How does patent protection work?

How do you get a patent?

Patents work differently from any other kind of intellectual property. Patents are the only kind of intellectual property that cannot be protected at all if you do not file an application for protection with the government. The protection comes solely from the government reviewing an application and choosing to grant patent protection to an inventor. If the government does not know about your invention, it cannot grant you a patent.

The government agency charged with examining patent applications is the U.S. Patent and Trademark Office (PTO). After you file an application to protect your invention, an employee of the PTO called an Examiner will review your application, and if the Examiner finds that the application does not meet any of the three criteria for patentability (novelty, non-obviousness, and utility), it will not be registered. The Examiner will issue a refusal that explains his or her reasons for refusing to register the invention, and you will have an opportunity to respond and argue that your invention should register. The Examiner may also request changes to the patent application so that it more accurately describes the invention according to the Examiner’s understanding of the invention. Although you may represent yourself in applying for a patent, an attorney’s guidance is often helpful in making strategic decisions about how to avoid inadvertently describing your invention in a way that might infringe on another patent, how to ensure the most appropriate range of protection for an invention, how to ensure that the correct inventors are named in the patent application, and how to respond to an Examiner’s questions or requested changes. Only a registered patent attorney or patent agent may act on your behalf in applying for a patent. A patent attorney is different from a regular attorney, who is licensed to practice law within a particular state and can help you with other legal issues. A registered patent attorney or patent agent has to meet the criteria of the PTO and must pass an examination demonstrating that the person meets those criteria. The PTO maintains a searchable database of registered patent attorneys and patent agents.

What are the benefits of patent protection?

A patent gives the patent owner a government-granted monopoly on “making, using, offering for sale, or selling” an invention as described in the issued patent, for a period of twenty years. Patent infringement, then, is when someone makes, uses, offers for sale, or sells any item that falls within a patent claim, which is a specific description of the invention protected by an issued patent (or, during the application stage, a specific description of the invention the inventor would like to protect). An infringer, even someone who is merely using a patented item created by someone else, may have to pay damages for violating the patent. The patent monopoly is so absolute that it is the right of a patent holder to stop others from making or using a patented item even for one-time personal use, and even if the person independently invented the item. As a practical matter, of course, it is difficult to tell if someone has infringed a patent in the privacy of his or her own home, though social media is changing this; it is quite possible for an unwary tinkerer to inadvertently violate a patent and be liable for damages because of an Instagram post. This is a greater degree of protection, though a much shorter duration, than any other type of intellectual property.

Patent owners also have several other rights. First, they have the right to mark their inventions as patented. In fact, a patent owner’s failure to mark a physical item as patented can mean that the patent owner cannot recover damages for infringement. Second, patent owners have the right to sue for infringement in federal court. Third, patent owners have the right to obtain an injunction against an infringer and to recover damages for infringement. An injunction is a court order that tells someone to stop doing something; in this case, it would tell a patent infringer to stop making, using, offering for sale, or selling the item that infringes on the patent. An injunction has the full weight of the court’s authority behind it, and an infringer that refused to comply could find itself facing some unpleasant consequences.

One important thing to note is that a patent does not give the patent owner the right to make, use, offer for sale, or sell the invention. An inventor can do that without ever getting a patent, assuming the invention does not infringe on anyone else’s patent. A patent only gives the owner a brief period of exclusivity, not an affirmative right to make an invention.

How much does patent protection cost?

Obtaining patent protection can be expensive, generally in the neighborhood of $10,000 between PTO fees and attorney fees. Once the patent has registered, the patent owner has to make regular payments to the PTO to maintain it. If you have the right kind of invention or discovery, though, it can be worth every penny to get that registration.

What if you have an idea but you don’t know quite how to implement it yet? Can you still apply for a patent?

Sort of. The PTO has a process for filing a provisional patent application, which is more or less a draft patent application that acts as a place-holder for up to 12 months. It reserves the filing date for your application, which can be important because the first inventor to file a patent application is the one who gets the patent if two people invent the same thing at about the same time. (This represents a recent change in patent law; it used to be that the first person to invent something would win the “race to patent.”) A provisional application is not examined on its merits; the examination will happen only if and when the inventor files a non-provisional application. A provisional application requires filing a description of the invention, but the description does not need to be as precisely drafted as a non-provisional application. If you do not file a non-provisional application within 12 months of the filing of the provisional application, the provisional application expires and you lose the provisional application’s filing date. The provisional application should also cover as much information as possible about the invention, because when the non-provisional application is filed, it can protect only parts of the invention that are supported by the provisional application.

Who is the owner of a patent?

The owner of a patent is the inventor of the patentable material. Only the inventor can file an application for a patent. In the context of a company employee who invents something as part of her job, the company will, of course, want to own the patent. This is generally handled by having the employee immediately assign the patent application to the company after applying for the patent.

It is critical that the inventor or inventors be listed accurately on a patent application. Every person who was involved in the inventing process for each claim, and no person who was not involved in the inventing process, must be listed. Giving incorrect inventor information can be a reason to invalidate a patent.

How long does patent protection last?

Twenty years. This gives the inventor a head start in the market, so that the inventor has an opportunity to establish itself as a leader in a particular market and develop trusted branding.

Some parts of this post originally appeared on my law firm blog, the Web 2.0 Law Blog.

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