Patent law is part of intellectual property law controlling what inventions qualify for patents, the patent application process, and patent infringement.8 min read

Patent Law: What Is It?

Patent law is part of intellectual property law and controls what inventions qualify for patents, the patent application process, and how patent infringement is handled.

If you want to get legal protection for your inventions, you should understand the basics of patent law. It may also benefit you to have some knowledge of overall intellectual property law, the background of patent law, what requirements an invention must meet before it qualifies for a patent, and some of the issues that make patent law difficult to navigate.

What Is a Patent?

A patent is a property right that gives an inventor the legal ability to stop others from making, using, or selling an invention for a certain amount of time.

There are three distinct types of patents:

A utility patent , which is the most common type, protects functional devices. Software patents fall under this umbrella, but are sometimes regarded as a different type of patent altogether.

A design patent covers non-functional, or aesthetic aspects of an item. Design patents are exclusive to the United States. Other countries have different intellectual property laws that protect designs.

A plant patent protects new varieties of plants.

Inventors may also submit a provisional patent application, which enables the inventor to label an invention as "patent pending" to warn away anyone who might want to copy the invention. You are also allowed to say that an invention has a patent pending if you have filed a non-provisional, or regular, patent application — even if the application hasn't been approved yet.

Note that patents only protect fully developed inventions, not ideas.

What Are the Requirements for Patentability?

Before an invention can be protected by a utility patent, it must meet the following requirements:

Patentable subject matter must be involved. The invention must fall into one of the categories of patentable items that the law defines. Generally, processes, devices, machines, and anything that can be manufactured are patentable. There is an ongoing debate about whether business methods and printed material are patentable, but traditionally they are not.

The invention must be useful .

The invention must be novel . It needs to have an element of newness to it. No one else may already hold a patent for the same invention.

The invention must be nonobvious . This means that no one with a basic knowledge of the type of item that was invented would find the invention to be obvious.

The inventor must be able to describe the invention in such detail that someone else would be able to make it based on your instructions. This principle is known as enablement. Part of enablement is describing the best way to make and use the invention. If you do not have a preferred method of using or making your invention, or if you did not think about the best way to make or use the invention, you cannot be accused of violating this requirement.

What Rights Does a Patent Grant?

A patent grants its holder two basic rights: the right to exclude and the right to sue infringers.

The Right to Exclude

This means that patent holder can stop others from making, using, or selling the invention. If others wish to use or sell your invention, you can either sell the patent or arrange a patent license agreement.

Note that a patent does not grant its holder the right to make or sell an invention. Other existing patents or local laws may affect an inventor's ability to use, sell, or make a patented invention.

The Right to Sue Infringers

Most patents have more than one claim. Claims are the section of the patent that lists which parts of the invention are protected. Only one claim must be violated before the patent holder can sue for infringement.

If you sue for infringement, a federal court may grant an injunction, or a strict order, that tells the guilty party to stop infringing on your patent and you may be awarded damages.

Sometimes, when the government infringes on a patent, litigation or legal processes occur through the United States Claims Court. Keep in mind that the US government can use any patent invention without asking for permission, but when this happens, the patent holder has the right to ask for compensation from the government.

The Patent Application Process

The patent application process is complex. Here are some basics you need to know:

Only the inventor may file an application. A qualified attorney may also file on your behalf.

Patent applications require a high level of detail. The United States Patent and Trademark Office, which grants and issues patents, thoroughly examines all applications and can take years before an application is approved.

You should do an extensive search before applying. You can search the US Patent Database and Patent Application Database to see if anyone else already holds a patent for an invention like yours.

It is wise to hire an attorney. The attorney will be able to help with everything from research to dealing with the Patent Office when it begins to ask questions about your application.

You can ask for reconsideration. If you are notified that the USPTO has objections to your application — or has rejected it altogether — you can ask that the application be reconsidered, even if you haven't changed it to address the issues that the USPTO raised. When you receive a second rejection or a final rejection, you may file an appeal with the Board of Patent Appeals and Interferences.

If you are not happy with the decision from the Board of Patent Appeals and Interferences, there are other options for appeals that your attorney can guide you through such as going to the United States Court of Appeals or pursuing civil action against the Director in the United States District Court for the District of Columbia.

