Once you receive a patent, it is important for you, the patent owner, to understand the nature of your rights and how they can be maintained, enforced, transferred, and protected. This section describes patent rights, factors when managing your patent after it’s issued, and how a patent can be infringed.
These factors include patent markings, determining a patent term, maintaining a patent in force, and correcting a patent. This section also defines patent ownership and how it can be assigned or licensed.
Nature of rights
The patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” The term of a utility or plant patent generally lasts 20 years from the date the application was filed in the United States or, if the application specifically refers to an earlier application filed under 35 U.S.C. 120, 121 or 365(c), from the earliest date of filing and subject to payment of maintenance fees.
To carefully distinguish the exact nature of the patent right conferred, the key phrase above is “right to exclude.” The patent does not grant you the right to make, use, offer for sale, or sell or import the invention, but only the right to exclude others from doing so. Given that a patent only gives the right to exclude, the patent holder’s ability to practice an invention depends on the rights of others (for example, an earlier inventor may have a patent covering an aspect of the invention) and on applicable laws (including if exercising the rights related to the invention would violate any law).
When a utility patent is granted, a maintenance fee is due 3½, 7½, and 11½ years after the original grant in order to keep the patent in force. After the patent has expired, anyone may make, use, offer for sale, or sell or import the invention without permission, as long as such activities are not covered by other unexpired patents. Patent terms may be extended or adjusted under certain circumstances as provided by law.
Patent marking and patent pending
A patent owner who makes or sells patented articles, or someone who does so with the owner’s permission, may notify the public that the article is patented by marking the articles with the word “patent” and its patent number. If you, the patent owner, fail to mark the article accordingly, you may not recover damages unless the infringer was duly notified of the infringement and continued to infringe after the notice (35 U.S.C. § 287).
Marking an article as patented when it is not is unlawful and subjects the offender to a penalty. Some people mark articles for sale with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only inform the public that a patent application has been filed with the USPTO. Patent protection does not start until actually granted. False use of these phrases or their equivalent is prohibited and subject to a fine, and those suffering competitive injury as a result may seek damages to compensate.
Patent term extension and adjustment
The terms of certain patents may be extended or adjusted under 35 U.S.C. 154(b). Extension or adjustments result from certain delays in a pending patent application. Utility and plant patents issuing from original applications filed on or after May 29, 2000, may be eligible for patent term adjustment (PTA) as set in 37 CFR 1.702 - 1.705. Three main reasons for PTA are:
- The failure of the USPTO to take certain actions within specific time frames (see 37 CFR 1.702[a] and 1.703[a]).
- The failure of the USPTO to issue a patent within three years of the actual filing date of the application in the United States, or, in an international application, from when the national stage begins (see 37 CFR 1.702[b] and 1.703[b]).
- Delays as set in 35 U.S.C. 154(b)(1)(C), including those due to interference or derivation proceedings under 35 U.S.C. 135(a), secrecy orders under 35 U.S.C. 181, or certain instances of successful appellate review (see 37 CFR 1.702(c)-(e) and 1.703(c)-(e)).
In addition, the terms of certain patents may be extended to compensate the patent owner for term lost due to certain regulatory review procedures of the U.S. Food and Drug Administration or the Department of Agriculture. See the Manual of Patent Examining Procedure starting in Section 2750 for more information.
After the USPTO issues a utility patent, the patent owner must periodically pay fees to maintain the patent in force. No fees are required to maintain a design or plant patent in force.
Maintenance fees are required to keep in force all utility and reissue utility patents based on applications filed on or after December 12, 1980. These fees are due 3½, 7½, and 11½ years from the date the patent is granted. Failure to pay on time may cause the patent to expire. Plant and design patents are not subject to these fees.
Correction of patents
Certificates of Correction
Once the patent is granted, it is outside USPTO jurisdiction, with certain exceptions. The USPTO may issue without charge a certificate correcting a clerical error, where the printed patent does not correspond with the official record (mostly corrections of typos). Good-faith clerical errors, or those of minor character, made by you rather than the USPTO, may be corrected by a certificate of correction, requiring a fee. For more information, see MPEP 1481.
