Patents

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A patent is a right given to inventors to prevent others to make their inventions without the inventor’s authorization.  A patent, however, does not give the inventor the right to make the invention.  For example, inventor A invents and gets a patent for a machine that has three parts W, X, and Y and inventor B invents an improvement of the machine by adding part Z.  Inventor A can make and sell the machine with parts W, X, and Y, but cannot make or sell a machine that includes part Z.  Similarly, inventor B cannot make or sell the machine with parts X, Y, and Z without the permission of Inventor A.

A trademark is a word, sign, logo, symbol, or other label that can be used to identify a product or service.  A patent, on the other hand, relates to the rights of an inventor to the product (which includes a machine, manufacture, composition of matter, or a process), regardless of what the product is called.

The United States Constitution states that Congress shall protect the rights of inventors to their inventions.  Pursuant to the Constitution’s mandate, Congress has created patent laws that define what can be patented as a composition of matter, a machine, a manufacture, or a process.  The Supreme Court of the United States has interpreted that statute by stating that anything made by man can be patented if it meets the novelty and written description requirements described below, and does not fall within a number of exceptions.  The exceptions include abstract ideas and laws of nature.  In the past couple of years, the breath of the exceptions has been significantly expanded and it has become quite difficult to ascertain whether an invention falls within the abstract idea or law of nature exemption.  This is true particularly of inventions associated with business methods, software, algorithms, mathematical equations, and similar matter.

In order to be patentable, an invention must be novel and non-obvious.  It must also be fully described in a written document that shows a person of ordinary skill in the art to which the invention how to make and use the invention.  Simply having an idea that a particular machine, process, or composition of matter can be improved is not sufficient unless you can show that a person of ordinary skill in the art can make and use the invention.

Until the adoption of the America Invents Act (AIA) in September of 2013, the United States recognized that the right to a patent vested on the first person who invented the particular invention regardless of when he or she filed a patent application.  After the implementation of the AIA, the law was changed and patent rights will vest on the first inventor that files an application, so long as it was not obtained from an inventor who subsequently filed an application.  This means that when two inventors independently invent a new machine, composition, manufacture, or process, the first one to get to the patent office will have priority regardless of when the invention was made.

Ideally, as soon as the invention is sufficiently developed to allow a person of ordinary skill in the art to make it using your description of the invention.  It is extremely important to file the application before disclosing it to anyone else without a duty of confidentiality.  In the United States, an inventor may be able to take advantage of a one year grace period from disclosure to obtain patent protection.  However, any disclosure to third parties without a confidentiality obligation with the inventor will prevent you from obtaining patent protection in most other countries.

A provisional application is a patent application that provides the filer a filing date at lower cost than a non-provisional application.  People used to refer to a provisional application as a cheap application that required minimum effort and, thus, provisional applications would be submitted as very rough drafts of a non-provisional application.  This view of provisional applications is very dangerous because the provisional application must still have sufficient disclosure to enable a person of ordinary skill in the art to make and use the invention.  Thus, it is always best to file document that is as close to a non-provisional application for filing as possible.  One major advantage of the provisional application is that the United States Patent and Trademark Office fee for the filing is very small.  In order to maintain the original filing date, a non-provisional application claiming priority from the provisional must be filed within twelve (12) months of filing of the provisional application.

There are three types of patent applications: a) a utility application, b) a design application, and c) a plant patent application.  A utility application is the standard application for a machine, a manufacture, a composition of matter or a process.  A design application is a special type of application directed to the way a particular product looks.  A plant application is a special type of application for asexually reproducing plants that are not found in nature.

Once an application is filed, it typically takes the United States Patent and Trademark Office (USPTO) approximately three (3) to five (5) years to review it and issue their initial review of the application depending on the type of technology involved.  The process can be expedited to one (1) year upon payment of a significant additional fee.  The USPTO has been making strides in reducing the backlog of applications reducing the time it takes it to evaluate applications.

Once the patent issues, it will be in force for twenty (20) years from the date of filing.  The twenty (20) year term begins on the filing date of the non-provisional application, if the application claimed priority from a provisional application the filing date of the provisional does not count against the patent’s term.  If the USPTO takes more than three (3) years from the filing date of the non-provisional, the patent owner is given credit for any delays caused by the USPTO’s backlog.