Patent Law: Part of Intellectual Property Law

Patent law falls under intellectual property law, which is otherwise known as IP law. IP law covers the following:

Patent law. This covers tangible inventions.

Copyright law. Copyrights cover written and artistic works.

Trademark law. Trademarks are registered symbols or names that identify a group, individual, or company.

Trade secret law. Trade secrets are methods, formulas, or devices that give a company a competitive edge. Companies may sue competitors or corporate spies who steal trade secrets.

Licensing law. A license gives its holder the right to carry out a specified task with an otherwise protected work, such as a piece of music. Licensing law may overlap with any of the other types of IP law.

Why Is Patent Law Important?

Patent law is designed to encourage innovation and protect businesses. Successfully navigating patent law can give businesses and startups a distinct advantage against competitors who might otherwise try to steal new inventions.

Frequently Asked Questions About Patent Law

What Is the Difference Between Patent Litigation and Patent Prosecution?

A patent prosecutor helps inventors get through the process of patent prosecution, which is the process of filing for and obtaining a patent. This can also include patent counseling, which is when an attorney offers an opinion on whether a certain invention could qualify for a patent.

A patent litigator deals with issues that relate to specific patents such as patent infringement lawsuits.

How Might Someone Defend Against a Patent Infringement Lawsuit?

There are two ways in which a person might defend against a patent infringement lawsuit:

Claim that the patent is invalid. Since all patents are assumed valid until proven otherwise, the burden of proof in these cases rests with the person who was accused of infringement. Prove they did not infringe on the patent. They may do so by trying to establish that the invention they are using or selling does not match any claims on the patent.

Patent Law: A Long History

The Patent Act of 1790 began the long history of patents within the United States. James Madison, who has been called the Father of the Constitution, played an integral role in bringing patent rights to the newly formed country. The original motivation behind patent law was to "promote the progress of science and useful arts," however, patent law has evolved since that time.

Over the decades, patented inventions have played a significant role in society. For example, the cotton gin, Morse Code, and even the hula hoop were all protected by patents. However, despite all of the innovations that have been protected by patents, patent law does come with its own set of issues.

Issues With Patent Law

There are some problems associated with patent law that may require you to enlist the help of a patent attorney.

Concepts and Patents

In the past, there has been debate over whether a concept could qualify for a patent.

In the 1980s, a chiropractor, Robert Lech, was computerizing his office. He wanted to scan his documents into his computers. Lech's friend, Mitchell Medina, who had some experience with patent law, felt that the idea was too broad and obvious to qualify for a patent. However, a specific software program that formatted the scanned material would be much more likely to win a patent.

This was a new idea because before that, software was seldom patented and the situation presented legal challenges because software might have been considered more of a concept than anything else.

Too Many Patents

Because there are so many patents, it is difficult to innovate without risking a suit for patent infringement. Therefore, it is vital that inventors enlist the help of an attorney who has knowledge about a specific industry and who can guide the inventor through the patent process.

Broad Language in Patents

A patent battle in 2011 between Apple and Samsung illustrates another danger in the world of patent law: sometimes patents are too broad. Apple claimed that Samsung infringed on some of its smartphone ideas, but the descriptions in the patents did not seem very specific. While Apple won the lawsuit, Apple has had to battle several infringements suits in recent years.

Another famous patent battle happened in 2004 when Sony and Kodak sued each other for supposed patent infringements on components of digital cameras and camcorders. The battle ended in a cross-licensing agreement, where the companies granted each other the right to use their intellectual property.

Few Distinctions

One of the most controversial aspects of patent law is that it doesn't recognize differences between types of inventions. This is a difficult issue for industries in which innovation can take years. For example, medications often must go through years of tests before they are ready to be marketed, but a provisional patent lasts for only 12 months. This creates a weakness for the intellectual property of pharmaceutical companies.

Navigating Patent Law

Patents are a vital part of IP law. They protect inventions and encourage startups and large companies to come up with new ideas. They have played an important role in society since the Patent Act of 1790 first went into effect.

As the world has grown more complex, so has patent law. Some industries, such as technology and pharmaceuticals, have special challenges when it comes to dealing with IP issues. It is important that these types of companies — and really, any other sort of company — have the proper legal help when they are trying to get a patent, sue for patent infringement, or defend against infringement charges.

If you need help navigating patent law, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.