Like?
What royalty rate should I expect to receive for my patent?
Can Any Attorney File a Patent Application for Me?
A patent for an invention is the grant of a property right to the inventor. The United States Patent and Trademark Office (USPTO) issues patents. Patents granted by the USPTO are effective only within the United States, U.S. territories, and U.S. possessions.
There are three types of patents:
- Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
- Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
What Is a Trademark or Servicemark?
A trademark is a word, name, symbol, or device (or logo) used in trade with goods to indicate the source of the goods and to distinguish the goods from the goods of others. A servicemark is the same as a trademark except that a servicemark identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" both commonly refer to trademarks and servicemarks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks used in interstate or foreign commerce may be registered with the USPTO.
Copyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.
The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; the Copyright would not prevent others from making and using the machine or writing their own description of the machine. The Copyright Office of the Library of Congress registers Copyrights.
What rights does a Patent convey?
A patent gives the patent owner the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. A patent, however, does not give the patent owner the right to make, use, offer for sale, sell or import the invention claimed in the patent.
The following is an example of a situation where a patent owner may not sell the patented invention:
- Person A patents an invention "X".
- Person B later patents an improvement to the invention "X+Y".
- Person B may need the permission from Person A (due to the patent on the original invention).
- Person C may need permission from both Person A (due to the patent on the original invention) and Person B (due to the patent on the improvement) in order to make, use, or sell in the improved invention.
In addition, a valid patent prohibits the use of the patented invention by any other party, even if another party independently conceives the identical invention.
What is the Purpose of the Patent Law?
The Patent Laws provide an incentive for inventors to share their new and useful ideas with others. In exchange, the government gives the inventor a monopoly on the idea and allows the inventor to exclude others from the invention. In addition, Patent Laws provide inventors a period of time to recover research and development expenditures.
Generally, the term of a new utility patent lasts for 20 years from the date the applicant filed the application in the United States. Under certain circumstances, however, patent terms may be extended or adjusted. Design patents in the United States have a term of 14 years from issuance, while plant patents have a term of 17 years from issuance.
Generally, subject matter must fall into one of four classes of patentable subject matter to be patentable. These classes are:
- machines (e.g., a mechanism with moving parts);
- articles of manufacture (e.g., a hand tool);
- compositions of matter including chemical compositions and may include mixtures of ingredients as well as new chemical compounds (e.g., a plastic); and
- processes (e.g., a method of making a product, a method of conducting a business and software, in some instances).
These classes of subject matter taken together include practically everything that is made by man and the processes for making the products. An improvement falling within any of these classes may also be patentable. Normally, discoveries falling outside these categories are not patentable. In addition to being within one of the four classes listed above, an invention must also be:
- "useful," in that the invention has utility, actually works for its intended purpose, and is not frivolous or immoral;
- "novel," in that the invention was not previously known to or used by others in the United States or printed or described in a printed publication anywhere; and
- "non-obvious" to a person having ordinary skill in the relevant technical area of the invention.
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented. Thus, it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. Furthermore, a patent cannot be obtained upon a mere idea or suggestion.
Even if the subject matter sought to be patented is not exactly known, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that the subject matter may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
The level of non-obviousness required to render an invention patentable is a function of the particular area relating the invention. In some instances, the non-obvious part of an invention (the part that renders the invention patentable) is simply identifying the problem, even if the solution is obvious upon identification of the problem. For example, the substitutions of one color for another, or changes in size, are ordinarily not patentable.
\Do I have to file a Patent Application before Selling my Invention?
Certain actions undertaken by an inventor will preclude the patenting of an otherwise patentable invention. For example, a person shall be entitled to a patent unless the invention was patented or described in a printed publication, in public use or on sale in this country more than one year prior to the date of the application for patent in the United States.
Accordingly, in the United States, an inventor has a one year grace period to file an application within one year after an offer to sell or sale of a product embodying the invention or a public, non-confidential, disclosure (such as a trade show, convention or publication, including a sales magazine, etc.). The one year grace period also begins to run following a public use in this country.
Most foreign countries, however, do not have a grace period in which to file a patent application. In most foreign countries, an application must be on file with the patent office prior to a public disclosure of the invention, or all rights in the invention are lost. An inventor may preserve rights in most foreign countries by ensuring a patent application has been filed in the U.S. or another country prior to public disclosure of the invention.
With certain exceptions, only the inventor may apply for a patent. If a person who is not the inventor should apply for a patent, the patent, if granted by the USPTO, would be invalid. In addition, the person falsely applying for the patent in such a case and falsely states that he/she is the inventor may also be subject to criminal penalties.
Co-inventors may file patent applications, if more than one person contributed to the conception of the invention claimed in the patent. A co-inventor need not make a contribution to every aspect of the invention. In addition, inventors need be the one who actually reduces the invention to practice. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor.
If an inventor refuses to apply for a patent or cannot be found, a co-inventor or, if there is no joint inventor available, a person having a proprietary (ownership) interest in the invention, such as a business employing the inventor in certain circumstances, may apply on behalf of the non-signing inventor.
If the inventor is dead, legal representatives, that is, the administrator or executor of the estate may file the application. In addition, if the inventor is insane, a guardian may file the application.
What Happens when an Application is filed at the USPTO?
