Overview

• Jurisdiction: Maryland

I. OVERVIEW

A. Introduction

This chapter provides an overview of the laws and practices that govern obtaining and enforcing U.S. patent rights. Unlike trade secrets and trademarks discussed in this Handbook, patents are almost exclusively subject to federal law. As a consequence, the jurisprudence tends to be more consistent, if not more clear, with patents than with other forms of intellectual property.

There are many aspects of patent law, particularly those relating to patent transactions and litigation, that mirror those found in other areas of the law. But where differences exist, the distinctions are typically significant and require specialized patent law expertise. In keeping with the spirit of the remainder of this Handbook, these patent chapters offer the lay reader an initial awareness of some of the more prevalent issues that may arise involving patents and seek to provide a frame of reference to facilitate the engagement of patent counsel as appropriate.

B. Patent Rights

The U.S. Constitution authorizes the U.S. Congress to establish a patent system to promote the progress of the useful arts by granting temporary exclusivity to inventors for their discoveries. The U.S. Congress enacted Title 35 of the U.S. Code, which sets forth the statutory requirements for the grant and enforcement of patents. The sole administrative agency responsible for the examination of patent applications is the U.S. Patent & Trademark Office (USPTO) headquartered in Alexandria, VA.

A U.S. patent may be granted for certain inventions deemed useful, new, and nonobvious as compared to the state of public knowledge before the invention (referred to as the "prior art"). In addition to the standards set forth in Title 35 of the United States Code, the USPTO has promulgated regulations located in Title 37 of the Code of Federal Regulations (C.F.R.) to determine whether a patent application may become a patent. Once issued, a U.S. patent typically provides the owner with the exclusive right to make, use, sell, offer to sell, and import into the United States the patented invention for 20 years from the date of the utility or plant patent application or 14 years from the date of the design patent application.

The public policy behind patents is to facilitate innovation through incentivizing inventors to invent and investors to invest in that inventive activity, by providing the reward of temporary exclusivity to the invention in exchange for a public disclosure of the inventive activity. While even temporary patent exclusivity may create downstream technology access concerns, the early information disclosure has the societal benefit of discouraging wasteful, duplicative efforts and encouraging further improvements and other design-around efforts. In the absence of patent protection, inventors arguably would refrain from public disclosure of their inventions in favor of trade secrecy and other confidential relationships, which would cloud public knowledge about individual innovative efforts, and possibly would retard overall innovation. Accordingly, the efficacy of a patent system depends on a proper balance between exclusivity and public access to patented technology, which can be a controversial and often unpopular tension.

The grant of patent rights is a sovereignty matter, and patent laws vary from country to country. There is no worldwide patent protection, but an inventor may pursue patent rights internationally through national patent applications. A U.S. patent is effective only in the United States.

C. Patent Practice Overview

Only those attorneys and agents registered to practice before the USPTO may represent applicants having prospective or immediate business before the patent office in the preparation and prosecution of patent applications. The USPTO has established certain requirements for individuals to be registered to practice. With certain exceptions, these requirements include the prerequisite...