by John Bandler
This article on patent law is a brief introduction on the topic and is part of my series on intellectual property law. In another article, I introduce intellectual property (IP) law. (And just so you know, the four types of intellectual property law are copyright, trademark, patent, and trade secrets, and I have a short article on each).
Patent law overview
Patent law protects certain inventions. To be eligible for patent protection, an invention must meet certain criteria laid out in the statute, including a proper subject matter and being new, useful, and non-obvious.
The reason why patent protection exists is the “patent bargain”, in which the government grants protection for an invention in exchange for publication of the creation so that others may eventually learn from it. The government’s grant is a negative right that allows the owner to exclude others from using that patented invention for a limited period of time.
Patent applications in the United States are filed with the U.S. Patent and Trademark Office, which means publicly disclosing information about the invention.
Not all patent applications result in an issued patent, but those that do generally have a term of 20 years from the filing date, and that term cannot be extended. Periodic maintenance fees are required during the patent’s life to keep it in force. After a patent expires, the teachings are available for use by the public without any fear of enforcement by the patentee.
U.S. patents are numbered sequentially. The first United States patent issued in 1790 to inventor Samuel Hopkins for improved method of making potash. As of February 22, 2022, 11,259,451 United States patents have been issued.
Famous examples of patents include the lightbulb, telephone, internal combustion engine, computer, global positioning system (GPS), 3D printer, and Bluetooth. New patent applications are filed daily and many of the products and services we use have components protected by patents.
Companies manufacturing items based on their patent are well served to consider other intellectual property protections for their process and product, including trade secrets, copyright, and trademark.
Patent law is federal law
Patent law in the United States comes exclusively from federal law. These federal statutes are found in Title 35 of the U.S. Code. The first patent act was in 1790, and our current patent law framework was established by the Patent Act of 1952. The authority of Congress to create these laws comes directly from the U.S. Constitution.
As mentioned above, patents confer a negative right, meaning a right to exclude others from doing certain things relating to the invention for a limited time. Patent owners can prohibit others from the following activities regarding an unexpired patented invention:
- Selling (or offering to sell)
- Importing into the U.S.
Three types of patents
There are three types of patents:
- Utility patents are the most common type of patent and are generally what people think of when they use the term “patent”. This is the type of patent we have discussed up until now (a 20 year term from filing).
- Design patents are for new, original, and ornamental designs on an article of manufacture. (15-year term from issuance).
- Plant patents protect new and distinct plant varieties. (20-years from filing of the application).
Requirements to obtain a patent
As briefly mentioned earlier, there are a number of requirements to obtain a patent, including:
- Within the scope of patentable subject matter (e.g., see details on what qualifies for a utility, design, or plant patent)
- Useful (utility)
- Novel (new)
- Nonobvious. “Secondary considerations” that help determine if an invention is nonobvious include its commercial success, whether there was a long-felt need for the invention, failure of others to achieve the invention, copying by competitors.
- Enabled (properly described). An inventor is required to provide a written description of the invention, the manner and process of making and using the invention (the “enablement” requirement), and the best mode of carrying out the invention.
Patents are obtained from the United States Patent & Trademark Office (“USPTO”). Inventors may hire a patent attorney or agent to apply for the patent. Before representing inventors before the USPTO, the attorney or agent must pass a bar exam the patent bar and is thus licensed to apply for patents before the USPTO. "Patent prosecution" is the process of drafting, filing, and negotiating with the USPTO in seeking patent issuance. Patent prosecution is a cooperative interactive process where the inventor/applicant and the applicant’s representative work with the USPTO patent examiners concerning an invention’s patentability. A successful outcome is allowance of a patent by the USPTO. But not every application is allowed, in which case the applicant has several procedural options, including appeal to the USPTO’s Patent Trial and Appeal Board.
Obtaining and maintaining a patent can be expensive. Costs including filing fees, issue fees, and maintenance fees during the life of the patent.
Attorneys fees also need to be considered. An inventor can file and prosecute an application without hiring an attorney but the process is complex and a layperson may not get all the protection they could be entitled to. Anyone considering obtaining a patent should consider first hiring a registered patent attorney to do a preliminary patentability search to evaluate the viability of the patent. Then, they should consider hiring a registered patent attorney to draft and prosecute the patent application.
