For the average person getting a patent is expensive. It costs $600 to $700 to apply for a patent. Additional fees are required if the application is amended. If a patent is granted, it costs $1,210 for an issuance fee. There are additional fees charged to keep the patent in force after three and a half, seven and a half, and eleven and a half years. The fees must be paid on time or the patent is considered abandoned. The fees to the Patent Office are in addition to whatever amounts the inventor spends developing the invention, searching the prior art, and preparing the application. The cost of hiring a patent lawyer to prepare and file an application starts at $10,000. Only 5 percent of patents are ever licensed or earn royalties. In 1980, Congress found that defending an important patent in a court case might cost each side as much as $250,000.

Some Ground Rules

Patent law is federal and is enforced in federal courts. The federal law is codified in Title 35 of the U.S. Code,³ which is available on the Patent Office web page.⁴ Another web-based version of 35 U.S.C., which is easier to navigate, is available from the Cornell Law School.⁵ There are three types of patents, Utility, Plant, and Design. The rules and the terminology are the same for all three. A minority of patents are Design patents, which are given for decorative work, such as a unique grillwork. They are granted for a shorter term (14 years) than utility or plant patents. Utility and plant patents are granted for a term of 20 years. The majority of grants are for utility or plant patents, which is the focus of discussion here.

The United States has a "first to invent" system. The first person to invent a new device is the one entitled to the patent.⁶ When two inventors both claim priority of invention, if one of the patent applications is still pending, the person claiming priority may sue the other in an interference suit, which begins by filing an appeal with the Patent Office Board of Patent Appeals and Interferences.⁷ The Board is made up of a group of patent examiners, convened by the Commissioner of the Patent Office. Decisions of the Board of Patent Appeals and Interferences may be appealed in federal court.

Only the inventor or his or her legal representative may apply for a patent.⁸ A patent is a legal right which allows the holder to prevent others from using, copying, or imitating his or her invention. A patent holder isn’t obligated to do anything with their patent. They're not required to make or manufacture anything based on it, they do not have to license it, and they may license it selectively.⁹ The patent is merely a right to exclude others. In the U.S., if another person subsequently invents the same thing completely independently, the patent holder can prevent them from using it. The independent inventor is infringing the patent even though they had no knowledge of the patent; neither knowledge nor intent is necessary for infringement. Like other legal rights, patent rights can be sold, assigned, traded, mortgaged, and so forth.

In the U.S., applying for a patent is called prosecuting a patent. The inventor applies to the U.S. Patent and Trademark Office (USPTO or PTO) for a patent. The system is an examination system. Patent applications are sorted by subject, using an elaborate classification index, and assigned to an examiner. The PTO hires examiners with specialized backgrounds who examine patents in their area of specialization to be sure they meet the requirements for patentability. The examiner may grant the patent, refuse the patent, or send the application back to the inventor seeking changes (amendments) to keep the patent claims from coming into conflict with already-patented devices.

The applicant must set out clearly and precisely what is being claimed in a Claims section of the application. The claims are followed by a fuller description, called the Specification. Although the claims may be stated in very broad language ("a means for attaching..."), the claims are read in conjunction with the Specification ("a magnetic strip, which will attach..."). The Specification must set out enough information about the invention, and the "best mode" for carrying it out, so that someone skilled in the relevant art can practice the invention.¹⁰

Once the patent is granted, if the patent holder finds someone using the invention without permission, they can sue in federal court for infringement. The initial suit is filed in federal district court.¹¹ Appeals from district court decisions go to the Court of Appeals for the Federal Circuit (CAFC, cited as Fed. Cir.).¹² In the past, appeals from decisions of the district court were taken to the local Circuit court, but the results were uneven. Some Circuit courts were much more "patent friendly," that is, friendly to patent holders, than others. The CAFC was set up to concentrate legal expertise, avoid disparities among the circuits, and prevent "circuit shopping." The CAFC handles other types of cases, but one of its primary functions is to hear appeals of patent cases from the federal district courts. The court also hears appeals from the Board of Patent Appeals and Interferences when an applicant thinks a patent has been wrongly denied.¹³ A petition for review of a decision by the CAFC may be made to the U.S. Supreme Court, but it is rare for the Supreme Court to accept a patent case.

