This article examines the patent application and granting process, along with basic laws covering patents and the fees charged by the patent office. The development of patent laws in the United Sates is reviewed as well as some of the debate about various aspects of those laws. The globalization of the patent process is reviewed, and activity in international treaties and patent protection is examined. The complexities of protecting patent rights and fighting patent infringement are explained, and a brief case study of patent litigation is presented. The emergence of a patent protection service sector is also discussed.
Keywords: Counterfeit Merchandise; European Patent Organization; Intellectual Property; Patent Infringement; Patent Law; Patent Protection; United States Patent Office and Trademark Office
Among the first patents ever granted was one for the construction of a model mill in 1409 in Germany (Tulasi & Rao, 2008). A patent for an invention is the grant of a property right to the inventor that gives the holder "the right to exclude others from making, using, offering for sale, or selling" the invention in the granting country or importing the invention into the granting country ("General Information Concerning Patents," 2005).
The United States' Patent Infrastructure
In the United States, a patent is generally granted for a period of 20 years. This 20-year grant period remains among the many issues that are hotly debated about the United States patent system (Rako, 2009). Patents are published, which is a process that discloses technical information about the patented item. In general, after the patent period is up, other companies can use the patented item in their processes or even manufacturer a similar item (Fromer, 2009).
The first U.S. patent law was enacted in 1790, and the United States Patent Office first opened in 1803. The law was revised in 1952 and again in 1999 with the passage of the American Inventors Protection Act of 1999 (AIPA). In the early 2010s, Congress passed reform legislation that changed patent eligibility criteria and expanded key definitions, among other provisions (US Patent and Trademark Office, 2013a).
The United States Patent and Trademark Office (USPTO) receives over 500,000 applications every year. The USPTO is organized into examining technology centers (TC), with each specializing in specific fields of technology. Examiners review applications for patents and identify applications that claim the same invention and work to determine who was the first inventor ("General Information Concerning Patents," 2005). The USPTO issued 253,155 utility patents in 2012, up slightly from 2011. United States resident companies have long held a lead in acquiring patents from the USPTO, but that lead has become very slim (US Patent and Trademark Office, 2013b).
The United States Patent Search Room is where researchers or the general public can search through and examine U.S. patents granted since 1790. The Scientific and Technical Information Center of the Patent Office makes available to the public a wide array of scientific and technical books in various languages. There are also foreign patents available from over seventy countries for review on paper, microfilm, microfiche, and digital formats (Scientific and Technical Information Center, 2012).
The Patent Process
Historically, an item had to be a tangible physical device or a chemical process before a patent would be granted by the USPTO. In the 1980s, a series of court rulings set the stage for processes and software code to be worthy of patents. The updated law provides for the granting of a utility patent for a new and useful process, machine, or composition of matter. A design patent can be granted for original and ornamental designs of manufactured items. Patents can also be granted for discoveries or an asexual reproduction of a distinct and new variety of plant (Turner, 2009).
Items for which patents can be granted must be new, with no prior art or use in place. There are also restrictions on items that have appeared in foreign publications within the prior year of applying for the patent. Prior art is a broad term and can include many different items. This includes existing patents and patent applications. It could also include technical articles, material supplied by an applicant, abstracts, or even product literature (Davidson, 2009).
Individuals or companies wishing to obtain a patent must go through an applications process. Preparing an application is a complex process that requires in-depth knowledge of patent law and rules and Patent Office practice and procedures. Registered patent attorneys or patent agents provide application services for those who do not want to go through the process on their own. These agents are often well trained in the application process and possess technical knowledge of engineering or other sciences.
The USPTO charges fees for every aspect of the application process. There are three levels of fees, the standard fee; the small entity fee, which provides up to a 50-percent discount on the standard fee for small companies; and the micro entity fee, which provides up to a 75-percent discount on the standard fee for small entities that meet certain additional income and filing criteria. At the standard fee level, the basic filing fee for a utility item is $280 and for a design item or a plant item is $180, effective January 2014. If the application is lengthy, there is an additional fee of $400 for every 50 sheets of the application that that exceeds 100 sheets. Patent search fees range from $120 to $600, and examination fees range from $460 to $720.
The maintenance fees for patents, which must be paid periodically, are rather costly. At 3.5 years into the life of the patent, a holder must pay a $1,600 fee; at 7.5 years, $3,600; and at 11.5 years, $7,400. There are numerous other fees that applicants or patent holders must pay during the process which in the end can add up to thousands, if not tens of thousands, of dollars ("Revised Fee Schedule," 2013).
One interesting note in the history of patents in the United States was the fact that President Abraham Lincoln was granted a patent in on March 10, 1849. The patent was for a device for buoying vessels over shoals. Lincoln's invention made use of inflatable air chambers that could be attached to sides of a vessel. When the chambers were filled with air, it made it easier to move the vessel. Lincoln was certainly interested in science and inventions and in 1863 signed legislation into law that created the National Academy of Sciences (Emerson, 2009).
