Patent Primer Background: Design & Engineering

Over the course of my career, I’ve received six U.S. patents. I mention this up front because I’ve written a primer on the patent process and intellectual property strategy, which I’d like to share with you in this month’s column and the next. I hope that the lessons I’ve learned and knowledge I’ve gained will help others on a similar journey.

First, a little background

The mandate of the U.S. Patent and Trademark Office (USPTO) is to foster enterprise in the United States by granting legal protection for intellectual property (IP), which it does by granting patents and registering trademarks. There are three types of patents: utility patents (also called letters patents), design patents and plant patents.

Utility patents cover inventions that provide a functional improvement in a process, composition of matter or manufactured article. These have a lifespan of 20 years.

Design patents cover the unique ornamental design of a manufactured item, such as its shape or surface finish. Design patents last for 15 years.

Plant patents cover new and distinct varieties of plants reproduced without seeds through grafting, cutting or budding. These patents last 20 years.

As I received six utility patents, that’s the type I will cover. In order to foster innovation and growth of commerce, the USPTO grants a monopoly on advancements of technology that last for 20 years. In exchange for this monopoly, the patent must disclose the advancement so that someone skilled in the art of the patent can reproduce the technology. A mathematical formula cannot be patented, but a process or physical embodiment of an idea can be. My patents were all a physical embodiment of an idea. Two of my patents were an electronic circuit used for making geometrical measurements and the other four were mechanical devices.

Patents must be filed under the name of the inventor. At the time of filing or later the rights of any patent may be assigned to a third party and recorded by the USPTO. For example, an inventor who works for a company may assign the patent rights to that company. Patent rights are an article of commerce and can be bought and sold. Utility patents have claims that can be enforced in a court of law. A utility patent granted by the USPTO bars any party but the patent owner from reproducing or selling the invention in the United States for the life of the patent. Other countries have the same or similar laws, but the rule of law varies from country to country.

In the United States a patent application must be filed within the first year after the first public disclosure of an invention. In most foreign countries, patent applications must be filed before any public disclosure. Also, the first application received by a patent office has priority over any subsequent application the office receives. Different people may be working on the same idea, so conflicts can arise.