The trial court may, as a matter of discretion, enjoin the accused infringer from continuing to use the patented device or process.¹⁴ The court can make the infringer destroy or surrender all the copies, pay the patent holder a reasonable royalty for using the device, and pay for income lost because of the infringement.

The person accused of infringing will often defend by saying: 1) their device isn't an infringement, and (or) 2) the patent isn't valid in the first place. Courts are often called upon to rule on the validity of patents and sort out the "boundaries" of a patent claim outside of which no infringement takes place.

Chapter 2 reviews the history of patent law as it was developed in Europe and England up to the time the Constitution was drafted and the initial U.S. patent laws were passed. The remaining chapters describe other patent issues.

If you think about being awarded a patent as if it were a computer game, there would be four gates or doors you would have to pass through, and several traps, pitfalls, or monsters you would have to avoid. The four doors are: 1) patentable subject matter, 2) usefulness, 3) novelty, and 4) nonobviousness. Chapter 3 discusses patentable subject matter. Chapter 4 reviews usefulness (utility). Chapter 5 describes the rules regarding novelty. There are a number of “bars” to novelty, making Chapter 5 somewhat longer than the preceding chapters. Chapter 6 takes up obviousness.

Chapter 7 describes the application process. Chapter 8 describes further pitfalls which may trap the unwary, either during prosecution of the patent or after the patent has been obtained.

An important part of obtaining a patent lies in being able to enforce the patent right internationally.  Chapter 9 describes international patent agreements.

Chapter 10 describes admission to the patent bar and the art of claim drafting. Chapter 10 uses the patent for a “peanut butter and jelly sandwich” as an example of how claims are drafted.

Use the Back button on your browser to return to the first chapter.

References to statutes and cases are given in endnotes at the end of each chapter.  Four appendices describe (A),  searching the patent prior art; (B), useful web sites; (C),  the patent classification index, and (D) international web sites relating to intellectual property.  To link from text to endnote and back to text: CTRL click on the reference number.  The notes contain quite a few external links. Please let me know if you find any broken links so I can correct them.

 

1 B.G. Corporation v. Walter Kidde & Co., Inc., 79 F.2d 20 (2nd Cir 1935).

2 http://www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm (filename: us_stat). The alternative to patenting is maintaining the invention as a trade secret. Unlike a patent, a trade secret might last indefinitely. However, leaving aside theft, others may discover the nature of the invention through reverse engineering, in which case they will begin using the device with impunity.

3 35 U.S.C. §§ 1 - 376.

4 http://www.uspto.gov.

5 http://www.law.cornell.edu/uscode/html/uscode35/usc_sup_01_35.html.

6 European countries, Japan, and other countries which belong to the World Trade Organization (WTO), use a "first to register" system; the first person to register gets the patent. International agreements affecting patent rights are discussed in Chapter 9.

7 35 U.S.C. §§ 134-135. The Board of Patent Appeals and Interferences is discussed in Chapter 7.

8 35 U.S.C. § 102(f).

9 35 U.S.C. § 271(d)(4). The classic case is Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908); see Carborundum Co. v. Molten Metal Equipment Innovations, Inc., 72 F.3d 872 (Fed. Cir. 1995); Image Technical Services Inc. v. Eastman Kodak Co., 125 F.3d 1195 (9th Cir. 1997), cert. denied, 523 U.S. 1094 (1998). Compulsory licensing, which is rare in the United States, is discussed in later chapters.

10 35 U.S.C. § 112.

11 28 U.S.C. §§ 1295(a)(1), 1295(a)(4), 1338, 1400, 1498.

12 28 U.S.C. § 1295(a)(1).

13 28 U.S.C. § 1295(a)(4)(A) (interference and appeal from Board of Patent Appeals; 28 U.S.C. § 1295(a)(1) (infringement and appeals from district courts).

14 eBay Inc. v. MercExchange, 126 S.Ct. 1837 (2006), describes the four-part balancing test the trial court must use in determining whether an injunction is warranted.