What is a patent?
A patent is a document, issued by the United States Patent and Trademark Office, which grants the owner of the document the legally enforceable right to exclude others from making, using, offering for sale or selling or importing the invention in the United States. A patent grants no affirmative rights. It only allows the owner of the patent to stop others. This exclusive right to practice the invention lasts for 20 years from the date of filing of an application.
How does an invention become a patent?
In the United States (unlike most other countries) a patent is granted to the person who is first to invent. After an application for a patent is filed with the USPTO, the patent office examines the application to make sure that the invention is new, useful, and unobvious. This examination process assures that the inventor was in fact the first to invent this invention. The process of examination requires that the examiner review the “prior art” in the technical field of the invention. After reviewing the prior art in the field, if the examiner is convinced that the invention is new and non-obvious then the examiner will grant the applicant a patent.
What is prior art?
“Prior art”, in legal terms, is anything that qualifies as prior art under 35 U.S.C. 102. In non-legal terms, prior art is any information that has been made available to the public in any form before a given “critical date” that might be relevant to whether an invention was in fact new or obvious at the time it was invented. Examples of information that can be used are publications, products sold or offered for sale, public uses of an invention, other patents or patent applications that have been published. It does not matter whether the information is well known to the public, only that it is available to the public if someone was interested in finding it. Information which is kept secret is not prior art.
What does it mean for an invention to be new?
An invention is new if no single piece of prior art covers all the elements of the “claim” for the invention. In other words, there cannot be two patents covering the exact same invention as described in the patent claim. The focus is on what the inventor “claims” in writing as his/her invention. It is not what others would consider the invention. If the “claim” describes an invention which adds absolutely no new information into the technical field then it is not new and not patentable.
What does it mean for an invention to be obvious?
An invention is obvious if, at the time the invention is invented, a person having ordinary skill in the technical field would have found the invention to be obvious looking at all of the prior art in the technical field. An analogy is to imagine a person having ordinary skill in the technical field sitting in room surrounded by all the information known in that technical field. Given all that information, if that person of ordinary skill would know how to solve the problem at which the invention is directed to arrive at the exact same thing claimed as the invention, then it is obvious. Remember, it must have not been obvious at the time the invention was invented, not afterwards, because in hindsight many inventions seem obvious. An invention that is obvious is not patentable.
What are claims?
Every patent application concludes with what are called “claims”. There can be many claims in each patent application. The claims are the part of the application which specifically lists each element that composes what the inventor considers to be his invention. The rest of the application is important to those who need to understand and practice the invention but the claims are the part of the patent which allows the owner to exclude others. If another person is making, selling, or using any product or process which includes all the elements of a claim in a patent then that person is infringing on that patent. Infringement focuses solely on the claims of the patent. In essence, each claim is its own invention which the carries with it a right to exclude others that are practicing that claim.
What is a “priority date”?
The “priority date”, in a non-legal definition, is the earliest date that the invention is disclosed in a patent application. This date is a legal approximation of the date of invention. Since our patent system only allows patents on inventions that are new or unobvious at the time of invention, this date is critical. All the prior art (or information in the field) that can show this invention is either not new or obvious must have existed before this date. Therefore, all of the publications, products sold or offered for sale, public uses and other prior art must be shown to have existed prior to the priority date to in order to be relevant to whether the patent is invalid.
How to invalidate a patent?
When a patent is issued, there is a presumption that the patent satisfies the requirements that the invention is new and unobvious. However, a granted patent is not an absolute decree that the patent is valid. In fact, because of the sheer bulk of patent applications that the USPTO receives combined with the difficulty in locating prior art, the chance is high that many patents should not have been issued. If a patent infringement lawsuit is initiated against an infringer, a typical defense is that the patent is invalid and if proven then the patent owner cannot recover for infringement on that patent.
What is a patent re-exam?
A re-exam is a method of invalidating a patent without going through the courts. Anyone can request the USPTO re-examine an issued patent. The request will be granted if a “substantial new question of patentability” is raised. This typically means that the request must include prior art that the examiner did not have when examining the patent application. If a re-exam is granted and the examiner finds that any of the patent claims are invalid in view of the newly submitted prior art then the examiner may cancel those claims.
What are the consequences of patent infringement?
Patent infringement can result in very costly and time consuming disputes. Even before a patent infringement lawsuit is brought, lawyers must be hired to render opinions as so the validity of the patent or whether the product actually does infringe on the patent. The production or sale of the product may be slowed or suspended. Patent infringement lawsuits are incredibly expensive. It is often times a business decision whether to license, continue to make the product or simply to make a different product. If patent infringement lawsuit is lost the result can be a permanent injunction prohibiting the infringer from committing further acts of patent infringement. A successful patent owner can also obtain monetary damages to compensate for the harm caused by patent infringement.