Patent Myth Busting: Laying Patent Law Misconceptions to Rest

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Misconceptions are common when discussing almost any legal field, as the law typically contains nuances that are just plain difficult to navigate for the uninitiated.  The patent laws are no exception – there are several mistaken beliefs that folks have when they think about the patent system, and I think it’s time that these are laid to rest.  To that end, below are five misconceptions that I regularly dispel when talking with people about the ins and outs of patent law:

Bicycle Model for Patent No. 222537 - (picture courtesy Rothschild Petersen Patent Model Museum.

Bicycle Model for Patent No. 222537 – (picture courtesy Rothschild Petersen Patent Model Museum.)

  • Misconception #1: I need a prototype

While prototypes or models were once required by law as part of the patent filing process, this is no longer a requirement (although you can still see some of the devices, like the bicycle pictured right, sent in during the 18th and 19th century at the Rothschild Peterson Patent Model Museum or at the USPTO Museum).  Today, although there are numerous technical requirements for a patent application, the main requirement is a description of the invention that is sufficient to a person of ordinary skill in the pertinent art, science, or area to make and use the invention without extensive experimentation.  For most applications, the submission of labeled drawings is also required so as to assist in understanding the invention claimed.

  • Misconception #2: Patents are only for tech companies

All types of ideas can be patented so long as they are novel and non-obvious in view of what has already been invented and disclosed (referred to as Prior Art).  There are still patents being issued to mousetraps, light bulbs, and flower pots in addition to all the high tech gadgetry that is being patented by Apple and Samsung.  Additionally, there are different types of patents that are specifically available for plants and ornamental designs of objects (bottles, gloves, shoes, etc.).

  • Misconception #3: I can’t patent an invention that is a combination of known items

The Supreme Court has said that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc.  Thus, while many combinations of known items may not be patentable, if the items are combined via new or novel methods or a when a combination yields unpredictable results (or both), an inventor may be entitled to a patent.  A new invention may also be patentable if it is a significant departure from the prior art in terms of scale, footprint, throughput, or other metric.

  • Misconception #4: Having a patent gives me the right to make my invention

Unfortunately, obtaining a patent does not mean that you have a right to make your invention.  This may be best understood through an example:

  • You invent the touch screen that is obviously perfect for cell phones.
  • You obtain a patent that covers a cell phone having a touch screen.
  • Apple has the patent to the cell phone.
  • You cannot make a cell phone having a touch screen because if you did so, Apple could sue you for infringing its patent on a cell phone.  However, Apple cannot make a cell phone with a touch screen either.

Although my example is slightly contrived because no-one, including Apple, would have a patent to all cell phones, this situation certainly occurs.  Hopefully, if it does, you’ll be able to work around the other patent or license/purchase the necessary technology.

  • Misconception #5: I can stop people from making my invention once I have a patent

Interestingly, the rule associated with whether an inventor could get an injunction, thereby stopping an infringer from continuing to infringe, has changed within the last five years.  In days past, an injunction was almost issued as a matter of course when infringement of a patent was found.  However, since the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, this tradition has changed and injunctive relief is no longer a guarantee.  In fact, the Supreme Court’s ruling has opened the door for revising the standards for injunctive relief, which we are beginning to see in decisions from the Federal Circuit Court of Appeals (which hears all patent appeals).  Moreover, the Federal Circuit’s reasoning in these recent cases has been construed so as to even further limit the ability of patentees to obtain injunctions, which you can read more about in my previous post.


Not everything you hear about patent law is true.  If you are thinking of protecting an invention with a patent, it’s important to get the facts straight and make sure you understand how the patent system works.  With a better understanding of the actual requirements, costs, and benefits of obtaining a patent, you can make more informed decisions about whether patenting your invention make sense in your situation, or whether it’s better to pursue other methods of protecting your intellectual property.

Disclaimer – As always, we recommend that inventors consult an attorney to discuss the specifics of their situation before making decisions regarding their pursuit, enforcement, or defenses relating to intellectual property.

Patent Law Changes: Should You Try To File?

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If you have an invention that you think may warrant patent protection, you may want to consider filing an application before March 16, 2013 because the patent laws are changing.

Well over a year has passed since the passage of the America Invents Act and the countdown to the transition from the U.S.’s first-to-invent patent system to a first-inventor-to-file patent system.  While this change isn’t near as dramatic as say, the Y2K debacle (was it a debacle?), the conversion does potentially affect your ability to obtain a patent if you have an idea that is ready for patenting now, but you wait to file after the conversion date (i.e., March 16, 2013).

The Differences

The primary difference in the first-inventor-to-file system is the application of “prior art” – prior art includes, among other things, patents, publications, and publicly known or disclosed apparatus or methods that predate your invention.  The change is twofold:

  • Under the current law, if you invent something today, work diligently on the invention, and file a patent application in a year, your “date of invention” is today, and thus all prior art that could potentially keep you from obtaining a patent must be from before today.  Under the new law, if you invent something today, but wait to file for a year, your “date of invention” is the day you filed the application.  Thus, prior art that was developed between today and when you file could be used to deny you a patent because your idea would no longer be new and/or non-obvious and thus not entitled to patent protection.
  • Additionally, if you file after March 16, 2013, there is more “prior art” that will be considered by the US Patent and Trademark Office (USPTO).  For example, the law removes some geographical limitations from what the USPTO could consider as prior art.

As a slight counterbalance, just after March 16, the USPTO is altering its fee structure and lowering costs for filing patent applications and introducing a “micro-entity” designation that allows for applications to reduce their fees by 75%.

What to do:

What should you do? There are a number of things to consider, but at bottom, filing before March 16 may be worthwhile if:

  • The idea ready is for patenting – you can articulate what the components of the invention are or the steps in the process such that a peer could understand how to duplicate your invention;
  • The idea is an important aspect or foundation of your business;
  • There is a lot of activity in the field of your invention; or
  • You are concerned that a competitor is close to developing a similar product.

If the answer to one or more of the above questions is yes, and you have an idea that may be patentable, you’ll want to talk to your patent attorney/agent well in advance of the March 16 deadline to determine whether it is worthwhile to file an application before the transition date.  For example, there are options, even if your idea isn’t fully developed, to provide at least partial protection of your idea without sacrificing your invention date.

See also: PatentlyO

This post was corrected on Feb. 13, 2013.