April 2, 2014

Basics of Patenting an Invention in the United States

Patent Rights and Types of Patents

Patent Rights

Although a patent is often thought of as the physical document that illustrates and describes an invention, a patent, more formally “Letters Patent,” is actually a grant from the U.S. government of the right to exclude others for a limited period of time from “practicing” the invention “claimed” in the physical document. The power of the U.S. government to grant these patent rights flows from the U.S. Constitution, Article I, Section 8, which provides the Congress with the ability to promote the progress of the “useful arts” by securing for a limited time to inventors the exclusive right to their discoveries. Congress has provided this granting power to the U.S. Patent and Trademark Office (“PTO”), which oversees the patenting process from examining applications for Letters Patent to the granting of the exclusive rights. The process of obtaining a patent is commonly referred to as “patent prosecution.”

The right granted by the U.S. government is an “exclusive” right that allows a patentee to exclude others from making, using, selling and importing the patented invention. It is important to note that the right is not an affirmative right that allows the patentee to practice the invention without regard to rights of others. For example, suppose an inventor obtains a U.S. patent for a new mousetrap that is an improvement upon an existing mousetrap. However, also suppose the existing mousetrap is covered by the claims of a valid and enforceable U.S. patent owned by someone other than the inventor, let’s say, BigMousetrap Corporation. In this scenario, the inventor cannot legally make, use, sell and/or import the new mousetrap in the U.S. without first obtaining a right, e.g., via an assignment or license, from BigMousetrap Corp. to practice the underlying mousetrap. If the inventor practices the new mousetrap without first obtaining permission from BigMousetrap Corp. by license or in other ways, BigMousetrap Corp. can sue the inventor for infringing its patent.

Types of Patents

In the U.S., there are three types of patents-utility, design and plant.

  • A utility patent covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . . .” 35 U.S.C. § 101. As used in the statute, “manufacture” means an article of manufacture, e.g., a product resulting from the transformation of a raw material into a product, and “composition of matter” means a chemical compound and the like. A utility patent is generally enforceable for a period of 20 years commencing on the filing date of the corresponding patent application. A design patent covers the ornamental design of an article of manufacture.
  • Design patents are enforceable for a period of 14 years commencing on the date the PTO issues the design patent.
  • Plant patents cover asexually reproduced plants, including cultivated spores, mutants, hybrids, newly found seedlings other than tubers and propagated plants or plants found in an uncultivated state. Similar to utility patents, a plant patent is enforceable for a period of 20 years from the filing date of the corresponding application.

The utility patent is by far the most common type of patent granted by the PTO, with over 7 million granted to date. In addition, a utility patent is the type of patent that comes to mind for most people when referring to patents.

See also Basics of Patenting and Invention in the U.S. - Part 2: Obtaining a Utility Patent


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