VII. Nature Of A Patent

The rights granted by the United States government to a patentee are:

a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof. {FN45: 35 U.S.C. §154(a)(1)}

Originally, the rights granted were to exclude others from “making, using, or selling” the invention. Offering for sale and importing the invention were added to comply with an international trade treaty, although there was considerable support for their addition.

It is important to note that the rights are stated in a negative fashion – the patent owner can “exclude others.”. It does not say that the patent owner can himself practice the invention. That is because his practicing of the invention may infringe on the rights to exclude held by another patent owner. As an example, if I hold the patent on television in general, and you later get a patent on color television, you can’t practice color television (or television in general) as long as my patent hasn’t expired, but I can’t practice color television as long as your patent is in force. When my patent expires, you can practice color television (and anybody else can also practice television), but I still can’t practice color television.

Sometimes one patent blocks practicing (making or using) a second patent, while that second patent blocks practicing the first patent. In that case, neither patent owner can practice his invention until the other patent expires, and so it is likely that the two patent owners will cross-license their patents, giving each the ability to practice their patents.

VII.A. Patent Term

The term of a patent used to be 17 years from the time the patent issued. That was recently changed to 20 years from the date of the first application leading to the patent, to prevent people from keeping a patent pending by delaying tactics until the technology had matured and people were using the invention, then having the patent issue and collecting royalties from those who had independently developed the invention. These are referred to as “submarine patents,” and some applications were kept pending for two decades or more.

There are a number of instances where delays in the prosecution of the patent application don’t count against the 20-year term. These are detailed in Section 154. {FN46: 35 U.S.C. §154} Most important, if an applicant does not delay the examination of the application, he or she will receive a full 17-year patent term. {FN47: 35 U.S.C. §154(b)(1)(B)}

VII.B. Presumption of Validity

One of the benefits of a patent is the deference given by the courts to the judgment of the examiner:

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. {FN48: 35 U.S.C. §282}

The presumption of validity means that courts will not substitute their judgment for the examiner’s unless there is clear and convincing evidence that the examiner was wrong. That means that it is difficult to find a patent invalid on the basis of prior art that was considered by the examiner, but less difficult when there is newly-discovered prior art. Because of that, it is to the benefit of a patent applicant to supply the examiner with all prior art that will have a bearing on the patentability of the invention. It is also a Patent Office rule. {FN49: 37 C.F.R. §1.56} And if it is found that an applicant hasn’t been forthcoming with prior art, or has misled the examiner, the patent can be declared invalid for “fraud on the Patent Office” (the old term) or “inequitable conduct” (the term in current favor).

Note that claims are individually valid, and the invalidity of a parent claim does not make its dependent claims invalid. That is because the dependent claims don’t depend on the parent claim for their validity but simply for some of their language.

Next section: Infringement