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By Michael R. Shevlin, Esq.

A patent is an exclusive intellectual property right granted to an inventor by the government in exchange for publicly disclosing the invention. A patent includes a written description of how to make and use the invention; and one or more claims that define the boundaries of the invention.

Once an invention is patented, the patent gives the patent owner the exclusive right to prevent others to make, use, sell or import that invention for a limited amount of time. Without a patent, anyone can make or sell another’s invention without permission or payment.

Patents are only granted to new, useful, and non-obvious inventions which generally take one of three forms:

  1. Utility Patent: A utility patent is granted to someone who invents or discovers a new process, machine, article of manufacture, or invents an improvement to a process, machine, etc. Utility patents last for 20 years.
  2. Design Patent: A design patent can be granted to someone who invents a new, original, or ornamental design for an article of manufacture. Design patents last for 14 years, and are usually not considered as desirable as utility patents.
  3. Plant Patent: A plant patent can be issued to anyone who invents or discovers and reproduces a new variety of plant.

To obtain a patent, a prior art search should be done in the various scientific and patent databases to determine if the invention has already been patented. If there is prior art found, a patent attorney can help identify the patentable aspects of the invention versus the prior art.  A patent attorney can also provide a patentability opinion regarding the likelihood of obtaining a patent in view of the identified prior art.

If the inventor decides to file a patent application, the, inventor must determine whether the patent application should be filed internationally or only in the U.S. In the US, a patent application must be filed within one year after a public disclosure, or the sale or an offer to sell the product to another. Most other countries require filing a patent application before any public disclosures, sales or offers to sell, to any individuals on a non-confidential basis.  So if you are considering filing an international patent application outside the U.S., all information relating to the invention should be kept secret until a patent application is filed.

In the U.S. the inventor has a choice to file a provisional or non-provisional application. A provisional patent application is similar to a non-provisional application, in that it is a detailed document that describes an invention and is filed with the USPTO. It does not require any claims, oaths or declarations and has a nominal filing fee. A provisional application automatically expires after one year, by which time a non-provisional application must be filed. A provisional application provides a faster, less expensive way to secure an initial filing date, but must meet all the statutory requirements of a non-provisional patent application, including an adequate written description of how to make and use the invention.

The patent application can then be filed, preferably by a patent attorney, who can help with the application and legal procedures. Most patent attorneys have the technical and legal backgrounds needed to prepare the patent application to protect the invention. The patent attorney and inventor work closely together to prepare the specification and claims for a patent application. The patent attorney will be sure that the disclosure and claims meet the requirements for patentability.

Once the patent application is filed, the United States Patent and Trademark Office (USPTO) will examine the application. The USPTO may reject some or all of the claims contained in the patent application, and it may be necessary to object to the USPTO Examiner’s findings and negotiate with the Examiner until either the claims are allowed or a Final Office Action is issued rejecting the claims. During prosecution, the claims may need to be amended and/or arguments submitted for the patentability of the claims. If the claims are allowed and found to be free of the prior art and meet all of the statutory and formal requirements, the USPTO then grants a US patent.

There are many benefits to a patent. Much of the value from a patent can be generated by virtue of the limited monopoly that a patent provides. Patents prevent others from using, making, importing or selling your invention in the U.S. The patent can financially benefit the patent owner in several ways. A patent is considered a valuable business asset by potential investors or purchasers of a business. The patent can be sold directly to another person. The patent can be licensed to one or more parties. A patent can also be used to exclude potential competitors from entering a market for the life of the patent. The owner of a patent can also file a lawsuit in a district or federal court to prevent others from practicing the claimed invention.

If you believe you should seek a patent for an invention, contact our qualified patent attorneys. Obtaining a patent can be a complex process, and our experienced intellectual property law firm can help both with the legal aspects of the patent and with understanding the scientific issues involved.

About the Author
Theodore J. Schneider practices in the areas of business and corporate transactions, employment law counseling, municipal and public law, real estate and land use, and homeowner associations. Ted began his legal career in 2002 when he joined the Los Angeles office of Gibson, Dunn & Crutcher, L.L.P. before relocating to Ventura County to join his father in practice.