After an application is filed with the USPTO, a patent Examiner conducts a search for prior art references (generally issued patents or published patent applications) which alone or in combination invalidate the claims of the application. Typically, the Examiner issues a first Office Action in which the Examiner rejects some or all of the claims based upon the prior art discovered in the search. The Office Action may be responded to by arguing over the rejections of the Examiner, by amending the claims to avoid the prior art references cited, or by a combination of argument and amendment. If two or more patent applications contain claims to identical subject matter, the USPTO institutes an interference proceeding in order to determine which inventor was the first to invent the invention, and only allows the first inventor to obtain a patent.
Once the claims are in the proper form and are distinguishable over the prior art references, the Examiner allows the application and the patent issues.
The USPTO generally issues the first Office Action sometime between one year and two years after the filing of the patent application. The length of the entire prosecution of the patent varies, however, the prosecution of most patents is typically completed within a three year time period.
How many People can Own a Patent?
Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit, without regard to the other owners of the patent. Generally, a joint owner and may sell their interest, or any part of it, or grant licenses to others, without regard to the other joint owners.
Since the patentee has the right to exclude others from making, using, offering for sale, or selling or importing the invention, no one else may do any of these things without permission of the owner. A patent license agreement is in essence nothing more than a promise by the owner not to sue the licensee. The owner of a patent may grant licenses to others. No particular form of license is required; a license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.
Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States any patented invention during the term of the patent. In a lawsuit, the patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of monetary damages caused by the infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.
When can I mark My Product with Patent Pending?
Generally, a patentee who makes or sells patented articles is required to mark the articles with the number of the patent. If a patentee fails to mark, the patentee may not recover damages from an infringer prior to actual notice of infringement.
The words "Patent Pending" have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the patent has issued. False use of these phrases or their equivalent is prohibited. Furthermore, the marking of an article as patented when no patent covers the article is against the law and subjects the offender to a legal penalty.
Should My Employees Keep Laboratory Notebooks?
Laboratory notebooks detailing the development of an invention may be important for several reasons. For example, in the U.S., if two applicants are seeking a patent on the same invention, the USPTO generally awards the patent to the party who was the first to invent the invention. Establishing priority of invention often depends on documentation such as laboratory notebooks. An inventor who fails to keep a laboratory notebook runs the risk of having difficulty establishing the date on which the inventor first conceived of the invention and diligently reduced the invention to practice, and thus may lose out in a priority contest with another inventor.
What Should I do if I am about to Sell (or Offer for Sale or Publicly Disclose) a New Product that May be Patentable?
Whenever sales or a public disclosure of a new product is imminent, you should consider the questions of whether one or more patent applications should be filed. In particular, if an inventor puts off the filing a patent application until after the product has been disclosed, the inventor may lose rights to the invention in foreign countries.
Due to the one-year grace period in the U.S., an inventor may choose to delay the filing of a patent application, if only U.S. protection is sought. There are many reasons why it may be unwise to postpone the filing of an application, solely because of the grace period. For example, a different inventor may file an application on the same invention.
How can I find out if my proposed product infringes someone else's patent?
For some technological areas the answer to this question is easy to find, while other technological areas the answer may be very difficult. For example, if a product has been on the market for decades, a manufacturer may have some confidence that patents covering the product may have expired. The mere passage of a long period of time only, however, is not a complete assurance that no patent covers the product.
Depending on the particular business circumstances, a manufacturer may desire to conduct a patent search for patents that may be infringed by the manufacture or sale of a new product. The manufacturer may also want to investigate the markings of patents listed on products sold by competitors. Occasionally, a seller may be certain that the only patents of concern are those owned by a particular competitor.
A patent includes a specification containing a written description of the invention and the manner and process of making and using the invention. The specification should be written in full, clear, concise, and exact terms so as to enable a person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the invention.
The specification must set forth the precise invention so as to distinguish the invention from other inventions. The application must describe completely a specific embodiment of the invention, and must set forth the best mode contemplated by the inventor for carrying out the invention.
In the specification, a brief summary indicating the nature and substance of the invention should precede a detailed description of the invention. The USPTO does not require drawings in every patent, but the law does require drawings whenever the nature of the case requires a drawing to understand the invention. In many instances, however, patents include drawings. When the patent includes drawings, the patent should include a brief description of the drawings, and the detailed description of the invention shall refer to the drawings. The drawing must show every feature of the invention specified in the claims.
The patent specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. Generally, the claims are the most important part of the patent, as the claims define the scope of protection afforded by the patent. A Court compares the language of the claims with an accused product in a patent infringement case in order to determine if the accused product infringes the patent. A patent may include more than one claim. Generally, claims are drafted in a stylized format in accordance with rules set forth by the USPTO.
A copy of U.S. Patent No. 6,094,870 is included below as an example of an issued patent. The front page of a patent provides an identification of the inventor(s) and the assignee (or owner) of the patent. The front page also sets forth the filing date of the application, a listing of the references cited during the prosecution of the patent, and a brief disclosure of the invention, including an abstract and an exemplary drawing. A full set of drawings and the written description follow the front page. Finally, the patent ends with claims. Note, in the present patent, the first claim relates to a "mobile living quarters having a main living area and a slide out room..." and the last seven claims relate to "a locking device for clamping a slide out room..."
What royalty rate should I expect to receive for my patent?
No "standard royalty rate" exists for patents. Rather, the royalty rate for patent licenses is a function of a negotiation between the patent owner and the licensee. One patent license may have a royalty rate of a small fraction of a percent, while a different patent license may be ten percent.
Can Any Attorney File a Patent Application for Me?
The following comes verbatim from the website of the USPTO.
The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
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