A patent affords its owner the right to exclude others from making, using, offering for sale, or selling the invention. The patent, however, does not necessarily give its owner the right to practice the invention. How could it be?
Assume someone holds a patent on a device comprising elements A and B (so-called “prior art” device), then you can obtain a patent on a device comprising elements A, B, and C, because your device contains one extra element C. Then you can stop others from practicing your device ABC, but the owner of a patent on device AB can stop you from practicing your own device ABC, because your device ABC infringes on the device AB. Why? The explanation lies in the claim “a device comprising elements A and B,” and in particular, in the word “comprising” – an open ended transitional phrase, which presupposes under the patent law that device AB can contain other elements, such as C, D, etc. This logic is used for infringement analysis only, therefore the patent holder of device AB can stop you from practicing your own device ABC, but cannot stop you from obtaining a patent on your device ABC. As a consequence, you may end up obtaining a license from the patent holder of device AB in order to practice your own invention (device ABC).
Prior Art Dates
Your invention is evaluated against what was disclosed in the public domain (prior art). You cannot obtain a patent if your invention was known or used by others in US before the date of invention; or if the invention was patented or described in a printed publication by others anywhere, including US, before the date of invention. In addition, you cannot obtain a patent if your invention was patented or described in a printed publication by anyone (including the inventor) anywhere, including US, more than 1 year before the US filing date, or if your invention was in public use or on sale by anyone, including the inventor, in US, more than 1 year before US filing date. These rules will be changed when the America Invents Act is implemented (switching from first-to-invent to first-inventor-to-file system). We have summarized the rules in a table below for your convenience and clarity.
America Invents Act: New Section 102
One of the major changes to US patent law in the America Invents Act is the change to § 102. The new subsection (a) reads as follows:
(a) A person shall be entitled to a patent unless:
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This new subsection greatly expands the prior art available for use against a patent or application. First, subsection (1) eliminates the grace period (subject to subsection (b)’s limited exceptions). A patent is not available if the invention was patented, described in a publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application. No longer is there a distinction between activities conducted “in this country” or “in this or a foreign country.” Any public disclosure anywhere will negate the ability to obtain a patent.
Provisional vs. Non-provisional patent application
A provisional patent application is a special type of application, which gives an inventor a 12-month period to apply for a non-provisional patent application and claim benefit to a filing date of the provisional patent application. Some inventors chose to file a provisional application in order to buy some time to find the investors, to secure financing and to allocate the funding for IP protection; some need time to determine whether manufacturing of a product is feasible or not.
The cost of filing a provisional application at the USPTO is $130, when claiming a small entity status (a person, or a small business concern with the number of employees not exceeding 500 people, or a non-profit organization). In comparison, the cost of filing a non-provisional patent application is $730, when claiming a small entity status. The provisional patent application is not examined. It is important to remember, however, that in order to get the benefit of the filing date of the provisional application, a later filed non-provisional application must contain the same subject matter as the provisional application. For example, assume an inventor files a provisional application, disclosing a device having elements A and B. Then within a 12-month period, the inventor files a non-provisional application, claiming the benefit of the filing date of the provisional application and disclosing a device having element A, B, and C. The element C will be considered a new matter and will not get the benefit of provisional filing. The inventor may end up in this case with some claims (directed to device AB) dating back to the filing date of the provisional application and some claims (directed to device ABC) having a non-provisional filing date.