A patent is a grant of exclusive rights given by a government to an inventor for a limited time in exchange for a public disclosure of an invention. It is an essential tool for protecting investment in new product or process developments. Patents are assets that protect growth and facilitate the promotion of products and services to potential customers and investors. As such, patents can considerably enhance a company’s valuation.

Deciding to Seek Patent Protection

There are many economic factors to consider in determining whether to seek patent protection and how to build a patent portfolio. While patent protection may be somewhat expensive to obtain and to enforce, it is an indispensable asset for many companies. Thus, companies should consider several economic factors, including the value that a patent would have in domestic and/or foreign markets and the risks of not having a particular patent as protection for its research investment.

The value of a patent depends in part on the inherent value of the technology, including the potential market for the invention and the strength of competition. Another determinative factor in the value of a patent is the strength of the patent protection—derived, to a large extent, from the skill and expertise of the attorneys who prepare and prosecute the patent application.

Decisions regarding patent protection should be made in the early development stages in order to preserve the company’s options with regard to intellectual property rights. For example, U.S. law provides a one-year grace period in which to file an application before patent rights are lost, and beginning when the invention is publicly used, described in a printed publication, or sold. In contrast, many of the more important industrialized nations require absolute "novelty" as of the effective date of the foreign application. Thus, there is an advantage—even a necessity—for many applicants to file prior to making any kind of disclosure.

Patent Prosecution

In the United States, patent applications are filed with the United States Patent and Trademark Office ("USPTO"), where the application undergoes a thorough examination to ensure that strict legal requirements are met. The examination process, also called patent prosecution, can be somewhat lengthy, often lasting three or more years.

A patent application contains multiple sections, including a written description of the invention that would enable one with ordinary skill in the relevant art to practice the invention without undue experimentation (the “specification”), typically one or more drawings, and one or more claims. It is the claims, as understood in view of the specification, that determine the “metes and bounds” of a patent owner’s right to exclude others from making, using or selling the invention. For an infringement to be found, each and every element of a given claim must be found in the accused device or process. More information about filing a utility patent application with the USPTO can be found here.

The patent application is examined as to form and completeness and for compliance with the various substantive requirements of the law, including an enabling disclosure and claims that distinctly claim the subject matter of the invention.

The Examiner then conducts a search of the prior art and reviews the claims to unsure that the claimed invention is new and not obvious. Prior art generally consists of any printed publication that was publicly available prior to the date of invention or one year prior to the filing date of the application, but also includes published U.S. patents or patent applications filed prior to the date of invention.

The examination results are communicated to the applicant in an “Office Action.” Typically, an Examiner will reject some or all of the patent claims as anticipated (not new) and/or as obvious. The applicant usually responds by filing an amendment, offering arguments in favor of allowance and/or presenting narrower, more limited claims.

This process may be viewed as analogous to a contract negotiation, where the patent claims constitute an “offer” from the applicant, followed by a series of rejections and amendments that resemble counteroffers. Unlike conventional contract negotiations, however, where the interpretation is typically limited to the terms found in the integrated contract, the USPTO proceedings, or ‘prosecution history’, remain available to determine the scope of patent protection in future litigation.

Thus, skillful prosecution by a practitioner that understands the underlying technology is vital to the enforceability of a patent. For additional general information regarding patent prosecution, contact us.

Scope and Duration of Patent Protection

The owner of a granted patent may enforce the patent against anyone who without authority makes, uses, offers to sell, or sells the claimed invention, within the United States, or imports into the United States the claimed invention, during the term of the patent. Further, whoever actively induces infringement of a patent is also liable as for infringement. A party can also be held liable for “contributory infringement”, which is the act of knowingly selling an article made or adapted for use as part of a patented invention where the article is not capable of substantial non-infringing use.

In general, the patent term ends twenty years from the date that the utility patent application was filed. There are limited circumstances under which the patent term may be extended, most notably in the case of pharmaceuticals that have their patent term effectively shortened by the Food and Drug Administration’s (FDA) lengthy approval process.