Patents are valuable assets because they give inventors exclusive commercial rights to prevent others from producing and utilizing their discoveries. In return for their capital investments, time and sweat equity, the United States government grants inventors a limited monopoly over their invention. The research, drafting and prosecution of a successful patent application requires precision and familiarity with both the applicable legal and technical issues. Typically, inventors seek legal counsel when attempting to obtain patent protections for their inventions. Below are answers to frequently asked questions about patents. For further information please reach out to Lutzker & Lutzker.
A. A patent is an exclusive right granted for an invention. The invention is often a product or a process that provides a new way of doing something or offers a new technical solution to a problem. A patent grants its owner the right to exclude others from making, using, selling or offering to sell a claimed invention within the United States. It also allows the owner to sue anyone who imports into the U.S. their patented invention without permission.
There are three main types of patents: utility patents, plant patents and design patents. Patents are governed exclusively by federal law.
A. The Constitution expressly gives Congress the power to issue patents in Article I, Section 8, Clause 8. It has long been recognized that patents encourage the progress of science and society. In exchange for a limited monopoly over their invention, inventors agree to disclose the workings of their inventions in granular detail. This allows other citizens to build or utilize the invention when the patent expires. Without patent laws, inventors would fall victim to idea-stealing and reverse engineering, where a competitor simply buys the product and dismantles it to learn how it functions. This often requires very little money contrasted with the years of research and development it took to originally invent the item. Therefore, without the monopoly granted by patents, competitors would be able to reverse engineer inventions and unfairly profit from the hard work of the original inventor.
A. Yes. Patents require the disclosure of the invention or method to the public. Some inventors may be better off keeping their inventions secret. This affords the invention trade secret protections. For example, a baker may have discovered the method for baking a cake that always stays moist. The secret lies in the oven temperature and baking time. Other bakers may be able to reverse engineer the cake’s ingredients but will have a very difficult time devising the oven temperature and timing combination. However, if the baker files for a patent on the method, she will have to disclose the temperature and time specifications to the public. This would make proving infringement of her patent difficult, as it may be impossible to provide evidence that the infringer used the same oven temperature and bake time as the patented method. Therefore, the baker may be better off keeping her cake method secret.
A. A utility patent is a patent that covers the creation of a new, or improved, and useful product, process or machine. It is what most people think of when they hear the term “patent.” Famous examples include the electric lightbulb and iPhone.
A. A design patent is a grant of legal protection for the ornamental design of an article, but not its functionality. The design of an item is patentable if the design is original, ornamental and nonobvious. The original curvy Coca-Cola bottle was protected by a design patent.
A. A plant patent is a patent granted to an inventor who has invented, or discovered and asexually reproduced, a distinct and new variety of plant. Tuber propagated plants and plants found naturally in the wild are not eligible for plant patent protection. Hass avocados, easily the most popular avocado variety sold in the U.S., were protected by a plant patent issued in 1935.
A. A method patent protects a series of steps for performing a function or accomplishing a result. It is one of the four subcategories of utility patents, the other three being machines, an article of manufacture and a composition of matter. Famous examples include the Google Page Ranking System and the Bluetooth wireless data transfer system.
A. Laws of nature, physical phenomena, abstract ideas and literary, dramatic, musical and artistic works may not be patented. Additionally, inventions which are not useful (anything that is non-functioning) or are offensive to public morality are not patentable. For example, the United States Patent and Trademark Office (“USPTO”) would not grant a patent for the script of the Broadway play Hamilton (which would be protected by copyright) or for an Improvised Explosive Device.
A. The term “Patent Pending” is used to inform the public that an application for a patent has been filed. Importantly, it does not mean the invention or process is protected. Patent protection does not start until the actual grant of a patent. Once the patent is granted, the owner may use the term “Patented” to describe their invention. They may also print the word “Patent” followed by their patent number on all items for sale.
A. Yes. You can publicly disclose your invention before obtaining a patent, but there are important timing issues if you choose to do so. Once an invention has been publicly disclosed, federal law mandates the inventor file for a patent within one year, or they may be denied a patent on the invention permanently. Events that trigger the one-year time limit are disclosure of the invention in a printed publication or offering the claimed invention for sale. Inventors may avoid triggering the one-year time limit by utilizing Non-Disclosure Agreements (“NDAs”) when presenting the pre-patented invention to investors or potential partners, for example.
