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When is a Patent Needed?

Sep 10, 2012

I'm more than a bit confused about why and when a patent is needed. Also, are all patents the same? Can you help clarify the process for me or perhaps direct me to patent training for inventors? Carrie, Laramie

By Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library,, guest submitter.

Among the various forms of intellectual property (IP), patents can be the most important for small businesses, which are often the leading agents in new and developing technology.  Because of this, small businesses provide an active and unique investment opportunity for investors.  As a small business owner, your intangible IP assets may far exceed your tangible assets in value to both you and potential investors.  Thus, patents can play an important role in the economic health of your small business.   

A patent is a grant from the federal government conferring the right to exclude others from making, selling, or using an invention for the term of patent protection.  Unlike trademarks and trade secrets, patents are governed exclusively by federal law.  There are three types of patents: those for useful objects (utility patents), those for ornamental design (design patents), and those for asexually reproduced plants (plant patents).  Whereas trademarks and trade secrets can last forever if properly maintained, and copyrights have a long term of duration (generally the author’s life plus seventy years), patent protection lasts only twenty years from the application date for utility and plant patents, and fourteen years from grant date for design patents.
Basic requirements for patentability are new (not previously known by others or previously available in the public domain), useful (must have practical utility to accomplish a useful purpose), and non-obviousness (the invention must be considered not obvious to one of ordinary skill in the art). 

In September 2011, the President signed into law the Leahy-Smith America Invents Act. This Act is an extensive overhaul of current patent laws.  One of the most discussed changes was the move from first-to-invent to first-inventor-to-file.  Before, patents went to the person who invented first, which had to be demonstrated using “prior art” — documentation like inventor notebooks, academic papers, etc.  Anyone wanting to challenge a patent did so by using “prior art” — generally public documents published before the patent was granted.  Private evidence like dated sketches, notebooks and models could then be used to contest the challenge. Beginning on March 16, 2013, patents will be issued according to which inventor files first, aligning our system with most other countries.

The USPTO will be hosting eight roadshows during September 2012 (September 17, 2012 at the Denver Public Library) to share information about new final rules implementing provisions of the America Invents Act that become effective on September 16, 2012.  As a small business owner, you may wish to attend this discussion for further information on the final rules that relate to provisions for inventor’s oath/declaration, pre-issuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review.

Tags: patents

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