What is a patent? A U.S. patent is a grant of property rights by the United States government. It is important to understand that the patent rights are negative or exclusionary rights. The inventor does not get the right to practice or manufacture his or her invention disclosed and claimed in the patent, but the inventor does get the right to exclude others from practicing it in the United States for a certain number of years. That includes making, using, selling, offering to sell, or importing the invention into the U.S. Thus, a patent can be a very powerful economic tool. The U.S. patent does not grant any international rights (see PCT section below).

How do I get a patent? The federal agency for granting U.S. patents and registering trademarks is the United States Patent and Trademark Office (USPTO), which is an agency of the Department of Commerce. The patent application process is known as prosecution. To receive a patent, it is necessary to satisfy a number of requirements, most importantly to show the novelty and nonobviousness of the invention to the USPTO. The invention is not novel if it already exists, and the invention is obvious if it can be easily created from two or more pieces of prior art.

What do I do if I have an idea for a patent? If you have an idea that you think may be patentable, you should speak with a registered patent attorney as soon as possible. The attorney will handle your idea in confidence and assist you with obtaining a patent or patents. Prompt action is absolutely essential because (1) a large number of factors in the U.S. and abroad will affect your rights to file for a patent application and may prevent you from receiving a patent; (2) earlier-filed applications may have better chances for success since less prior art may be available against your invention; and (3) certain statutory bars are triggered by publication or disclosure of your idea that may prevent you from filing a patent application. It is also a good idea to keep a "lab notebook" where you can put your thoughts on paper by writing out a description of your invention as detailed as you can make it, put a date on it and sign it. This may help you in the future should you decide to proceed with filing a patent application.

What types of U.S. patents are there? There are three types of U.S. patents: (1) Utility patents that protect useful creations, (2) Design patents that protect ornamental designs of articles of manufacture, and (3) Plant patents that protect distinct and new varieties of plants. The USPTO receives several hundred thousand patent applications a year and grants almost two hundred thousand patents a year. The numbers for trademarks are similar.

The most common are the applications for Utility Patents. The term of a utility patent filed today is generally 20 years from the earliest filing date of the application (14 years from issue date for a design patent). The parts of a full utility patent application are a specification or disclosure (detailed description of the invention), drawings (further describing and showing the invention), and claims (claiming what the inventor invented). See some examples of modern mechanical, electrical, electronic, computer, chemical, biochemical, medical, and pharmaceutical patents here.

 U.S. Patent No. 4,500,000
 U.S. Patent No. 5,000,000
 U.S. Patent No. 5,500,000
 U.S. Patent No. 6,000,000
 U.S. Patent No. 6,500,000
 U.S. Patent No. 7,000,000
 U.S. Patent No. 7,500,000
 U.S. Patent No. 7,750,022

What is a provisional patent application? A shortened version of the full application is called a provisional application. It can be filed without claims, which is usually faster and less expensive. However, the provisional application filed without any further action will not be examined by the USPTO. It is necessary to file a full application within a year, or the provisional application will become abandoned. The provisional application does not start the patent term, but filing the full non-provisional patent application does. Filing the provisional application sooner rather than later minimizes the likelihood that there will be new prior art cited against the inventor and helps avoid certain time-dependent statutory bars. Better yet, the invention disclosed in the provisional application can be marked with a “Patent Pending notice as soon as the provisional application is filed. The notice can be used for as long as the provisional application or the full patent application is pending.

Generally, it is always better to file a patent application earlier rather than later because this reduces the universe of prior art that can be sited against the invention and provides better protection against any statutory bars to filing a patent application.

What is patentable (with respect to utility patents)? Basically, anything made by man is patentable, provided the invention is novel and nonobviousness. More specifically, this includes machines, methods and processes, articles of manufacture, compositions of matter (chemical or pharmaceutical for example), or any new and useful improvement thereof. Laws of nature, abstract ideas, and physical phenomena are not patentable.

Who can file for a patent in the United States? Anyone can file for a United States patent - the inventor or inventors do not have to be US citizens or residents. However, in order to file a PCT application in the United States Patent and Trademark Office, using USPTO as the receiving office, at least one of the inventors must be a US citizen or resident.