A. Inventors must apply for a patent through the USPTO. An inventor, on their own or through a lawyer, may begin the application process by filing a provisional application. This type of application is an informal way of beginning the application process and is not required to comply with the rigid requirements of a regular nonprovisional application. Provisional applications allow inventors with few resources to establish a patent application filing date. In the U.S. first-to-file system, obtaining a filing date is extremely important. However, a provisional application is essentially a placeholder with the USPTO and must be converted to a regular nonprovisional application meeting all of the formality requirements within 12 months of its filing. U.S. patent law also allows an inventor to directly file a nonprovisional application and forgo the filing of a provisional application.
Both types of patent applications can be filed either electronically by using the Electronic Filing System or in writing to the Commissioner for Patents.
A. Yes. A provisional application acts like a placeholder. It’s not a complete application, and the USPTO does not examine it. An applicant must convert any provisional application to a nonprovisional application within 12 months of filing.
A. Legal counsel may help you determine if your invention is patentable (i.e., whether it is novel, nonobvious and adequately described in clear and definite terms). Lawyers are also equipped to handle the extensive and intensive prior art search process needed to render an opinion on whether the USPTO is likely to award patent protection for the invention. Conducting the search of all previous public disclosures (prior art), including previously patented inventions in the U.S., is not strictly required but it is highly recommended. You should not assume that your invention has never been patented even if you cannot find evidence of it being publicly disclosed. A thorough examination at the USPTO may uncover U.S. and foreign patents as well as non-patent literature that describes your invention.
A. No. The USPTO will not help you draft your patent or complete your patent application.
A. A nonprovisional application contains a specification that ends with one or more claims. The specification describes the invention, usually in paragraph form with one or more detailed drawings included. The specification must be sufficient to enable a person skilled in the field of the invention to make and use the invention. At the end of the specification are one or more numbered claims. The claims determine the scope of the applicant’s ultimate right to exclude others. It is the claim sentence that is primarily used to determine if a patent has been infringed.
A. A claim is a single sentence that has three parts: a preamble, a transitional phrase and the claim elements.
A preamble is a short phrase setting out the general field of the invention. “A method for polishing windows,” for example, could serve as a preamble.
After the preamble comes a transitional phrase. The three most common transitional phrases are “comprising,” “consisting” and “consisting essentially of.” The transitional phrase tells the reader how the elements that follow it relate to the invention. “Comprising” means the invention includes at least the listed elements that follow but can also include additional unnamed elements. “Consisting” is narrower and means the invention includes only the listed elements that follow. “Consisting essentially of” falls somewhere in between the first two. “Consisting essentially of” includes at least the listed elements that follow, as well as any other unnamed elements that don’t materially affect the basic and novel characteristics of the claimed invention.
After the transitional phrase come the claim elements. These are the actual parts or steps used in the novel invention.
A. Once an applicant submits an application and any filing fees, the USPTO assigns the application to an examiner with the relevant technological expertise. Examiners evaluate the application for compliance with disclosure requirements as well as to ensure that the application is claiming something new, useful and nonobvious.
Examiners communicate with applicants through an office action. It is common for the first office action to contain a rejection of a claim and an explanation of the legal basis for the rejection. An applicant may respond in writing to a rejection by arguing that the examiner’s view of the claims or the law is incorrect, or by amending the claims. The back-and-forth between the examiner and the applicant forms the prosecution history, or file history, of any patent that issues from the application.
Patent prosecution ends when one or more claims are granted or when the applicant abandons the application.
A. On average it can take about 22 months for the USPTO to grant a patent. During COVID-19 the average wait time ballooned to 25-30 months. If you want to expedite the process you can pay an extra fee ($1,000-$4,000) to the USPTO to get prioritized examination, which cuts the time down to 6-12 months.
A. A U.S. utility or plant patent is generally granted for 20 years from the date the patent application is filed. Periodic fees are required to maintain the enforceability of the patent. For design patent applications filed on or after May 13, 2015, the term is 15 years from the date that claims are granted to the inventor. Before that date, the term was 14 years from the date that claims were granted. The right conferred by the patent grant extends throughout the United States.
A. Although it may seem pedantic, patents only grant the owner the “right to exclude” others from making, using, selling or offering to sell a claimed invention. It does not grant the owner an affirmative right to use the invention. The invention may run afoul of other patents to commercialize your discovery, or it may require additional approval from other regulatory bodies. For example, owning a patent for a new pharmaceutical drug grants the inventor the right to stop other people from making or selling the drug. It does not, however, grant that inventor the right to sell or market their drug. The inventor must first get approval from the FDA to do so.
