Top 10 Misconceptions About Patents
This time of the year it is common to publish lists of everything ranging from the top songs to the top movies to the best and worst dressed people. We thought we would join in and publish a list of the top 10 misconceptions that (in our experience) people have about patents and patent law. Our unscientifically generated list is as follows:
1. A patent provides a right to make, use, or sell the patented invention
Sorry. This is truly number one for us because it seems to be the most widely misunderstood aspect of patents. A patent provides a right to exclude others from making, using, or selling the patented invention. A right to exclude is not the same as a right to make. The right to actually make, use, or sell a patented product may be constrained by other, earlier patents with claims broad enough to encompass the product, even though the earlier patents do not disclose what is novel about the product.
2. There is a provisional patent
We get this one a lot. There is no such thing as a provisional patent. In the United States, we have provisional patent applications. However, provisional patent applications never become patents. Instead, you ultimately must file a non-provisional application in order to get a patent. At most, a provisional patent application provides you with a means of getting a filing date with the Patent Office without having to comply with all of the formal requirements for non-provisional patent applications.
3. Patent applications can be enforced against infringers
Many people seem to think that once they are "patent pending" they can sue infringers. That is not the case. The phrase "patent pending" simply means you have a pending patent application, which may or may not mature into a patent. Until it does, you cannot sue anyone for infringement. You may, however, be able to put infringers on notice of your patent application once it publishes and expand the time frame for which you can collect damages once your patent issues.
4. If you have a patent, it covers your product
We also encounter people who believe that if they have a patent, it covers their product regardless of how they design it. That is not the case. A patent covers what is within the scope of the patent claims. If you change your product, it may no longer be covered by your patent, meaning that others are free to copy the product. It is important to coordinate your product development activities with your patenting activities to make sure you do not make product changes that leave you unprotected.
5. U.S. patents protect against foreign infringement
Patents are territorial. U.S. patents will protect against infringement in the United States. If you want to prevent infringement in another country, you need a patent there.
6. There is an international patent
No. There is an international patent application, called a "Patent Cooperation Treaty" or "PCT" application. The application allows you to streamline the process of seeking foreign patents by filing a single application. However, the application itself does not become an international patent. Instead, it must ultimately be examined in the individual countries of interest, each of which makes its own determination as to whether to issue a patent. One caveat is that the European Patent Office can issue a patent for all of the member states of the European Patent Convention.
7. It is permissible to add information to a patent application after it is filed
No it is not. You may be able to amend your patent claims if what you add to your claims was included in your patent application when you filed it. However, you cannot add new information. In addition, many foreign countries take a narrow view of what constitutes new information. So, while it is often easy to broaden claims in U.S. patent applications (assuming that the claims are novel and non-obvious), that is often not the case in places like Europe, Japan, and China.
8. If you have not seen a product in the marketplace, it is likely patentable
Many people come to us with ideas that they believe must be patentable because they have not seen them implemented in the marketplace. This is a bad assumption. Large numbers of products are patented or are the subject of patent applications and yet never get commercialized. Those prior patents and patent applications constitute prior art against future patent applications. It can be expensive and disappointing to assume an invention is patentable only to find out there is blocking prior art once the Patent Office examines your application.
9. Design patents cover product designs
Well, not quite. It depends what you mean by "design." Design patents protect ornamental features of articles of manufacture. Utility patents protect the structure and operation of products. The term "design" can refer to either type of subject matter, so it is important to ensure that you know what it is you hope to protect.
10. If a patent expires, you can practice its invention
Not necessarily. Once a patent expires, you cannot be sued for infringing it. However, depending on the features your product includes, it may infringe other patents.