© 2017 Head, Johnson, Kachigian & Wilkinson, PC

PATENT

BASICS

WHAT IS A PATENT?

A U.S. patent is a grant of a property right by the Government to the inventor to exclude others from making, using, or selling the invention. Utility and plant patents are granted for a term of 20 years, and design patents are granted for a term of 14 years. After expiration of the term, the patentee loses the exclusive rights to the invention. An excellent resource for information about patents is the United States Patent and Trademark Office (“USPTO”) website. The USPTO’s home page offers patent information, including information on filing fees and no-cost research sites. An initial search performed using the Internet is not extensive or accurate enough to fulfill the requirements of a prepatentability search. However, the search will enable you to check for patents that are similar to your invention and give you an idea of what is already out there.

WHEN TO OBTAIN A PATENT?

 

A valid U.S. patent may not be obtained if the claimed invention was patented, described in a printed pulication, or in public use, on sale, or otherwise available to the public before the effective date of the claimed invention.  Further a valid U.S. patent cannot be obtained if the claimed invention was described in an issued U.S. patent, or in a published U.S. patent application or a published PCT application designating the U.S., in which the patetn or application, as the cse may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.  In limited circumstances, the U.S. provides a one-year grace period for certain activities by the inventor.  Most countries other than the U.S. require a patent application to be on file before the first public disclosure, sale, or offer for sale, and considers any public use or sale prior to filing an application as a bar to patentability.

WHO MAY OBTAIN A PATENT?

 

Patents are granted only to the true inventor. Methods of doing business are sometimes patentable. However, printed matter cannot be patented, nor can a patent be obtained on a mere idea or suggestion.

PATENT PROTECTION IN COUNTRIES OTHER THAN THE UNITED STATES

A U.S. patent provides protection only for this country. If protection is desired in any other country, a corresponding application must be filed for each such country simultaneously or within one year of the filing of the U.S. application. The international application, in most countries, will be given, by treaty, the benefit of the U.S. filing date as long as the invention has not been publicly disclosed prior to the filing of the application. So, it is advisable to file corresponding international applications within this one-year period. Even after this one-year period, an international application may still be filed if it is filed before the U.S. Patent issues or is published or before any public disclosure, especially in printed form, of the invention occurs, but the priority date of the application will not be retained.

TYPES OF PATENTS

 

There are three types of patents:

Utility patents


Utility patents are granted to anyone who invents or discovers any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. “Process” means a process or method; new industrial or technical processes may be patented. “Manufacture” refers to articles that are made. “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as
well as new chemical compounds.

Design patents


Design patents are granted to any person who has invented a new, original, and ornamental design for an article of manufacture. The appearance of the article is protected, but not its utility.

Plant patents


Plant patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

OWNERSHIP AND SALE OF PATENT RIGHTS

 

The inventor may sell all or part of his interest in the patent application or patent to anyone by a properly worded assignment. The application must be filed in the USPTO as the invention of the true inventor, however, and not as the invention of the person who has purchased the invention from the inventor.

PATENT PENDING

 

A manufacturer or seller of an article may use the terms “patent pending” and “patent applied for” to inform the public that an application for a patent on that article is on file. The law imposes a penalty on those who use these terms falsely.