©2009 Dennis Donahue
In 1859, Abraham Lincoln concluded a lecture on discoveries and inventions with a famous quote praising our patent system as adding “the fuel of interest to the fire of genius.” Lincoln also declared, “The great difference between the Young American and Old Fogy is the result of Discoveries, Inventions, and Improvements.” Lincoln, himself a patent holder, described inventors as the “sole hope of the future.” Today, the future of American business and growth does indeed depend on the advancement and protection new ideas.
In legal terms, patents are personal property that can be owned, purchased, sold, licensed, or used as collateral.
Our patent system grants inventors the following rights and protections:
- Exclusive rights to their ideas for a limited time, even if they never make it to market or are ever put to actual use.
- The right to exclude others from making, using, selling, offering for sale or importing the patented invention.
Patent offices do not determine whether an invention to be patented infringes on any prior patent. It is possible that an improvement on an existing product or prior invention may be patentable, but the improvement could also infringe on one or more prior unexpired patents. This is why it is important to seek legal counsel to research prior patents and determine if the use of your invention infringes on someone else’s patent and visa versa.
What constitutes a patentable invention?
- Generally, a patent can be granted on any invention that is a new and useful process, machine, manufacture or composition of matter, including any new and useful improvement thereto.
- The invention must be novel and cannot be obvious.
- The U.S. Patent & Trademark Office (USPTO) grants three kinds of patents:
- Design patents which protect the ornamental design of a manufactured item;
- Plant patents which protect asexually reproduced plants.
- Utility patents which can include “anything under the sun that is made by man” (the Supreme Court’s words, not mine!)
- The USPTO will not allow patents on laws of nature, physical phenomena, abstract ideas, or inventions that are not useful, such as a perpetual motion machine or an invention that is offensive to public morality.What’s the process we will go through, and why do we need an Attorney?
What’s the process we will go through, and why do we need an Attorney?
- Research into prior inventions and patents to determine potential patentability or possible infringments
- Drafting of technical claims and drawings for invention
- Timely submission of application and fees to the the US Patent Office
- Review of application by patent office examiners
- Possible revisions, appeals, and other submissions requested by the USPTO
- Final issuance of the patent!
Preparing patent applications and conducting proceedings with the USPTO to obtain patent protection requires the knowledge of patent law and the USPTO’s rules and regulations, as well as knowledge of the scientific or other technical matters involved in the particular invention. Accordingly, when selecting a patent attorney, keep in mind the person’s technical qualifications as well as their legal experience. Although the USPTO allows inventors to prepare, file and prosecuted their own applications, it also warns inventors that “unless they are familiar with these matters or study them in detail, they may get into considerable difficulty… there would be no assurance that the patent obtained would adequately protect the particular invention.”
What’s the rush?
- The USPTO strongly advises inventors to quickly contact a registered patent attorney or patent agent, if they believe they have something worth patenting. This also applies to companies whose employees have inventions related to the business. Waiting too long to contact a patent attorney could be detrimental to protecting your rights in the invention. Once it’s out there, it’s fair game. In fact, The USPTO warns, ” any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of an U.S. patent on it. Foreign patent laws in this regard may be much more restrictive than U.S. laws.”
- The patent laws of the United States and other countries limit their enforcement of patents to the patents issued by the respective country’s patent office. For example, Federal Courts in the United States will enforce patents issued by the USPTO, but courts in England, Germany and Japan will not enforce the same U.S. patent in their respective countries. Therefore, to obtain international protection for an invention in several countries, a corresponding patent must be obtained from the patent office in each of these countries. That can be taken care of through foreign associates working with your attorney in the US.