When the patent is defective and cannot be corrected by a certificate of correction, the patent holder may apply for a reissue patent. Following an evaluation of proposed changes to correct any defects in the original patent, a reissue patent can be granted to replace the original, but only for the rest of the unexpired term.
The scope of changes in a reissue is limited; new matter cannot be added. For more information, see MPEP 1401.
Anyone (including the patent owner) may file a reexamination request, along with the required fee, to reevaluate the patentability of issued claims on the basis of prior art consisting of patents or printed publications. Generally, at the end of the reexamination proceeding, the USPTO issues a certificate detailing the results.
You, the patent holder, may disclaim one or more claims from your patent by filing a disclaimer as provided by Statute 35 U.S.C. 253. The Office of Data Management (ODM) handles corrections to patent publications.
Patent ownership gives the owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed. A patent may be owned jointly by two or more entities. Also, the owner may assign a part interest in a patent to another entity.
In the absence of any agreement to the contrary, any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale, sell, and import the invention for personal profit without accounting to the other owners. However, the ability to practice the invention may be constrained by the applicable (non-patent) laws and the rights of others. Joint owners may sell their interest or any part of it, or grant licenses to others, without regard to other joint owners, unless a contract governs their relationship.
Jointly owned or partially assigned patents affect people’s rights. So if you are in such a situation, consult with an attorney to understand the law and protect your rights.
For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the original application unless there is a recorded assignment (see 37 CFR 3.73[a]). For applications filed before then, patent or application ownership initially vests in the named inventors.
Assignments and licenses
A patent is personal property and may be sold or mortgaged, written into a will, and passed to one’s heirs. An experienced, licensed patent attorney can help with licensing agreements and assignments. Some states have set certain formalities to be observed in the sale of patent rights.
The transfer or sale of a patent or application is executed through an assignment. Patent law also provides for assignment of part interests (half, fourth, etc.) in a patent. Upon assignment, the assignee becomes the owner of the patent and has the same rights as the original owner.
If the patent is mortgaged, ownership passes to the lender until the mortgage has been satisfied and retransferred to the borrower. Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other subsequent condition, if recorded in the USPTO, are regarded as absolute assignments for USPTO purposes until canceled with the written consent of all parties or by the decree of a court of competent jurisdiction. The USPTO does not determine whether such conditions have been fulfilled.
An assignment, grant, or conveyance of any patent or application may be acknowledged before a notary public or officer authorized to administer oaths or perform notary acts. The certificate of such acknowledgment constitutes prima facie evidence of the execution of the assignment, grant, or conveyance. The USPTO records assignments, grants, and similar instruments submitted for recording, and the recording serves as notice. If an assignment, grant, or conveyance of or interest in a patent or application is not recorded within three months from its date, it is void against a subsequent purchaser for a valuable consideration without notice, unless recorded prior to the subsequent purchase.
Patent rights may also be licensed to others by its owner. In a patent license agreement, the one receiving the license essentially promises not to sue the patent owner. No particular form of license is required — it is a contract including agreed-upon provisions (royalty payments, for example).
Infringement of patents
Patent infringement consists of “unauthorized making, using, offering for sale, or selling any patented invention within the United States, or importing into the United States any patented invention during its term.” You the patent owner may sue in federal court to stop the infringement and ask for financial damages.
Accused infringers may argue that their actions do not constitute infringement. Determining infringement primarily involves comparing the language of the patent claims to an accused product or process. The parties might hire expert witnesses to help the court understand the issues.
Although U.S. patents are presumed valid, a common defense to an accusation of infringement is to argue that the patent in question is invalid. A federal court makes the final decision.
The USPTO has no jurisdiction over infringement questions. In examining patent applications, the USPTO does not determine whether the invention sought to be patented may infringe a product or process. An invention may be able to be patented, but might also be covered by a prior unexpired patent, since a patent does not grant the right to use an invention.
The U.S. government may use any patented invention without permission of the patent owner, but the owner is entitled to compensation for such use.
For more detail on this topic, see 35 U.S.C. § 271, 35 U.S.C. § 281, 35 U.S.C. § 282, 35 U.S.C. § 283, and 35 U.S.C. § 284.