Posted by Admin Saturday, March 24, 2012 5:48:00 PM

by Brenda L. Speer

What is a patent? A patent is a type of intellectual property. The various types of intellectual property are often confused with one another. To illustrate this point, I came up with the nonsensical question: Can I patent a trademark for a copyright? The answer is: No, you cannot, because patents, trademarks and copyrights are three distinct intellectual property rights.

By way of analogy, there are various modes of transportation, each of which serves a different purpose. Cars drive on land, ships sail on water and planes fly in the air. And so it is with intellectual property rights—each property right serves a different purpose.

Trademarks indicate the source or origin of a particular good or service;

Copyrights protect original works of authorship; and

Patents protect inventions or discoveries.

There are three types of patents:

Utility: One may get a utility patent for any new, useful and nonobvious:

Process (ex., how to make an aluminum can);

Machine (ex., the aluminum can making machine);

Article of Manufacture (ex., the aluminum can);

Composition of Matter (ex., a metal alloy, such as steel); or

Improvement thereof (ex., a pop-top versus a pull-tab aluminum can).

Design: One may get a design patent for any new, original and ornamental design for an article of manufacture (ex., silverware pattern, three-dimensional bottle shape).

Plant: One may get a plant patent for any distinct and new variety of plant, which is asexually reproduced, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state (ex., a newly grafted rose plant).

Whether an invention meets the standard of patentability set forth above (e.g., the standard for a utility patent is that the invention must be new, useful and nonobvious) is determined with regard to all prior art in the same field of endeavor in the world known before the date of the invention. What this means in the case of a utility invention, is that when the invention is examined against all prior, relevant, worldwide knowledge, the invention must be new (not known before), must be useful (functional; i.e., no perpetual motion machines allowed), and must be nonobvious (not an insubstantial, obvious variant of what has come before, such as coloring window cleaner green versus blue).

The owner of a patent grant has the exclusive right to make, use and sell the invention disclosed in the patent. This exclusive right endures for a term of either 20 years from the filing date of the patent application for a utility or plant patent, or 14 years from issuance date for a design patent. When the patent term expires, the invention is dedicated to the public by operation of law and anyone can make, use and sell that invention.

Patent rights are jurisdictional. In other words, a US patent grant is only enforceable against infringements occurring in the United States. If you have a US patent for your inventive widget, then someone else could legally make, use and sell your widget in any other country with impunity. However, if they were to export their widget to the United States, then as soon as their widget crossed the border, it would be infringing on your US patent rights.

An invention which is the subject of a patent grant should be marked with patent notice. I’m sure you’ve seen patent notices before on items. On your next trip to a coffee shop or fast food joint, take a look at your take-out cup, lid or sleeve for the patent notice. A notice looks like this:

Utility Patent: U.S. Patent No. 6,012,345

Design Patent: U.S. Patent No. D654,321

Plant Patent: U.S. Patent No. PP12,345

Pending Patent Application: U.S. Pat. Pend.

You can look up a patent by its identifying number in the US Patent Office records at www.uspto.gov. From the information in the patent you can determine what the protected invention is and when the patent term expires.

Patent rights in an invention do not begin until if and when a patent application issues as a patent grant. From the date of application until the date of grant, patent protection rights do not attach to the invention. Accordingly, a patent pending notice is the equivalent of a “beware of dog” sign. It warns the public that the subject invention does not have patent rights yet and serves as a deterrent to infringement.

Although someone could legally make, use and sell an invention while its patent application is pending, as soon as the patent grant issues, then they would be subject to an infringement claim against them from the date of the patent grant forward in time. The duration of this interim pendency period is variable, so for someone to gear up and manufacture a patent pending invention poses a considerable financial risk. Once a patent grant issues, every item of inventory for that invention becomes an instance of infringement. Unless the infringer has a crystal ball, they have no way of knowing when to exit the market before the patent grant issues in order to avoid liability for patent infringement.

As with trademarks and copyrights, there are no patent police. The patent owner is responsible for enforcing his patent rights.

FOREWARNING: If you think you have developed a patentable invention, then it is critical that you seek legal protection for your invention before you publicly disclose it. A public disclosure can be as innocent and simple as showing your invention prototype to your neighbor. In some countries, a public disclosure of an invention before a patent application is filed is an absolute bar to patent protection. Unique to United States patent law, there is a one-year grace period before the absolute bar applies. This one-year period is commonly referred to as the “on-sale bar.” What the absolute or on-sale bar means is that you have exactly one year from the date of public disclosure of your invention to file a patent application. If you fail to file your patent application within the one-year grace period, then by operation of law, your invention is deemed dedicated to the public and you forfeit any right to pursue patent protection for your invention.


© 2008 BL Speer & Associates

BL Speer & Associates
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