Patents: Eleven Issues To Consider...

How patent savvy are you? asks Lance Lieberman, managing partner Cohen Pontani, Lieberman & Pavane (CPLP), New York.

  1. A patent owner is not assured the right to practice the patented invention. A patent merely grants a right of exclusivity, which gives you the right to stop another from making, using and selling the invention. By practicing your own, patented invention you may infringe an earlier, "dominating" patent owned by somebody else.
  2. Patents are territorial. The rights granted by a patent are enforceable against conduct in the country of issue. To protect your invention in more than one place, you must separately obtain multiple corresponding patents, for example, in the U.S., Canada, China, etc.
  3. The term of protection granted by a newly issued U.S. patent extends from the date of issue to that date which is 20 years after the U.S. filing date. A patent that issues 22 months after filing has an effective term of more than 18 years. But if it takes 13 years to convince the Patent Office to issue the patent, it's only enforceable for seven years.
  4. The "average" pendancy-the amount of time from the filing of an application to patent issue -- of all U.S. patent applications is currently about 30 months. In general, you can't stop another from practicing your invention until the patent issues.
  5. The term "patent pending" on a product just means that a patent application covering some aspects of the product, no matter how small or unimportant, has been filed. A patent may issue, or might never issue, at some point in the future, on that aspect of the product mere use of a "patent pending" notice does not make you an infringer if you copy that unpatented product.
  6. Each U.S. patent application is published 18 months after filing, thereby allowing your competitors to learn of your invention, in most instances, long before a patent that protects you from copyists will, if ever, issue.
  7. Pre-issue publication of a U.S. patent application can, however, be avoided by notifying the Patent Office when you file your application that you do not intend to file a corresponding patent application in any other countries. In this way the details of your invention are published only when your patent issues and, if no patent issues, they are never published by the Patent Office.
  8. Unless you file your U.S. patent application within one year after you first offer your invention for sale or publicly demonstrate the invention, you lose the right to obtain a patent. In most other countries, though, the right to obtain a patent is lost unless the application is filed no later than the date of first sale or publication.
  9. If you have a U.S. patent on a method of making a product, you can enforce it against another that uses your patented process outside the U.S. but then sells the resulting product in this country.
  10. If you threaten to sue a competitor for infringing your patents, the competitor can initiate a lawsuit against you seeking a "declaratory judgement" that your patent is invalid or not infringed. The competitor may thus potentially obtain a tactical advantage, for example by bringing the suit in a local or other more favorable court of its own choosing. But a non-threatening offer to license your patent to an infringing competitor will not generally support such a preemptive lawsuit.
  11. That a product is "patented" merely indicates that there is something about the product that is covered by a patent. That "something" may be something as small and insignificant as a screw or wire braid, as complex as a sub-assembly or combination of parts, the entire product broadly defined as a functional system, a process or manufacturing or assembling the product, the method of product operation or use, or myriad other possibilities.

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