This article is co-authored by Jason Honeyman.
In most situations, a patent is the only way to deter a competitor from taking and using a company’s innovations. However, there are many aspects of patent law that are misunderstood by inventors and business people. Outlined below is a list of some of the most commonly misunderstood patent concepts.
1. A patent application is not enforceable until it issues as a patent.
The phrase “patent pending” does not mean anything beyond the fact that a patent application has been filed. Just because someone has filed a patent application on something does not necessarily mean that a patent ultimately will be granted.
A patent application is not the same as a patent. Inventors often think they have a granted patent when in reality they only have a patent application. In the U.S., a patent must first undergo substantive examination by the U.S. Patent and Trademark Office – and grant of a patent is in no way guaranteed. One or more examiners will search the "prior art" – essentially anything that came before the filing date of the patent application – to determine whether the invention that is claimed in the patent application is new and non-obvious.
Most patent applications will be rejected at least once, after which an applicant will typically narrow the scope of the patent claims, or otherwise convince the examiner that the specified invention patentably distinguishes over the prior art. If the patent office agrees, then a patent will be granted.
2. Provisional patent applications are not enforceable patents.
There is no such thing as a “provisional patent” – only a provisional patent application. A provisional patent application is merely an early filing date placeholder. It automatically expires in 12 months; it does not, by itself, ever directly mature into a patent. Within a year of filing a provisional patent application, a non-provisional patent application or a Patent Cooperation Treaty (PCT) application must be filed, claiming priority to the provisional application (more detail regarding the PCT is provided in the next section).
3. There is no “international patent” that covers all countries worldwide.
There is no such thing as an “international patent” – only an international patent application, called a PCT application. A PCT application does not, by itself, directly mature into an enforceable patent. Similar to a provisional patent application, a PCT application is a placeholder that preserves applicants’ ability to file the application in many countries, including the United States. Patents are territorial rights. U.S. patents, generally speaking, only cover the U.S. If you are interested in protecting the Chinese market, for example, you need to file for patents in China.
After a PCT application is filed, the applicant must take active steps within a set period of time to submit subsequent follow-on filings in each country of interest to eventually obtain enforceable patents in those countries. If these follow-on filings are not done, the PCT application automatically expires.
4. Products that are not marked with a patent number may still be under patent protection.
With physical products, marking them with the applicable patent number(s) is good practice because it can greatly increase a patent-holder’s damages award. However, patent marking is not a requirement for infringement. Thus, just because a product lacks patent marking, it does not rule out the possibility that the product is protected by one or more patents.
To mark a product, the product itself should be marked with the word “patent” or “pat,” followed by the patent number. If, due to the nature of the product, the product itself cannot be physically marked, marking can be done on the product’s packaging instead. For increased flexibility in adding or removing patent numbers, virtual marking is an option for patent holders. With virtual marking, the product can be marked with “patent” or “pat,” followed by an internet address to a website that lists the patent number(s) associated with the product.
5. A patent does not grant the patent holder freedom to operate.
The dichotomy between freedom to operate (FTO) and patentability is frequently misunderstood. A patent to an invention does not give the patent holder the right to make, use or sell that invention. We often hear the phrase “I should be able to sell my invention because I have a patent on it!” It may be surprising to hear that this statement is wrong.
Let’s look at an example of a tricycle versus a bicycle. In this hypothetical, you invented the tricycle, and only the bicycle (e.g., prior art) existed prior to your invention.The U.S. Patent Office agrees that your tricycle is new and non-obvious over the bicycle, and grants you a patent to a transportation device with first, second and third wheels.
With your patent in hand, can you go out and freely sell your patented tricycle without fear of being accused by someone else of patent infringement? In other words, does the patent give you freedom to operate? In short, the answer is no.The U.S. Patent and Trademark Office examines a patent application to determine if it is new and unobvious over the prior art – but the patent office does not evaluate whether the subject matter of the application infringes any issued patents. In fact, examiners at the Patent Office are prohibited from discussing questions of infringement.
One of the prior-art patents to a bicycle may broadly cover a transportation device with a first wheel and a second wheel. Your tricycle product does in fact have a first wheel and a second wheel. The fact that your tricycle also has a third wheel does not matter. In most circumstances, one cannot add features to avoid infringement. So, in this example, although the tricycle was patentable over the bicycle, the tricycle still would infringe the earlier bicycle patent.
At the same time, the bicycle patent-holder cannot make a tricycle because a tricycle would infringe your three-wheeled device patent. In the real world, when such a situation occurs, the two parties can engage in cross-licensing (i.e. allow one or both parties to make the tricycle without fear of being sued under the patents) so that a tricycle could be made and sold.
Again, a patent to an invention does not give you the right to make, use or sell that invention. Instead, the patent only gives you the right to stop others from making, using or selling the invention.