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Patenting Your Invention
A patent is a property right granted by a government that gives the owner the exclusive right to keep others from making, using, or selling an invention that infringes upon any claim contained in the patent. Patents are issued for the public good, recognizing that unless a manufacturer is given some assurance of exclusivity, the cost of taking a new and innovative product to market may be prohibitive. As property, patents can be sold, assigned, or licensed. Commercialization may be accomplished by the owner exercising the exclusive rights or by permitting others to exercise rights under the terms of a license.
Under United States standards of patentability, all patent applications are examined for novelty, utility, and non-obviousness. The applicant, usually through a patent attorney or agent, must establish these elements to the satisfaction of the U.S. Patent and Trademark Office before the patent is allowed. Novelty means the invention is new; that is, it has not been previously used, sold, or described publicly or through written publication. Utility means that the invention has use, and is not just a subject for additional research. In regard to the third requirement, the invention must be non-obvious to a person having ordinary skill in the art to which it pertains.
For patent applications filed before June 8, 1995, U.S. utility patents are granted for a period of 17 years from the issue date of the patent. For patent applications filed after June 8, 1995, U.S. utility patents are granted for a period of 20 years from the date of application. Design patents are issued for a term of 14 years from the date of issue. The life of certain drug patents may be extended a few years under limited conditions. The duration of foreign patents varies widely from country to country.
Patent laws set forth the classes of inventions eligible for patenting. Statutes provide that any inventor who “invents or discovers a new or useful process, machine, manufacture, or composition-of-matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of the law.” The scope of statutory patentable classes of inventions has been expanded to include life forms resulting from genetic engineering. U.S. law also allows patenting of new varieties of asexually produced plants, other than tuber-propagated plants, or plants found in an uncultivated state. Plant Variety Protection Certificates are available from the U. S. Department of Agriculture for sexually produced plants.
Things that cannot be patented in the United States include:
- Plans of action
- Discoveries of laws of nature or scientific principles
- Things immoral or injurious to health and the good of society
- Works eligible for protection under the copyright laws
Patents and publications are closely related. Both represent means of disseminating the results of research. A patent, however, is a specialized form of publication which describes an invention to the world at large in return for a limited period during which others can be excluded from using the patented information. Care must be taken against premature disclosure of an invention (by presentation, publication in a scientific or technical journal or through public use) in order to avoid placing the invention in the public domain and thus losing the right to obtain a patent.
In the United States a patent may be obtained if a patent application is filed within one year of the first public disclosure through publication, sale, or public use. In most foreign countries, any publication or other public disclosure made prior to the filing of an application bars a patent.
Patent rights under sponsored research agreements are generally negotiated before the agreement takes effect. It is important that these agreements reserve patent rights for the University. Inventions arising from federally sponsored research are governed by Public Law 96-517 as amended by Public Law 98-620, which allow universities to retain rights to these inventions while reserving certain rights for the government. These laws are issued as 37 Code of Federal Regulations Chapter IV, Part 401.
For Additional Information on Patents visit the U.S. Patent Office Website:U.S. Patent Office