It would be nice if a dump truck full of money pulls up to your office when you or your business invents something unique. Unfortunately, this is not what happens. The process for exploiting an invention is a process that almost always requires some professional assistance from a patent lawyer to navigate. Here is a brief overview of the four steps to monetizing an invention:
Prior Art Search
Before filing a patent application, two decisions must be made before a patent can be obtained. And can a patent be obtained? The “should” question is a business decision. An inventor, or his or her employer, must decide if the business advantage of having a patented invention justify the investment in a patent. The United States has had patent laws for over 228 years – almost from the founding of the country. A patent gives the patent holder the exclusive rights in the invention. This means that the patent holder can exclude others from infringing on his or her invention, the same way a landowner can exclude others from trespassing on his or her land.
The “can” question is a legal decision. To obtain a patent, an invention must meet certain legal standards. Specifically, the invention must be the type of subject matter that is eligible for patents, and the invention must be useful, novel, and non-obvious. While there are many legal nuances to novelty and non-obviousness that may be better understood by seeking out patent lawyers, the underlying concept of these legal standards is that a patentable invention must be distinguishable from anything previously patented, published, or sold. While not required by the U.S. Patent and Trademark Office, many inventors choose to commission a prior art search to determine the likelihood of being able to meet the novelty and non-obviousness standards. Patent lawyers can commission prior art searches and help inventors interpret the results to assist in making the decision whether to file a patent application.
Preparing and Filing a Patent Application
To obtain a patent, an inventor must first file a patent application. The patent application describes the invention in both technical and legal terms. Again, patent lawyers can explain how the parts of a patent application interact with one another, but as a broad overview, the specification is a technical explanation of the invention and typically includes drawings, while the claims are a legal definition of the invention that explain what others are excluded from. While inventors are allowed to file pro se (for themselves, without a lawyer), most inventors will seek out patent lawyers to write and file the patent application.
Prosecuting a Patent Application
Once the patent application has been filed with the U.S. Patent and Trademark Office, the application is examined. This means that the application is assigned to a patent examiner, who conducts a prior art search and determines whether the invention meets the legal standards for patentability. During the course of the examination, the examiner may issue rejections of, or objections to, the application, and the applicant and his or her patent attorney are given an opportunity to file a response. This process is referred to as the “prosecution” of the patent application. Successful prosecution often requires detailed knowledge of the Patent Act and precedential court cases to overcome any rejections or objections. Again, patent lawyers can often guide applicants through the prosecution process.
Exploit and Enforce
After a patent is successfully obtained, more work remains to be done. Patents are not self-exploiting or self-enforcing. Think of it this way, obtaining a piece of land does not automatically put a building on that land or put a fence around that land. Rather, it merely gives the landowner the right to put up a building or a fence. Patents operate the same way. A patent holder may choose to make and sell the patented invention. A patent holder may choose to license the patent to others who make and sell the patented invention. In either case, a patent holder may need to enforce the patent through a patent infringement lawsuit when an infringer makes and sells the invention without the patent owner’s permission. Patent lawyers can assist patent holders with licensing and litigation.
