Friday, March 24, 2017

Patent Primer for the Entrepreneur

By Steven C. DeSmet

May 6, 2013

Posted in: MEQ

Have you ever walked into a store only to see that great idea you had but never pursued right there on the shelf in front of you, being sold by someone else and marked with the words “patent pending”?

Don’t let this happen again. Take your next great idea and turn it into an invention — and protect that invention with a patent.

You don’t have to be a big corporation or have heaps of money sitting around to make this happen. You do, however, need to understand the basics of what patents are and what types of inventions are eligible for patent protection.

So what exactly is a patent and who can get one?

A patent is a property right that is granted to an inventor by the United States Patent & Trademark Office. A key thing to note here is that patents are only available to the actual inventor or inventors. Although the inventor may assign his/her rights in the invention to another individual or entity, the patent application must be filed in the name of the actual inventor.

The property rights conferred by a patent are actually referred to in the negative. This means that owning a patent on an invention does not give the inventor the right to make the invention; rather, it gives the inventor the right “to exclude others from making, using, offering to sell or selling their invention throughout the United States or importing their invention into the United States.” The U.S. government grants this right to the inventor in exchange for the inventor’s public disclosure of how to make the invention to the world.

There are three types of patents: design patents, plant patents and utility patents.

Design patents are fairly limited in nature and may be obtained by anyone who invents a new, original and ornamental design for an article of manufacture having practical utility. What exactly does this mean? A design patent applies to the ornamental or decorative features of something that is primarily functional. Examples of items that are typically covered by design patents are furniture, jewelry and soda or water bottles. The design patent only covers the ornamental and non-functional design of an item.

The second and even less common type of patent is the plant patent. The plant patent may be obtained by anyone who invents or discovers and asexually reproduces a distinct and new variety of plant. In other words, the plant patent is reserved for newly invented species of plants that do not reproduce naturally outside of a laboratory.

Utility patents are certainly the most common types of patents. Inventors can obtain a utility patent for a process, machine, article of manufacture, composition of matter or any improvement upon any of these categories.

Each of these is fairly self-explanatory. It is important, however, to add that a process patent not only permits the inventor to prevent others from using the same process, but it also allows the inventor to prevent others from selling items made by the same process.

What types of ideas and inventions are eligible for patent protection?

A common misconception is that an individual can get a patent for an idea. While an idea is naturally the starting point of most inventions, the idea itself is not eligible for patent protection until it is reduced to practice in a tangible form.

As an example, the idea of creating a better mousetrap is not itself patentable, but if an inventor actually constructs a better mousetrap, then the invention would be patentable. For an invention to be patentable it has to meet three requirements — the three keys to patentability: It must be new, useful and nonobvious.

• New: For an invention to be considered new, or novel, as the patent law refers to it, it must be significantly different from all previous inventions, whether the previous inventions were patented or not. In addition, it must not have been fully described in any printed publication anywhere in the world or have been offered for sale in the United States more than one year prior to the filing of a patent application.

• Useful: Patents will be issued only for useful inventions. The standard by which this is judged is whether a person of ordinary skill in the art of the invention would consider it to be useful. While this sounds like a high hurdle to overcome, usefulness typically only represents a minimal requirement and even a single operable use of the invention will get the inventor past this hurdle.

• Nonobvious: In addition to being new, the invention must not be obvious to a person of ordinary skill in the art. A person of ordinary skill in the art is a person who regularly practices in the technology the invention is related to. This is where an inventive step is required.

For example, if invention A is known in the art and invention B is known in the art and it would be obvious to a person of ordinary skill in the art to put A and B together to get C, then C is not eligible for patent protection.

Understanding whether your invention is patentable is only half of the battle. Actually obtaining the patent is the next step in the process.

Editor’s Note: Watch for the Aug. 6, 2013, issue of Maryland Entrepreneur Quarterly, where Steven DeSmet will outline steps for obtaining a patent.

Steven C. DeSmet, Esq., is a member of Leahy & DeSmet LLC (, in Calverton. He can be reached at 301-572-6872, or e-mail

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