Legal Blog

IP Essential Considerations Series: Patents

Welcome to my “Essential Considerations” series for intellectual property (IP) matters, wherein I review the important principles and processes IP holders need to know. From patenting your invention to keeping trade secrets secret, this series breaks down the sometimes labyrinthine world of IP law into a digestible question and answer format.


This Essential Considerations installment concerns patents. What can and cannot be patented? How long do patents last? Find the answers to these and more frequently asked questions below.



What is a patent?

A patent is an inventor’s right to own and protect his or her invention. Granted by the United States Patent and Trademark Office (USPTO), patents confer patent holders with the legal framework to prevent others from using, manufacturing, or selling their inventions in the United States.


To be patentable, the subject matter of an invention must be…

  1. Novel: The invention must contain at least one element that has not been known, used, or described by others before.
  2. Useful: The invention must provide a specific and tangible benefit.
  3. Non-obvious: The invention must introduce a feature or outcome that would not be immediately obvious to the average person with knowledge of the field or technology to which the subject matter relates.


As opposed to trademarks and copyrights, patents are not gained automatically. Instead, an inventor must publicly disclose his or her intention to patent an invention by submitting a patent application to the USPTO.


There are three kinds of patents:

  1. Utility patents are the most common, and what the word “patent” typically refers to: a new or improved machine, process, manufacture, or composition of matter (e.g. chemical compound). An invention may and often does fall into more than one of these categories.
  2. Design patents, by contrast, cover ornamental rather than functional subject matter—for example, the shape of a shoe or a software icon. The difference between a design patent and a trademark is that the patent protects the design of a product itself, while a trademark protects the signs, symbols, and other distinguishing characteristics used to market that product.
  3. Plant patents are a relatively rare category of patents that cover newly discovered or created plants. To be eligible for patent, a plant must be reproduced asexually (through grafting or breeding), cannot occur naturally in uncultivated areas, and cannot be a potato or other tuber.


Patentability has been a longstanding subject of legal debate, and the USPTO regularly issues guidance regarding this topic. Experts and recent case law from the United States Supreme Court group nonpatentable subject matter into three basic categories: abstract ideas, laws of nature, and natural phenomena. You cannot patent a business strategy, for instance, or a newly-discovered microorganism.


Why should I obtain a patent for my invention?

Patents exist to keep innovative ideas and products, as well as their associated benefits, in the hands of their rightful owners. Exclusive rights give patent-holding individuals and businesses monopolies in the marketplace, thereby allowing IP holders to earn back investments spent on research and development.


Patented inventions also have long-term value: you may decide to license or sell your patent to another entity for profit, while robust patent portfolios make your enterprise more attractive to potential acquiring firms.


For the USPTO’s overview of the patent application process, click here.


How long does it take to obtain a patent?

As of July 2015, the USPTO estimates the current wait time at 17.6 months from application filing to “First Office Action” (i.e. the initial document you receive from a patent examiner) and 26.6 months from filing to disposition (whether the patent is issued or abandoned). These are only the average times, and your patent’s pendency period may be significantly shorter or longer depending on the nature of the application and the USPTO’s workload at the time. Once you submit an application—provisional or otherwise—however, you can designate your invention as “patent pending” and thereby deter others from copying or using it without permission.


Utility patents last for 20 years, while design patents have a slightly shorter term: 15 years for design patents filed after May 13, 2015, and 14 for patents filed before that date. You have the option of renewing your patent before by paying a maintenance fee before the term has ended. If your patent has expired, you may be able to reinstate it by filing a petition.


What happens if I don’t obtain a patent for my invention?

Anyone can theoretically claim and profit from your invention if you do not patent it. Not only will you lose the exclusive ability to sell or license your invention; you will miss out on the industry recognition, respect, and collaborative opportunities you deserve. You may also compromise your vision by failing to oversee how and where others make, sell, or use your invention. No one wants to see years of labor and problem-solving squandered by shoddy manufacturing practices and mistreatment.


How do I enforce my patent?

Patent infringement happens for a number of reasons and takes many forms. Infringement may be willful or unwillful—in other words, the alleged offender may or may not know they’re stealing someone else’s idea. It may involve one or several elements, but not the entire patent. Or, though a product may resemble your patented invention, the alleged infringer may have no prior knowledge of your patent. Perhaps they came up with a remarkably similar idea independently and brought it to market without conducting the requisite research.


Whatever the situation, always talk to a patent attorney before taking retaliative action. If you haphazardly pursue litigation and misidentify an infringer, the court may decide to invalidate your patent. Aside from helping you research and prepare your case, an attorney can suggest alternative methods of dispute resolution, such as sending a demand letter or negotiating license agreements.


What if I fail to enforce my patent?

A patent is a valuable piece of intellectual property, and failure to enforce it is, on average, equivalent to many thousands of dollars (or more) in lost investment. Don’t let your competitive advantage go to waste: talk to an IP attorney to learn how you can protect your invention from inception through distribution.


For more information on patents, please visit the USPTO’s patent homepage here.





Have a question about patents I haven’t answered here, or need advice about any other IP matter?
Click here to contact me.
You can also find more of my guidance on IP-related legal issues at the
Friday Factoids’ Resources page.


Offit Kurman’s Intellectual Property Group helps dynamic businesses and individuals to develop and protect their IP assets. We can help you through all stages of your IP matters—from concept through development, registration, licensing, marketing, renewals, enforcement and sales. Our comprehensive and strategic approach to IP protection is designed to maximize the value of your IP assets and minimize the related risks. Learn more about our IP practice here.




Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions. He also manages a blog about intellectual property issues, Friday Factoids. Mr. Wachs co-manages New Paradigm Counsel, a service through which Offit Kurman delivers customized, comprehensive and cost-effective outsourced legal departments. Through New Paradigm Counsel, Jon served as outsourced general counsel for a government contractor, a large printing business, a payment processing company and an identity theft restoration business.




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