Patent FAQ

Patents are a form of personal property. The patent owner has the right to exclude others from making, selling, offering for sale, or importing into the U.S. the invention protected by the patent, unless they have the express permission of the patent holder to do so. The patentee can grant these rights to others through licensing contracts or by outright sale of the patent. Interestingly, having a patent doesn’t allow the patent holder to use the patented invention (someone else may have an even broader patent that prevents that). For example, the inventor of an automobile carburetor might not be allowed to use it, if someone else had a patent on the car itself.

When did the patent system come about?

The rights to patent protection are set forth by the United States Constitution in Article I, Section 8. The Patent Laws are elaborated in the United State Code, title 35. Major reforms to statutory law took place with the Patent Acts of 1870, 1952, and 1974. The first patent was issued in 1790, for a method of making potash. The patent examiners were: Thomas Jefferson (Secretary of State), Edmund Jennings Randolph (Secretary of War), Henry Knox (Secretary of the Treasury).

How many patent applications are filed each year?

The numbers are on the increase. 163,306 patents were filed in 1989; 201,554 were filed in 1994; 300,000 were filed in 1999.

What can be patented?

Hallmark qualities that an invention must have to be patentable: it must be new, it must be useful, and it must be nonobvious to someone skilled in the art. Things that can be patented include devices, processes, methods (even business methods), articles of manufacture, and products of processes. One court case described it as “anything under the sun made by man.” Many items that were once thought unpatentable (e.g., computer software, genes, and business methods), are now understood to be legitimate subject matter for patents. That means patents are issuing in non-traditional industries, like insurance and financial services, deepening there influence in all walks of commercial life.

What can’t be patented?

Types of patents:

How long does a patent last?

Patents last 20 years from the date of filing of the first patent application that includes the claimed invention. Patent lifespans used to be 17 years from the date of issuance, but that term was changed by the General Agreement on Tariffs and Trade (GATT) agreement in 1995. Older applications are subject to a grandfather clause that gives them the later of two possible expiration dates.

How did they come up with 17 years?

Back in the days of yore, people apprenticed themselves to master tradesmen to learn a trade. The apprenticeship lasted for seven years. Out of custom and courtesy, the apprentice would not practice any special little tricks or techniques, those secrets that his master had taught him that weren’t generally known in the trade (i.e. inventions), for a period of two apprenticeships, or fourteen years, after the apprenticeship ended. The abstinence period assumed that the master had developed his inventions smack dab in the middle of the seven year apprenticeship, or three-and-a-half-years before it ended. The total length of time that an ex-apprentice would refrain from using his master’s inventions was therefore (3 ? + 7 + 7) years, or 17 ? years. Rounding down gave a 17 year monopoly for the inventor.

What makes up a patent application?

Patents consist of the following:

A drawing (if necessary)

Only the patent claims are protected by patent law; thus, any component of the invention that is set forth in the specification but not claimed is superfluous.

Who’s in charge of issuing patents?

Patents are granted through the U.S. Patent and Trademark Office (PTO). Up until the patent is granted, the patent process is carried out before the PTO (this constitutes 80% of patent law hours of practice); afterwards, patent litigation occurs before the U.S. District Courts. In the patent office, the burden of proof is on the examiner to show why an invention does not deserve patent protection.

What is patent validity?

Much like an accused criminal suspect is presumed innocent until proven guilty, patents are presumed valid until proven otherwise in court or in a proceeding before the PTO called a reexamination. In court, the burden of proof is on the alleged infringer to prove that a patent is not valid.

How much protection does a patent give?

Patents are national in scope; patent protection in other countries must be granted by those countries, in accordance with their patent laws. Through international conventions and treaties such as the Patent Cooperation Treaty, filing a patent application in one country can serve as a basis for pursuing protection in other countries.

What is patent infringement?

A patent is a legal document that allows the owner to prevent other people from making, using, selling or importing an invention that is covered by the patent. Patents have legal language, called “claims” that are similar to the metes and bounds of a property line. A patent infringement lawsuit is a lawsuit where a patent holder claims that another party is making, using, selling or importing the patent holder’s invention, in violation of the patent.

What’s the difference between the U.S. and other countries’ systems?

The U.S. is one of the few countries to follow a “first-to-invent” rule of granting patents, where date of invention is the guideline used for precedence (as opposed to the “first-to-file” systems of the European Patent Office and Japanese Patent Office). The U.S. system is also an “examination” system, in which patent examiners perform prior art searches and scrutinize the patent for novelty, utility, and nonobviousness (as opposed to, for example, the Belgian “application” system, which grants a patent to an inventor upon his filing an application, without review).