Entrepreneur’s Guide to Intellectual Property – Blog Series: What Every Entrepreneur Should Know About U.S. Law and Patent System (Part 1)

By: Edward J. Evans

To first-time inventors, effectively navigating the patent system in the United States might seem like a daunting task. It is the author’s experience dealing with first-time inventors that, oftentimes, the difficulty lies in knowing where to begin and what questions to ask. This article is intended to assist inventors and entrepreneurs, who are in the midst of their first experience with the patent system or who are otherwise unfamiliar with the patent system, in gaining a working knowledge of the patent system in the United States.

What is a patent?
A patent is a legal document that grants its owner(s) the right to exclude others from making, using, selling, or offering for sale a patented invention within the United States for the term of the patent. A U.S. patent also grants its owner(s) the right to exclude others from importing the patented invention into the United States.

A U.S. patent does not grant a right to use the patented invention. It is within the realm of possibility that a patent owner may be precluded from making, using, selling, or offering their patented invention for sale because the technology upon which it is based is covered by an earlier patent owned by another party. Such a situation may arise when a first party is issued a patent covering an improvement on a base technology, while the patent covering the base technology (issued to a second party) remains in force. So, under U.S. patent law, the first party is entitled to exclude the second party from making, using, selling, or offering for sale any products incorporating the improvement to the base technology, while the second party is entitled to exclude the first party from making, using, selling, or offering for sale any products incorporating the base technology.

A patent owner, however, may convey to another an exclusive or non-exclusive right to make, use, sell, offer for sale, or import the patented invention by granting a “license” covering the patent. Otherwise, unauthorized manufacture, use, sales, offers for sale, or importation of a patented invention is known as “infringement.”

Furthermore, pending patent applications and issued patents have the attributes of personal property and can be bought or sold (i.e. “assigned”). The assignment, however, must be memorialized in a written document.

What subject matter can be patented?
Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof may qualify as patentable subject matter.

Most individuals associate patents with a consumer product, which traditionally would be considered a “machine” or an “article of manufacture” for purposes of patentability. However, the process used to create a consumer product, or a material used in creating a consumer product, may also qualify for patent protection.

What types of patents are available?
The two most common forms of patents include a “utility” patent and a “design” patent. A utility patent defines an invention in terms of its structure and function. In contrast, a design patent defines an invention in terms of its ornamental appearance, rather than its function.

Therefore, the scopes of protection afforded by a utility patent and a design patent, respectively, are largely independent of each other and do not overlap.

What is the term for each type of patent?
Generally, the term of a utility patent begins on its date of issuance and ends 20 years after the filing date of the application on which the patent is based. The term of a utility patent is generally non-extendable, though some exceptions apply.

The term of a design patent is 14 years, beginning on its date of issuance. The term of a design patent is non-extendable.

To view the next blog in this series, click here.

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