Globalizing the Patent Application
Prior to 1960, the number of patents granted grew at a very slow rate, and the vast majority of patent activity took place in the United States, Germany, the United Kingdom, and France. After 1960, patent activity started to increase at a more rapid rate, and starting in about 1980, patent offices in major industrial countries started experiencing about a 3-percent annual increase in patent activity. The patent offices of the United States, the European Patent Office, Republic of Korea, and China have had a consistent growth in filings. Combined, these and other offices located around the world had nearly two million patent applications pending in 2010 (World Intellectual Property Organization, 2012).
The Role of the WTO
The World Trade Organization (WTO) has provided a leadership position and a forum for the expansion and stabilization of patent activity around the world. The WTO's Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council is a leading international forum for these discussions and negotiations ("Intellectual Property: Protection and Enforcement," 2009). Some of the major international activities have included the Paris Convention for the Protection of Industrial Property (PCPIP), the Patent Law Treaty (PLT), the Patent Cooperation Treaty (PCT), and the Strasbourg Agreement Concerning the International Patent Classification (IPC) (Kukrus & Kartus, 2007).
Many economists, industrialists, and patent attorneys see the Patent Law Treaty (PLT), the Patent Cooperation Treaty (PCT), and the Substantive Patent Law Treaty (SPLT) as three necessary elements in achieving a consistent worldwide system of patent administration. The PLT states an array of formal requirements for a patent application, examination, and granting procedures to be followed by patent offices. The PCT provides a basis for examination of an international patent application, while the SPLT outlines basic substantive patent laws that were not addressed in the Paris Convention or the TRIPS Agreement (Kukrus & Kartus, 2007).
The European Patent Organisation
The European Patent Organisation (EPO) is the primary intergovernmental organization with the European Union (EU) that set standards for the patent process. As a result of the European Patent Convention (EPC), the EPO was in established 1977. The EPO has thirty-eight member countries, including all of the EU members as well as other countries in Europe that have not yet become members. The Patent Academy, a unique feature of the EPO, provides extensive training for patent professionals, judges, public servants, business managers, academics, and students (European Patent Office, 2009). In Europe, 62,112 patents were granted in 2011, out of 244,437 recorded patent filings (European Patent Office, 2012).
Patents in China
As we entered the age of globalization of world trade and expanded manufacturing capacity in numerous countries, patent holders have been concerned about protecting their intellectual property. Many eyes have been on China to see if the communist state would adopt patent laws that are consistent with other industrialized nations. China's patent law was first established in the mid-1980s and was revised again in 1992 and 2000. These actions brought China's law more into the mainstream, but to meet the full requirements set by TRIPS, many feel that China still has work to do on patent laws (Gao, 2008; Bera, 2009). In 2011, China granted 112,347 patents to residents and 59,766 patents to nonresidents (World Intellectual Property Organization, 2013).
In contrast to China and the United States, patent laws in India were first established in 1856 while India was still under British colonial rule. Patent laws in India were revised several times during the century that followed and remained in effect after independence. In 1970, independent India reviewed and revised patent laws (Shrikrushna, 2009). The number of patents granted in India remains relatively small: 1,208 patents to residents in 2010 and 776 in 2011 compared to 5,930 going to nonresident filers in 2010 and 4,392 in 2011 (World Intellectual Property Organization, 2013).
Enforcing Patent Rights
One of the most complex issues regarding the protection of a grantee's rights is how to enforce those rights. The effectiveness of patent protection goes beyond the mere existence of patent laws and rests largely on the ability of a nation or a patent holder to enforce the rights in patent law. The TRIPS Agreement has provisions on enforcement. Even though members to the agreement are required to maintain domestic procedures and remedies to enable grantees to enforce their rights, the process can be cumbersome and varies from country to country (Zoghbi, 2007).
In many countries, a great number of patent infringement cases end up going through the court system, and "few countries have established a court for dealing specifically with intellectual property violations" (Zoghbi, 2007). Notably, a patent litigation case can be very expensive. The cost and duration of a case varies based on complexity of the patent and the scope of the claim, but it can easily lasts two years or more (Margiano, 2009) and costs can range between $650,000 to $5 million, depending on the amount of money is at risk (Kerstetter, 2012). If successful in the litigation, patent holders can benefit from several remedies including an injunction, damages, or an award of the profits made from the violation. Although additional compensation can be won as damages, this is not commonly the case (Zoghbi, 2007).
Litigation: The Blackboard Case
Patent infringement cases are ongoing in the United States federal courts. One very complex case in the United States was between Blackboard (developer of course-management software used at many colleges and universities) and Desire2-Learn, Inc. (D2L). In 2006, Blackboard was granted a patent for its course-management system and...
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