Patents - How to Identify, Protect and Enforce Your Rights

April 01, 2016

Intellectual property plays an important part of businesses today.  Among the three basic types of intellectual property - patents, trademarks and copyrights - many businesses tend to perceive patents as strictly technology oriented and as a result fail to properly identify opportunities to protect their inventions.  It is also a common misconception that patents are more difficult to obtain and enforce than trademarks and copyrights.  However, patents are available for simple products as well as for intangible products such as business methods and manufacturing processes.  This article is intended to provide a general guideline on how to identify, protect and enforce patent rights. 

A patent is a legal monopoly granted by the government to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or importing the invention into the U.S."  This monopoly is granted to the inventor or owner of the patent for a limited time in exchange for public disclosure of the invention.  Most, if not all, inventions are improvements of existing inventions.  Thus, the public policy behind granting patents is that public disclosure will promote innovation.

There are three types of patents - utility, design and plant.  Utility patents are for processes, machines, articles of manufacture, or composition of matter (e.g., U.S. Pat. No. 3,005,282 for a Toy Building Block - the original LEGO).  Design patents are for ornamental designs for an article of manufacture (e.g., U.S. Pat. No. D593,087 for an Electronic Device - the original iPhone design).  Plant patents are for asexually reproduced distinct and new variety of plants (e.g., genetically modified organisms (GMOs)). 

To obtain a patent, the invention must be: (i) useful - must have some utility or application, even if not commercially practical; (ii) novel - not previously known or used; and (iii) not obvious - cannot be obvious in light of what already exists, including obvious combinations of different elements. 

The U.S. is now a first-inventor-to-file country and, therefore, prompt filing is paramount to securing protection.  An international patent application under the Patent Cooperation Treaty (PCT) could also be filed to preserve a foreign filing date as well.  Regardless, a patent application must be filed within one year of public disclosure.  Otherwise, the invention is considered public domain. 

A U.S. utility or plant patent application could be filed as a provisional application and a non-provisional application.  A provisional application could be filed with just a detailed description of the invention and drawings, and is not examined by the U.S. Patent and Trademark Office.  It is simply a place holder for a non-provisional application (explained below), which must be filed within one year of the provisional application filing date. Given how critical an earlier filing date is (as explained above), applicants for utility applications are often encouraged to consider filing the more cost and time effective provisional application in order to preserve an early filing date.  A provisional application also provides the applicant a full year to further develop and market the invention (as "Patent Pending"), during which time the applicant could determine whether to invest more time and money to protect the invention.   

Unlike a provisional application, a non-provisional application must include claims in addition to a detailed description of the invention and drawings.  Claims are the heart of a utility patent application and are the main focus during the examination of the application at the U.S. Patent and Trademark Office.  Claims are numbered paragraphs at the end of the application which dictate the scope of protection of the invention.  Therefore, depending on the wording of the claims, a competitor could possibly design around the invention to avoid infringement.  Depending on the type of technology of the invention, the normal examination time for utility and patent applications is between two and four years, although accelerated examination is available for an additional fee.  Utility and plant patents are valid for twenty years from U.S. filing date (with payment of periodic maintenance fees).  To prevail in an infringement lawsuit for a utility or plant patent, the plaintiff must prove that the accused product or process meets all of the claimed elements in each claim the defendant is accused of infringing. 

A U.S. design patent application is filed with drawings and a short specification describing the drawings.  The drawings must include all views of the article of manufacture (i.e., top, bottom, front, rear, right and left), which form the claim of the design patent.  The examination period for design applications is usually between one and two years.  Design patents are valid for fifteen years from issue date (no maintenance fees).  Even though design patents are more costly to obtain compared with federal registrations for copyrights and trade dress, one could argue that design patents are easier to enforce than copyrights and trade dress.  For copyright infringement, the plaintiff must show, among other things, that the defendant copied or had access to the protected work.  For trade dress infringement, the plaintiff must show that there is a likelihood of consumer confusion between the protected trade dress and the accused product.  Neither of these elements must be proven for design patent infringement.  Instead, the standard for infringement is that an ordinary observer would deem the two products as substantially the same.       

Patent infringement is a federal question and therefore federal courts have exclusive jurisdiction.  Damages accrue only after the accused party has notice of the patent at issue.  The accused party could receive notice from the patent holder marking its products with a patent number (known as "constructive notice"), or from receipt of a cease-and-desist letter or a federal complaint (known as "actual notice").  Generally, lost profits or reasonable royalties are available for patent infringement damages.  Treble damages (up to three times actual damages) are also available for willful infringement.      

Written by John H. Choi.  This article is for information purposes only and is not legal advice.  This article was submitted for publication in Meadowlands USA Magazine. For more information please contact John H. Choi at or 201.580.0816.