Top 10 Patent Myths

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OK there are actually 12 myths…

Myth #1 – Patents are Valuable

False. Patents only have commercial value if they can be used to protect a profit stream by excluding others from making, using or selling whatever is covered by the patent’s claims. If a patent is not used to protect a product, service or process (or license to others) there is no inherent value to the patent.

Myth #2 – Registered Patents Work as Disclosed in the Patent Document

False. The U.S. Patent Office does not test inventions claimed in a patent application to verify that it works as claimed.  The Patent Office is happy as long as someone “skilled in the art” (of the technology area described in the patent) has enough information to build or use the invention as described in the application without undue experimentation.  Now a court of law may later find that the original patent application is non-enabling and hold the patent invalid.  But such determinations may lay dormant until subsequent litigation. In fact, it is believed that a modest percentage of registered patents do not work as claimed.

Myth #3 – You Can Get a Provisional Patent That is Good for 1 Year

False.  There is no such thing as a Provisional Patent. One can file a Provisional Patent Application that may provide an effective filing date (or priority date) for the invention.  The applicant then has 1 year to file a non-provisional patent application that claims priority to the earlier filed provisional patent application. If the applicant fails to file the non-provisional patent application within 1 year, they lose their priority date and potentially bar themselves from filing a patent on the same invention at any later time.

Myth #4 – A Provisional Patent Application Only Needs to Describe the Idea in General Terms

False. A Provisional Application must meet exactly the same criteria for full disclosure and providing enabling information to one skilled in the art as the full Patent Application. The Provisional Application does not require the formal structure, the disclosure of prior art, or the claims of the full application and can use less formal drawings.

Myth #5 You Can Get a Patent for an IdeaIssued Patent

False.  One is not entitled to a patent for an idea.  Patents are granted to people who “invent or discover any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof.”  One cannot patent laws of nature or abstract ideas. So unless your idea meets these requirements, all you have is an idea.

Myth #6 – A Patent Last for 20 Years

False.  A utility patent is enforceable for 20 years from the effective filing date, with some exceptions.  So if a utility patent application takes 4 years to issue, the patent is now only enforceable for 16 years.  There are some exceptions, where a patent’s effective life can be lengthened if the application sits at the patent office too long while waiting to be examined. There are fixed periods of time where the US Patent Office is supposed to examine the application and respond to correspondence and other actions. Whenever the Patent Office delays examination beyond these deadlines, the term of the patent will be extended.

Design patents are enforceable for 14 years from the date the patent issues and has nothing to do with the filing date.  So whether a design patent is granted 10 months after filing or 10 years after filing, the patent is still good for 14 years from the issue date.

Myth #7 – A Patent Gives the Owner the Exclusive Right to Make, Use, and Sell their Invention

False. There is a big difference between excluding others from using a patented invention and being able to use the patented invention. A patent only give its owner the right to exclude others from making, using, and selling exactly what is covered by their patent claims.  If other patents exist that cover broader aspects of your invention, they may potentially prevent you from using your own invention. A patent right is exclusory only.

For example, let’s say Caveman A has a patent for making a knife out of rock, but the knife cuts his hand since the whole thing is a sharp rock.  Caveman B realizes this dilemma and patents a knife having a handle.  In this scenario, Caveman B does not have the right to make and sell knives with handles, since Caveman A holds the rights to making the knife in the first place.  However, Caveman A would be prohibited from making knives with handles as well since his rights only extend to knives without handles.

This is the point where licensing may be beneficial, so both Caveman A and Caveman B could make and sell knives with handles.

Myth #8 – A U.S. Patent is Valid, Enforceable, and Honored World Wide

False.  Patents are only valid in the country(s) for which patent protection has been granted. So a U.S. Patent would be unenforceable in Japan if someone in Japan makes, uses or sells the patented invention in Japan.  However, the patent holder can enforce their rights if the invention is being imported into the U.S. or otherwise available within the U.S. (i.e., software-based technology accessible via the Internet.)

Myth #9 – A Patent Protects an Invention from Infringers

False. A patent merely provides a presumption that the claimed invention is protectable and enforceable against others.  A patent holder’s patented invention is not protected unless they file a civil law suit in federal court and a jury finds that the patent is valid and that the infringer does in fact infringe on one or more patent claims.  It is not uncommon for alleged infringers to successfully prove the patent at issue is invalid, under one or more scenarios.  For example, the defense may find additional prior art that the U.S. Patent Office failed to find.

Additionally, the U.S. Government does not enforce patents, but rather a final court order may decide in favor of the patent holder thus requiring the infringer to pay royalties and/or prevent them from continued infringement. The U.S. Customs Department can help block infringing imported goods, however, the responsibility, and all expenses, for securing Customs help lie with the patent holder.

Myth #10 – You Should Always File for a Patent When You Have an Idea

False. There are other, less expensive, steps you can take to preserve future rights to receiving a patent on your idea.  Generally, one loses rights to file for patent protection on an idea that has been publicly disclosed or offered for sale prior to filing for a patent.  As long as you maintain secrecy before filing for a patent, you should be OK.  Feel free to describe the idea in full to persons covered under a Non-Disclosure Agreement (“NDA.”)  However, you must not sell or offer to sell the idea before filing for a patent.  For a very small fee, one can quickly file a provisional patent application before any public disclosures or sales occur.  Such steps provide you breathing room before making a decision to spend $5000 – $8000 having a licensed patent attorney file a non-provisional patent application for you.

Myth #11 – A Patent Attorney Has to Write and File Your Patent Application

False. Anyone can draft and file his/her own patent application.  However, only a federally registered patent attorney or patent agent can file a patent application on behalf of a third party.  A patent attorney is both an attorney and a patent agent. A patent agent is anyone with 1) an engineering/computer science degree; or 2) has the equivalent of 5 years of technical experience; and who has passed a patent practitioner exam administered by the USPTO.

Myth #12 – It is Very Hard to Learn How to Write Your Own Patent Application

True and False. Anyone is capable of drafting and filing their own patent application.  People do it every day.  However, the procedural and substantive rules governing a patent application are complex.  There are many books that assist inventors with drafting their own applications.  Such books can teach you the steps necessary to file a patent application that will not be rejected by the Patent Office on procedural grounds.  However, drafting an effective patent application that has any value down the road is completely different.

Patent agents and attorneys spend years learning and perfecting their skills in drafting patent applications.  To do so effectively, requires much more than a book. At a bare minimum, one should retain a patent agent or attorney to review your application and make edits before filing. Of course the most effect patent application would be those drafted from scratch by a licensed professional.