A. Surprisingly, no! Patent owners have no obligation to use their invention at all. In fact, some individuals and companies focus exclusively on earning revenue from licensing, and suing for infringement of, a portfolio of patents. Patent practitioners call these individuals and companies nonpracticing entities, or “NPEs.”
A. No. Patents are territorial and are only valid in each country where protection is obtained. Almost every country has its own patent law, and a person desiring a patent in a particular country must file an application in that country. The rights granted by a U.S. patent extend only throughout the U.S. and have no effect in a foreign country.
Most countries have very different laws from the patent law of the U.S. In most foreign countries, publication of the invention before the date of the application is an absolute bar to obtaining a patent. Also, many countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may become void.
A. A patent gives its owner the right to exclude others from making, using, selling or offering to sell the claimed invention in the U.S. To enforce these rights, patent owners may bring infringement actions in federal district courts, which have exclusive subject-matter jurisdiction over patent-infringement claims. Any appeals from infringement litigation are routed to the Court of Appeals for the Federal Circuit in Washington, D.C.
The patent’s claims define the boundaries of an owner’s right to exclude. To directly infringe a patent, someone acting in the U.S. must make, use, sell or offer to sell something that has all elements of at least one patent claim.
A. Yes. Even if an accused product or process is lacking a literal claim element, it may still infringe under the doctrine of equivalents. The doctrine of equivalents prevents accused infringers from escaping liability through insubstantial changes in design. To infringe by equivalents, the element in an accused product or process need not be literally the same as the claimed element, but it must be close enough.
To determine whether an element in an accused product or process is close enough to a claimed element, courts use the function-way-result test. An accused element is equivalent to a claimed element if the accused element performs substantially the same function, in substantially the same way, to achieve substantially similar results as the claimed element.
A. Probably not. Inventions that are used commercially at least one year prior to the patent’s effective filing date or first public disclosure are protected under the doctrine of Prior-User Rights. Before the passage of the America Invents Act in 2011, only business methods were protected by the doctrine, but now any patentable subject matter is covered.
A. You should retain legal counsel right away. A lawyer will help you determine how best to defend yourself in the suit. A common strategy is to argue for an interpretation of the patent’s claim such that the purported infringement falls outside of the claimed elements. Similarly, defendants may seek to invalidate the patent on several grounds. Challenges to an invention’s novelty, obviousness or sufficiency of disclosure can be used to invalidate a patent.
A. District courts may grant a patent owner injunctive relief (a court order banning the infringer from using the invention) on a temporary, preliminary or permanent basis. Which kind of injunction is granted depends on how early in the suit the party requests an injunction. Parties seeking a permanent injunction must show that they would suffer irreparable harm if the injunction were denied. About 75% of patent owners who win their infringement suit are granted permanent injunctive relief.
Prevailing patent owners may also recover money damages. To recover monetary damages, the accused infringer must have had notice that they were infringing a patent. Infringers have notice if the patentee sends them a cease-and-desist letter, files a claim against them in court or if the patentee has put their patent number on the product. Monetary damages are awarded in the form of lost profits or a reasonable royalty fee.
Lost profits are the profits a patentee would have made on sales if there had been no infringement. This requires strong evidence showing the court what the market for an invention would have been absent any infringement. Your legal counsel will help you determine if your case is one where recovering lost profits is viable.
The royalty fee reward essentially constructs a hypothetical deal between patentee and infringer that would have been reached before the infringement began. Once again, your lawyer will be able to determine whether your specific case would benefit from seeking this relief.
Finally, if the court finds an infringer to have acted willfully, maliciously, flagrantly, or pirate-like in their infringement, it may triple the monetary reward granted to the patentee.
A. No. However, at the request of a patent owner, the USPTO will publish a notice in the Official Gazette that the patent is available for licensing or sale.
A. Patents only grant a limited monopoly, and eventually expire. To protect their inventions after a patent has expired inventors may turn to trademarks. A trademark is the name, symbol or logo that lets consumers know that the product sold under the trademark comes from a specific company or source. Unlike patents, trademarks do not have a set time limit. As long as a trademark owner renews the trademark every ten years, it can last in perpetuity. If your product is a successful one, customers who recognize it by its trademark will want to buy it long after the patent protection has expired. For example, the patent for LEGO’s iconic plastic brick expired in 2011, but the LEGO name and logo will remain protected so long as the trademark remains in use. Many consumers default to buying LEGO sets over competing generic products because they know and trust the LEGO brand.