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A patent is a government-granted right that gives an inventor the right to exclude others from making, using, selling, offering to sell, and importing into the United States their invention for a limited period, typically 20 years from the filing date. In exchange, the inventor must publicly disclose the details of their invention.
Generally, patents can be granted for new, non-obvious, and useful inventions. This includes processes, machines, manufactures, compositions of matter, and any improvements thereof. In many jurisdictions, software, business methods, and some biotechnology innovations can also be patented – subject to certain conditions.
In most countries, including the United States, utility patents typically last for 20 years from the filing date of the application. Design patents in the U.S. last for 15 years from the date of grant. The term can vary in other countries.
A provisional patent application is a temporary application that establishes a priority date and gives the inventor 12 months to file a non-provisional application (or 14 months under the PLTIA). It is less formal and does not require claims.
A non-provisional application is a full patent application that is examined by the patent office and can result in an issued patent. The non-provisional must include a specification describing the invention in a way that one who is skilled in the art can make and use the invention, claims, and at least one drawing.
The main requirements for patentability are:
You can conduct a patent search using various online databases, such as:
It’s often advisable to work with a patent attorney or professional searcher for comprehensive searches.
A typical patent application includes:
Patent claims define the scope of protection granted by the patent. They are precise statements that describe the essential features of the invention for which the applicant is seeking protection. Claims are crucial as they determine what others cannot do without infringing on the patent.
The time to obtain a patent varies widely depending on the jurisdiction and the complexity of the invention. In the United States, it typically takes 2-3 years from filing to grant, but can be longer or shorter depending on the technology area (some art units at the USPTO have a greater queue than others). In some instances, the USPTO offers expedited examination option if certain application requirements are met and/or for an additional fee.
The PCT is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions in its contracting states. It allows you to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
A utility patent protects the way an article is used and works, while a design patent protects the way an article looks. Utility patents are granted for new and useful processes, machines, manufactures, or compositions of matter. Design patents are granted for new, original, and ornamental designs for an article of manufacture.
Patent prosecution refers to the process of drafting, filing, and pursuing a patent application with a patent office (such as the USPTO). It includes all interactions between the applicant (or their representative) and the patent office from the time of filing until the application is granted or abandoned.
An Office Action is a document issued by a patent examiner during the examination process. It typically contains the examiner’s decision on the patentability of the claimed invention and may include rejections, objections, or requirements that need to be addressed by the applicant.
To respond to a rejection in an Office Action:
It’s often advisable to work with a patent attorney for complex rejections.
Patent licensing is a contractual agreement where the owner of a patent (licensor) grants permission to another party (licensee) to make, use, sell, or import the patented invention in exchange for compensation, typically royalties.
Common types of patent licenses include:
Patent royalties can be structured in various ways, including:
The structure often depends on the industry, the value of the technology, and the negotiation between parties.
Patent infringement occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without permission from the patent owner. Infringement can be direct (actually performing the infringing act) or indirect (contributing to or inducing someone else’s infringement).
Patent infringement is typically determined through a two-step process:
Remedies for patent infringement may include:
A patent portfolio is a collection of patents owned by an individual or organization. It often includes patents covering various aspects of a technology or product line. Managing a patent portfolio involves decisions about which inventions to patent, in which countries to seek protection, and how to maintain and enforce the patents.
Patents can be monetized through various strategies:
Both patent agents and patent attorneys can represent clients before the USPTO in patent matters. The main difference is that patent attorneys are licensed lawyers who can also provide legal advice and represent clients in court for patent litigation. Patent agents are not lawyers and their practice is limited to patent prosecution before the USPTO.
The America Invents Act, enacted in 2011, brought significant changes to U.S. patent law, including:
· Changing from a “first-to-invent” to a “first-inventor-to-file” system
· Expanding the definition of prior art
· Creating new post-grant review procedures
· Modifying the rules for patent marking and false marking litigation
Eliminating the best mode requirement as a basis for invalidating a patent
Standard Essential Patents are patents that claim inventions that must be used to comply with a technical standard. These patents are particularly important in industries where interoperability is crucial, such as telecommunications. SEPs are typically subject to FRAND (Fair, Reasonable, and Non-Discriminatory) licensing commitments to ensure that the standards can be widely adopted.
Here is a helpful article discussing SEPs.
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