Enforcing patent rights
Once a patent is issued, the patent owner (patentee) has legal rights.
Patentees who believe that another entity is infringing their patent can enforce that patent via a civil suit brought in a federal district court (a federal trial court). The remedies sought can be money damages and/or injunctive relief. If the alleged infringer is importing goods that infringe, the patentee may be able to bring an action in the International Trade Commission (ITC) to try have the infringing goods blocked from entry into the United States. However, the ITC cannot award damages.
Patent litigation is expensive, so factors should be weighed prior to filing suit. Potential enforcement expenses should be weighed against factors that include potential recovery (money damages) and the costs of having infringing products on the market in competition with the patent owner.
As with other types of intellectual property, patents can be sold and licensed. For example, an inventor may lack the ability or resources to "practice" the patent in a commercially viable way. For example they may own the patent but not have the ability to manufacture and sell the product. The inventor is free to sell the patent outright, or retain ownership and license certain rights it to a third party. Patents can be a company’s most valuable asset.
What about "patent trolls"?
Patent "trolling" is a negative and arguably unfair term that refers to individuals or organizations that purchase patents and then sue others for patent infringement. Some argue this practice is unfair or unsavory, especially when they neither invent anything nor manufacture anything, and where they litigate to win money damages or stifle competition. On the other hand, if intellectual property is to have value then this property can be bought and sold as desired. When it is bought it comes with legal rights which the owner should be able to enforce. Instead of "troll", a more fitting name could be "non-practicing entities", and we should recognize that some include universities and research centers.
Patent law amendment and the Leahy-Smith America Invents Act of 2011
Patent laws (within Title 35 of the U.S. Code) can be amended. One such amendment was the Leahy-Smith America Invents Act of 2011, and one change made our patent system a "first-to-file" system and no longer a "first-to-invent" system. Under the previous first-to-invent system, two inventors might dispute who invented something first to claim the patent. Now, the important fact is who filed their patent application first.
This is a brief summary and introduction to patent law with many simplifications, bringing complex subject matter to all readers in an understandable and accessible manner. This article is for myself and students, and anyone else in need of information. It is not legal advice nor consulting advice, and is not tailored to your circumstances. I am not an intellectual property lawyer, which is a specialized area of law. Patent law is a specialized area of IP law, and I am not a patent lawyer either. But Rich Parke is (see below).
If your organization needs help in the areas of intellectual property law, I can help find someone experienced in intellectual property law, and see below. If your organization needs help with cybersecurity (including protecting trade secrets and other proprietary information and confidential data), contact me.
While I remain responsible for what I have written here (subject to my disclaimers in the article and my website's general disclaimer), I want to thank the following expert in intellectual property law and patent law for reviewing this article and providing quality control and important edits:
- Richard E. Parke, Esq. (Rich is both an IP lawyer and a patent lawyer)
References and additional reading
- Introduction to intellectual property law
- Copyright law
- Trademark law
- Trade secrets law
- US Patent and Trademark Office (USPTO) https://www.uspto.gov/
- USPTO Patents https://www.uspto.gov/patents
- USPTO Patent search https://www.uspto.gov/patents/search
- Google patent search https://patents.google.com/
- Title 35 of the U.S. Code, Patents, https://www.law.cornell.edu/uscode/text/35
- 35 U.S. Code § 101 - Inventions patentable, https://www.law.cornell.edu/uscode/text/35/101
- 35 U.S. Code § 102 - Conditions for patentability; novelty, https://www.law.cornell.edu/uscode/text/35/102
- 35 U.S. Code § 103 - Conditions for patentability; non-obvious subject matter, https://www.law.cornell.edu/uscode/text/35/103
- Students, Learning, and Teaching
This article is hosted at https://johnbandler.com/intellectual-property-law/patent. Copyright John Bandler, all rights reserved. (See, this writing is my intellectual property, and I am letting people know that, and that also gives me certain legal rights).
This article is also available on Medium.com at COMING SOON (though not updated as frequently and without the references).
Originally posted 12/23/2021. Last updated 02/27/2022.