Patent Law
Under the United States Constitution and federal law, patent rights are granted
to inventors so that they might have exclusive rights to their discoveries.
This exclusivity allows the patent holder to prevent others from making, using,
selling, offering to sell, or importing the patented item. Once the patent
expires, the public can then produce, sell and use the patented item at will.
There are two types of patents (actually three but one type is limited in
its relevancy to small groups.)
- Utility Patents: These are granted to inventors who develop a new and
useful process, machine, article of manufacture, or composition of matter,
or any
new and useful improvement of any such items already existing. Utility patents
remain in force for 20 years from the date on which the application for the
patent was filed with the United States Patent and Trademark office.
- Design Patents: Design patents involve the appearance of created or
manufactured items. Design patents in the United States can be obtained on
any new, original
and ornamental design. Design patents remain in force for 20 years from the
date on which the application for the patent was filed with the United States
Patent and Trademark office
Patent applications are accompanied by a description of the item to be patented.
This description must be in a form that allows the production of the item by
the average practitioner of the relevant trade or skill necessary to produce
the item. In other words, other people with the same background and skills
as the inventor(s) need to be able to figure out how to create the item from
the description given in the patent.
Patent Scope
The patent application is also accompanied by the claims of the inventor,
which state the scope of the patent and "stakes out" the patent's
turf. If anyone engages in the production of an item falling in the claims
of a patent,
the patent-holder can bring an action against them. An infringement on a
patent claim can be either literal or equivalent. Literal infringement occurs
when the infringing item possesses each of the features listed in the patent
claim. But an infringement can also occur if the infringing item does not
possess each item found in the patent claim, this is an equivalent infringement.
Both types of infringement allow a patent-holder to exercise his rights and
sue the alleged infringer.
Patent-Holder Rights
A United States patent allows the owner of the patent to exclude others from
making, using or selling the patented invention anywhere in the united
states or any of its territories. Note that it does not automatically give
the inventor
the power to produce or market an invention, it only allows the patent-holder
to prevent others from producing or marketing the item. What's the difference,
you ask?
The difference can be illustrated by an example. Suppose you invented windshield
wipers, and in your patent claims, you stated that your patent was for any
device which oscillated across the windshield and cleaned off the accumulated
rain. Then I come along a year after the patent is granted and invent timed
windshield wipers (you know, the kind with a built-in delay feature), and I
get a patent on timed wipers. Your patent claim would be broad enough that
it would prevent me from producing the timed wipers, but you could not produce
timed wipers either without my permission. Your patent blocks me from any use
of my patent without your permission, and my patent blocks some uses of your
patent. This is what is meant when we say that patents give you the right to
exclude others, while not necessarily giving you the right to produce what
is patented.
Patent Requirements
For the United States Patent Office to grant a patent, an invention must
meet the following requirements:
- Novelty: Simply put, the invention must be new. The person
requesting the patent must be the inventor (or someone who holds the inventor's
rights). Also,
the inventor must apply for a patent within one year after the invention
is sold to the public or offered for sale.
- Utility: The invention must have
some purpose or usefulness.
- Non-obviousness: The invention cannot be something
that was obvious to the average person who worked in the field or discipline
out of which the invention
arose. (For those of you who care to know, obviousness is measured by what
people of "ordinary skill in the art" would find obvious. Clearly,
what a genetic scientist finds obvious is not the same as an auto-mechanic.)
- Disclosure: The Inventor must disclose to the Federal Government the best way known to
the inventor of making and using the invention. The inventor must
also provide detailed descriptions of the invention that would enable others
in the same field to replicate and use the invention.
The US Patent Office then puts its patent examiners to work. Examiners have
technical expertise in the relevant field and training in the legal aspects
of patentibility. The length of time necessary to get through the patent
application process varies according to the technology involved, but the
average is eighteen
months. Applications for patents are often rejected, and the inventor must
then pursue it by having his or her patent attorneys amend the application
and argue with the US Patent Office.
After the Grant--Validity and Unenforceability of a Patent
A patent can be challenged and the US Patent Office can review the patent
if the patent becomes the subject of litigation. Also, third parties can ask
the Patent Office to reexamine the award of a granted patent to determine
if the grant was proper in the circumstances. Invalidity of the underlying
patent is a common defense to patent infringement.
Unenforceability is a different matter. Fraud on the Patent Office, inequitable
conduct, lack of candor when dealing with the Patent Office, can all result
in the patent being unenforceable. Similarly, attempts to extend the life of
a patent monopoly through the use of restrictive licensing agreements extending
beyond the terms of the patent or tying the sale of other unrelated goods to
the sale of patented goods are all reasons a patent could become unenforceable.
Enforcement
The owner of a valid enforceable patent may sue another party (person, corporation,
etc.) infringing on the patent and obtain an order from a court which
performs one or all of the following:
- An injunction (a legal order) ordering the infringer to stop making and/or
selling the product.
- Money for the lost profits or other damages suffered due to the infringer's
activity.
- Attorney fees (rare).
Damages for Infringement
Simply put, if you have actual knowledge that you are infringing on a patent,
you are liable for treble damages to the patent-holder. That means that
you have to pay three times whatever the patent-holder lost due to your infringement.
And if you are really nasty when infringing and/or during the subsequent
litigation, you may have to pay the other side's legal fees too.
Licensing
The patent monopoly can be used to exclude others from producing your product,
or you can make money by licensing your monopoly rights to others. Patent
rights and the limited monopoly granted by the patent can be carved up
in three different ways by a license.
- First, the license can divide the patent
monopoly temporally by licensing patent rights to another party for
some or all of the duration of the patent. For instance, you might grant
the
initial
five-year period of the patent to someone else through a license,
keeping the rest of the patent to yourself for future licensing or for your
own
benefit.
- Second, the patent monopoly can be carved up geographically,
with patent
rights being licensed to different parties, who are then limited
to selling the patented items to certain parts of the country or world.
- Last,
the patent rights can be divided according to activity. For example, one
party may be
licensed to only make the product, another party may hold a license
to only sell the product, and a third may hold the right to import the
product.
An important consideration in any licensing arrangement is which party to
the licensing agreement, the patent-holder or the person getting the license,
holds the legal right and/or duty to prevent other businesses from infringing
on the patent rights. Patent litigation is expensive and complex, so this issue
needs to be addressed in any licensing arrangement.
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