Patent Law

Legally Owning Your Inventions

Patents grant the right to stop others from making, using or selling your inventive product or process. The process of obtaining a patent is generally slow, difficult, and expensive. With a patent, however, you may convince investors to put money into your business or project; and you may be able to earn money by licensing to other companies the right to use your patented product or process, for a fee.

How to Apply

To apply for a patent, you must file a lengthy and complex application with the Federal Patent Office in Washington D.C. The application requires multiple parts, including drawings, written description, and precise claims, each having specific technical requirements.

What Happens

When your application is received, a Patent Office examiner provides a written response comparing your product/process to similar ones already existing (so-called “prior art”), usually asserting that your idea is too obvious. You then write a response presenting detailed arguments against the examiner’s assertions, that your product is different enough to warrant the patent. There are typically several rounds of such written argument until the patent examiner finally grants or denies your application. If denied, you can appeal or purchase further opportunity for written argument.

What to Discuss with a Lawyer

You should begin with an idea of the costs involved in seeking a patent, compared to your available funds and the return of investment you feel will result if the patent issues. An experienced patent attorney can discuss things to avoid at the development stage that could present obstacles later down the road. You may want an attorney to prepare confidentiality agreements for your dealings with persons involved as you develop your product or process. A patent attorney can review your idea and discuss its suitability for seeking a patent. Working with an attorney to draft your patent application increases your odds when facing the tough scrutiny of the Patent Office once your application is submitted.

Related Legal Terms

Application - a document filed with the Patent Office to seek a patent

Written Description - the narrative portion of a patent application, describing what the inventor considers to be the best mode or preferred embodiment for practicing the invention, together with disclosure sufficient to enable one skilled in the general field to make and use the invention. At least one patent claim is required, as are drawings if necessary to understand the invention, which is usually the case.

Claims – what a patent application must include, at least one being a technical and broad definition of what the patent will cover or its scope, set forth at the end of an application in numbered paragraphs

Conception and Reduction to Practice - the beginning mental concept of an invention. Reduction to practice is taking an invention from mental concept to physical reality, verifying operability and suitability. Both are relevant evidence for resolving a dispute between two or more parties as to who first invented.

Critical Date - the date at which a U.S. application can no longer be filed due to statutory bars, one year from initially placing the invention in the public domain, e.g., through publication, public use, offer for sale or sale

Crowded Art - any field of technology in which there are many prior inventions, making it more difficult to obtain a patent

Design Patent - a less common type of patent offering protection in relation to ornamental appearance of a product

Doctrine of Equivalents - a legal doctrine expanding patent infringement to cover practicing an invention with minor design changes that would otherwise avoid literal infringement

Examiner – a Patent Office employee assigned to each patent application

File Wrapper Estoppel - a legal doctrine whereby an applicant’s narrowing the scope of the patent during prosecution in order to overcome prior art rejections effectively bars the applicant from later arguing a broader interpretation of what the patent covers

Person Skilled in the Art - a hypothetical person having ordinary technical prowess in the general area of the invention (e.g., an engineer), for judging whether the claimed invention is obvious for patentability purposes

Infringement - when someone makes, uses, sells, places on sale, or imports into the United States an invention already patented by another

New Matter - inventive content not present in the patent application filed, which cannot be added to the application during prosecution

Novelty - one of the patentability hurdles faced by a patent application. Novelty means the claimed invention must be unique, with respect to any single prior art

Non-obviousness - another patentability hurdle faced by a patent application, this means the claimed invention must not be obvious to a person having ordinary skill in the art, with respect to combining aspects of multiple prior art

Prosecution - the administrative process with the Patent Office between patent filing and patent issuance or denial, involving written argument with the Patent Office regarding patentability

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This is for general information only. It is not intended as legal advice.