IP Topics
Patents.
A patent gives its owner the right to stop others from making, using, selling, or importing an invention for a limited time, in exchange for publicly disclosing how the invention works.
In Short
A U.S. patent gives its owner the right to exclude others from making, using, selling, offering to sell, or importing the claimed invention. For utility patents, the term generally ends twenty years after the relevant nonprovisional filing date, subject to adjustments, extensions and other applicable rules. A patent does not give its owner the right to practice the invention, because someone else's patent may still cover it.
Common situations.
- A business has built, or is building, something that works in a new way.
- Competitors could copy the product once they see it.
- The invention will be disclosed to investors, partners, or the public.
- An investor or acquirer is evaluating the company's patent position.
- A patent owner has accused the company of infringement.
- Before launch, someone else's patent may read on the product.
Key concepts.
Utility, design, and plant patents
Utility patents protect how an invention works; design patents protect how it looks; plant patents cover new plant varieties. The distinction has financial consequences: utility patents generally run twenty years after the relevant nonprovisional filing date, subject to adjustments, extensions and other applicable rules, and require maintenance fees to stay alive, while design patents run fifteen years from grant and require no maintenance fees at all.
Patentability is not freedom to operate
Patentability asks whether an invention is new and non-obvious enough to be patented. Freedom to operate asks whether a product can be sold without infringing someone else's patent. A patentable product can still infringe, and a clearance review before launch identifies that risk while there is still time to design around it.
Provisional applications
A provisional application secures an early filing date at lower cost, but it is never examined and expires after twelve months. It only helps if it fully describes the invention the later nonprovisional claims, and public disclosure before any filing can still forfeit foreign rights.
Drafting, office actions, and examiner interviews
The specification must teach the invention; the claims define the legal boundaries. Many applications receive office actions: rejections for subject-matter eligibility, novelty, obviousness, or inadequate disclosure. Examiner interviews can clarify an examiner's objections and may resolve rejections sooner than written responses.
International filing strategy
Patents are territorial. The Patent Cooperation Treaty gives applicants up to thirty months from the priority date, in most countries, to decide where to pursue protection, and the Paris Convention preserves a twelve-month priority window from the first filing. Because each country adds cost, applicants usually file where they sell or manufacture.
Portfolio decisions
Which inventions to patent, which to keep as trade secrets, which to publish defensively, and when to prune patents that no longer justify their maintenance fees.
PTAB appeals and PTAB trials
An ex parte appeal asks the Patent Trial and Appeal Board to overrule an examiner's rejection of a pending application. A PTAB trial (inter partes review or post-grant review) asks the Board to cancel claims of an already-issued patent, under different standards, timelines, and estoppel consequences.
Disputes and enforcement
Patents are enforced through demand letters, federal court litigation, and, for imported goods, Section 337 proceedings at the International Trade Commission. Defenses run from non-infringement and invalidity to unenforceability, and venue rules limit where a patent case may be filed.
The Process
From idea to issued patent.
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Protect and search
Keep the invention confidential, search the prior art, and assess patentability before anything is filed.
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Draft and file
Prepare an application that fully describes the invention and claims it precisely. It may be provisional or nonprovisional, U.S. or international.
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Prosecute
Respond to office actions through amendments, argument, and examiner interviews. This stage determines what the issued patent covers.
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Issue and maintain
Allowance, issuance, and maintenance fees, followed by licensing and enforcement where appropriate.
A patent is often one of several rights in the same product. The manufacturing process may be a trade secret, the packaging may carry a trademark, and the software inside may be protected by copyright. Deciding what to patent, what to keep confidential, and what to brand is usually one decision, not three.