Thank you for considering Stake to assist with your patent needs. Stake is an intellectual property boutique serving clients across the United States in both domestic and international matters. If you’re ready to chat about our patent services and find out whether Stake would be a good fit for your business, please complete our contact form!
Why get a Patent?
A patent provides a nationwide right to exclude others from making, using, selling, offering for sale, or importing the invention. In other words, it gives the patent holder a temporary monopoly on the invention, enforceable against others.
Patents are assets of a class known as intellectual property. Intellectual property also includes trademarks, copyrights, and trade secrets. These assets are often some of the major drivers of a company’s valuation.
The two most common types of patents are utility patents and design patents. A utility patent protects the functionality of an invention. A design patent protects the look of a design.
Utility Patent
A utility patent is the most common patent granted in the United States and can protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. When a utility patent is granted by the United States government, the invention is “Patented.” While the application for a utility patent is pending, the invention covered by that application is “Patent Pending.”
Design Patent
A design patent can protect any new, original, and ornamental design for an article of manufacture. Similar to a utility patent, a design protected by a design patent is considered “Patented” and a design covered in an active application for a design patent is “Patent Pending.”
Provisional Patent Application
A provisional patent application is not examined by the patent office, and it yields no enforceable property right by itself. A provisional patent application does, however, get an invention to “Patent Pending” for one year to test and market the invention, and it delays the need to file a full utility patent application for one year.
What exactly is a Patent?
Like the other intellectual property rights, a Patent is a “right”—that is, an ability to exclude others from doing what’s protected by the right—that accrues to its owner.
A patent provides its owner the right to exclude all others in the United States from making, using, selling, or importing the patented invention.
Are there exceptions to these rights?
There’s no “fair use” or generalized “innocent infringer” exception to patent rights if the patent owner fulfilled the law’s notice requirements, and for this reason, patents are considered by many the strongest class of intellectual property.
What’s the difference between a Patent and a Trademark, a Copyright, or a Trade Secret?
We’ll take the question of trademark vs. patent first because its easier—as an intellectual property attorney, I can’t imagine a scenario where you’d choose a patent over a trademark, or a trademark over a patent, as what they protect is fundamentally incompatible.
The question of copyright vs. patent may seem a little trickier as there is some overlap as to what can be protected with a patent and what can be protected with a copyright. But, it comes down to what aspect you are looking to protect. Are you looking to protect the actual creative work aspect of the thing itself—like the lines of code in software? Or, are you looking to protect the idea or functionality of the thing—like what the software does? If the former, you may be able to get by with simple copyright. If the latter, you’ll want to consider a patent claiming the inventive concept. Generally, patents will provide broader protection as they’re focused on the idea or functionality, and since you generally don’t include the lines of code in a patent application, you would still retain copyright in the lines of code themselves. Keep reading this blog to learn more about what the process of applying for a patent looks like!
Finally, the question of trade secret vs. patent. The biggest difference between the two is that a trade secret is intentionally kept secret and a patent is intentionally disclosed to the public (in exchange for the limited monopoly). Both can protect the same types of things, and of course there are reasons you might wish to choose one over another.
How to get a Patent?
A utility patent must claim an invention that’s useful, novel, and not obvious over the prior art. A design patent must claim an ornamental design that’s novel and non-obvious over the prior art. Both are applied for by submitting an application to the United States Patent & Trademark Office (USPTO) and prosecuting that application through the rigorous examination process set forth by the government.
Patents are only issued when they’re found to be patentable over the prior art. Prior art generally includes patents, printed publications, public uses, sales, offers for sale, or any other piece of information available to the public. One or more exceptions may apply, so it’s often necessary to examine each potential piece of prior art.
Do I need to do a Patent Search or get an Opinion of Counsel first?
One of the questions that I often receive is whether a patent search or opinion (also known as a patentability search or a patentability opinion, respectively) is required to get a patent.
You are not required to do a patent search before applying for a patent, but there are cases where it might be advantageous to do so, for example, if you’re unsure as to whether it is worth the time and expense of pursuing patent protection on your invention.
Stake is able to assist you with both patentability searches and patentability opinions as needed.
Patent Search (a.k.a. Worldwide Patentability Search)
A worldwide patentability search involves a careful search of prior art using multiple databases. This search generally involves searching patents, patent applications, printed publications, product databases, and more to determine what the landscape of the prior art is.
Patentability Opinion
A patentability opinion builds on a patentability search. At is core, it’s an opinion of counsel as to the likelihood—though importantly, not a guarantee—of patentability of an invention over what was found in the patentability search.
What about International Patents?
Intellectual property rights are national rights. If you intend to enter the markets of another nation, it may be important to consider available options to protect your intellectual property in that nation. As with many aspects of intellectual property, international options can be time-barred, and laws often work very differently than in the United States. When needed, we apply our international IP experience to help clients secure protection globally. If you’re considering this—talk to us as soon as possible!
Who owns a Patent?
Initially, ownership of a patent vests in the inventors of the patent, who all individually have the rights granted by the patent (for instance, each could grant a license to the patented invention). This ownership may be transferred, but not in the way that the commonly-understood work-for-hire occurs in copyright law. Except in very rare circumstances, ownership of a patent or patent application is transferred exclusively through an “assignment of patent rights,” which must comply with very particular requirements set out by the law in order to be fully valid.
How long does a Patent last?
Patents have the shortest terms of the various classes of intellectual property. Utility and design patents have slightly different terms, but they’re fairly straightforward:
- Utility patents are generally enforceable from the date of patent grant until 20 years from the date the application was filed. Maintenance fees must be paid at 3-1/2, 7-1/2 and 11-1/2 years.
- Design patents are generally enforceable from the date of patent grant until 15 years from the date of patent grant. Design patents do not require maintenance fees.
- Provisional Patent Applications do not have an enforceable term, but they are “patent pending” for up to 12 months, and the patent pending term of a provisional patent application does not count against the calculation of a later-filed Utility patent term.
How can Stake help protect your Patent?
Stake can help you through the entire lifecycle of a patent—from invention through enforcement of the patent against an infringer (or defense against an accusation of infringement). If you’re ready to chat about our patent services and find out whether Stake would be a good fit for your business, please complete our contact form today!