What are Patentability Searches? Generally, a patent application can be filed without any prior art search, which is sometimes called a patentability search. The patentability search aims to determine whether the subject matter of an invention is novel and nonobvious and whether it makes sense to file a patent application claiming this subject matter. If the search shows that the subject matter has been claimed or described somewhere before, the applicant may be precluded from receiving a patent, or it may make receiving a patent very difficult. A search helps avoid the costs of drafting and filing a patent application that has few chances of success. Typically, even a limited search of the USPTO's records of issued U.S. Patents and published patent applications can be a good indicator of the prior art.

What is false patent marking? The patent law of the United Sates has a cause of action for false patent marking. False patent marking involves marking products with expired or inapplicable patents, or using expired or inapplicable patents in advertising in connection with products made, used, offered for sale, sold, or imported into the United States. False marking also covers using valid patents without the consent of the patentee and marking unpatented articles "patented" or "patent pending". In addition to falsely marking, defendant(s) must have the intent or purpose to deceive the public about the patent coverage for these products. According to the law, anyone can sue on behalf of the United States to collect a civil fine for false patent marking. This is called a qui tam action, and it is typically brought to recover monetary damages from defendant(s) for false patent marking. Currently, the fine can be as high as $500 per offending article. Half of the total fine is paid to the United States, and half is paid to the person who brought the action.

Fun Patent Facts:

The right to patents is a constitutional right in the United States. See Article I, Section 8, Clause 8, of the U.S. Constitution that directs the Executive branch to "promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries."

President Abraham Lincoln was fascinated by all mechanical and innovative things and had a patent himself: U.S. Patent No. 6,469. It was titled "Manner of Buoying Vessels" and was directed to a device for buoying vessels over air-filled chambers. See the patent here. Lincoln remains the only U.S. President who has ever had a patent.

Albert Einstein worked as a patent examiner at the Swiss Patent Office for several years in the early 20th century. Of course, he still practiced physics, conducted research and published papers in his spare time.

During my practice as an attorney and as an engineer, I have acquired familiarity with the following technologies:

  • Cellular communications: cellular networks, communication protocols, 3GPP standard (GSM-based), 3GPP2 standard (CDMA-based), and various branches of cellular technologies, including Hybrid ARQ, Mobility Management, Internet Protocol, Multicasting, Multinetwork Compatibility, Robust Header Compression (ROHC), and Macrodiversity.
  • Electrical/Electronics (CMOS and CCD sensors, circuit boards and manufacturing methods, medical diagnostic systems, voltage regulators, semiconductors, acoustic semiconductor wafer cleaners, variable message signs, computer printers).
  • Image and video compression and transmission.
  • Audio and video content delivery over the Internet and cable television; interactive content and video messaging systems.
  • Mobile shopping applications and interfaces; sales tracking and monitoring systems and methods.
  • Digital Rights Management (DRM) and copy protection systems for DVDs.
  • Software, including developing code (Pascal, C, C++), web design and multimedia, databases, and professional drafting software (AutoCAD, MicroStation, Kubotek Spectrum, eDrawings, Micrografx, Visio).
  • Pharmaceutical compositions, drug delivery systems and methods including delayed release; animal health diagnostic and health products.
  • Detection of chemical and biological particles.
  • Medical devices including cervical traction devices, stents, eyeglasses, and contact lenses.
  • Laser and imager bar code scanners, portable computing device scanners and scanner software.
  • Optics (as applicable to bar code readers, confocal microscopes, fiber optics, and DVD read/write systems).
  • GPS navigation and location systems.
  • Traffic signal controllers, vehicle detectors, traffic signals and signal systems.
  • Closed Circuit Television cameras, electronics and video.
  • High- and low-speed fiber optic communication systems.
  • Mechanical arts, illuminated signs, support structures, tools, locks and locking mechanisms.

If you wish to discuss your intellectual property matter, including patent, international patent, copyright, trademark, trade secret, or licensing, contact Leo Mikityanskiy today at 718-256-3210.