What is Patent Law?
This area of intellectual property law comes with its own set of complex challengesBy Super Lawyers staff | Reviewed by Canaan Suitt, J.D. | Last updated on February 2, 2023
Use these links to jump to different sections:
- Patent Law – What You Need to Know
- An Overview of Patent Law: What Is a Patent?
- Do You Need a Patent?
- Where Do You Register Patents?
- What Services Can a Patent Attorney Provide?
- Common Questions for an Attorney
To promote innovation, the U.S. Constitution allows Congress to pass laws granting inventors the exclusive right to their inventions. Under this constitutional authority, Congress enacted the Patent Act. If you have designed a new product or way of doing something, you might seek a patent from the U.S. Patent and Trademark Office (USPTO). This exciting area of intellectual property law is at the forefront of invention, but it also comes with its own set of challenges.
Receiving a patent is complex. For one thing, your invention cannot be too much like a current patent. If it is, then the USPTO will reject your application. Many disagreements can break out even after receiving a patent, including someone using your invention without permission. A patent attorney can protect the value of your invention by helping you get it approved and negotiating a licensing agreement.
Patent Law – What You Need to Know
- If you have a new invention you want to protect, you might seek a patent from the United States Patent and Trademark Office (USPTO).
- The patent system is complex, and your invention cannot be too much like a current patent.
- After receiving a patent, patent owners can protect their rights in the invention against anyone using it without the owner’s permission.
- A patent attorney can protect the value of your invention by helping you get it approved and negotiating a licensing agreement.
An Overview of Patent Law: What Is a Patent?
A patent is a type of intellectual property. It gives the person holding the patent the right to exclude anyone else from making the object that is under patent. For example, you might invent a new type of ironing board. If you did not patent it, anyone could start making the same board, which would reduce the value of your invention. To protect yourself, you can get a patent and sue anyone who uses your invention without your permission.
The most common patents are:
- Utility patents. You can seek a utility patent if you invent a new and useful process, machine, article of manufacture, or composition of matter. These are the most common patents.
- Design patents. You can get a design patent for ornamental designs for manufactured products.
- Plant patents. You can get a plant patent if you discover, produce, or invent a new type of plant.
Utility and plant patents last for 20 years. A design patent will last 15 years.
Do You Need a Patent?
The best way to protect the value of an invention is to patent it. This way, you can exploit the invention and prevent other people from taking market share from you. Many inventors get patents even if they don’t have plans to mass-produce an item.
Of course, you might not want a patent but a copyright, which is another type of intellectual property right. Many software developers seek copyright, not patents, for new software programs. Speak with a patent attorney to identify which protection you should pursue.
Where Do You Register Patents?
In the U.S., you register a patent with the USPTO. Each country has its own patent office and types of patents. An attorney can smooth the process of filing for protection in different countries.
What Services Can a Patent Attorney Provide?
The patent process isn’t as simple as many inventors imagine it will be. The USPTO has high standards that applicants must meet, and they won’t go easy on you simply because you are an inventor. You might need a patent attorney to help with any of the following.
1. Patentability Assistance
Not all inventions can receive a patent (“patentability”). For example, you can only receive a patent for a new product if the invention is useful, non-obvious, and original. You can’t patent a mere abstract idea or law of nature. A patent attorney can search databases and scientific literature to review whether the invention is already in the public domain or whether your invention was already patented.
Many patent attorneys call this a “prior art” search. By engaging in this thorough patent search, you can avoid problems when the USPTO examines your application. A prior art search can also help you clarify what is novel about your invention.
2. Patent Application Process
Applying for a patent takes a lot of work. In addition to applying to the USPTO for a patent, many inventors also seek international or foreign approval. An application requires certain documents on the date of filing, as well as descriptions, drawings, and claims. The USPTO will reject an incomplete or confusing application, so many inventors work with an experienced patent attorney before applying. Multiple rejections only add to the cost, so put your best foot forward.
3. Patent Prosecution
Examiners rarely grant a patent immediately. Instead, they might point out certain problems which the inventor can address. For example, you might need to refine your claims or identify more precisely why your invention is unique. An attorney can engage in patent prosecution to get your application approved. Patent prosecution usually involves the USPTO but could also include the Board of Patent Appeals.
4. Validity or Invalidity Search
A patent attorney can also perform a validity or invalidity search. This typically happens after the USPTO issues a patent. For example, you might want to validate your claims in a patent, or you wish to invalidate another person’s patent by testing its claims.
Essentially, a patent lawyer will search for prior art that the USPTO examiner might have missed. This prior art could show up later in a lawsuit to invalidate your patent (or a competitor’s).
5. Patent Licensing
If you obtain a patent, you have the right to prevent other people from using your invention. However, you also gain the right to grant a license. You can give someone permission to use your patented invention if they pay you. This is an essential right since most inventors do not have the ability to manufacture anything on a mass scale. Instead, they grant a license to a manufacturer or other inventor.
However, licensing is full of pitfalls, and you will need a solid licensing agreement. This agreement should clearly explain each side’s patent rights to the invention and what happens if there is a dispute.
Even with a solid licensing agreement, parties get into disputes. For example, the inventor might allege you are making use of an invention that they haven’t agreed to. You can negotiate a settlement agreement or end up in court litigating the dispute.
6. Patent Transfer
You might want to sell or buy patents, especially if you are buying or selling a business and want the intellectual property to go along with hard assets. An attorney can evaluate all intellectual property, including patents, and help clients gauge their worth. An attorney should also draft contracts to avoid snags when transferring patents between parties.
7. Patent Litigation
Patent litigation is different from patent prosecution. Patent prosecution typically refers to getting a patent granted. Patent litigation typically involves two inventors or businesses after a patent has been granted.
Patent litigation often involves U.S. patent infringement claims—someone is using your patent without permission. The patent holder can seek money damages and a court order to prevent someone from continuing to infringe the patent.
In some situations, patent disputes get decided in arbitration. Arbitration is like a trial but private and sometimes less formal. You might prefer this approach because the arbitrator who hears the dispute could have a deep technical or scientific background—more so than a judge who would otherwise hear a case in open court. Find out if a patent attorney has experience in alternative dispute resolution.
Common Questions for an Attorney
Many different attorneys practice in this field, and you should find out crucial information before hiring them. Possibly ask any of the following questions:
- Do you have a special technical or scientific background?
- Do you have patent prosecution experience? Litigation or licensing experience?
- Have you ever helped prosecute a patent that was later invalidated?
- Has any patent you prosecuted been the subject of litigation?
- What information do you need to determine whether I have a valid patent? What do I need to change to obtain patent protections?
- What is the process of filing a patent application?
- Should I protect my invention as a trade secret rather than through patent law?
- How much do you charge for your services? Do you offer any services using a flat fee?
Finding the Right Attorney for Your Needs
It is essential to approach the right type of attorney—someone who can help you through your entire case. To do so, you can visit the Super Lawyers directory and use the search box to find a lawyer based on your legal issue or location.
To help you get started, you may want to consider looking for a lawyer who practices patent law.
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