Ten Patent Law Concepts Every Attorney Should Know

DEREK FAHEY, ESQ.

Patent law is highly specialized, but several foundational principles can help attorneys recognize issues that require prompt action or specialized advice.

1. The United States Uses a First-to-File System

Patent rights generally favor the inventor who files first. Maintaining confidentiality and filing promptly are therefore critical.

2. A “Poor Man’s Patent” Does Not Protect an Invention

Mailing a written description to yourself does not create patent rights. Protection generally requires filing an appropriate application with the USPTO.

3. Public Disclosure Can Trigger a One-Year Deadline

An inventor who publicly discloses, uses, offers for sale, or sells an invention may lose U.S. patent rights if an application is not filed within the statutory period.

4. A Non-Provisional Application Must Follow a Provisional Application

A provisional application establishes a filing date but does not itself become a patent. A corresponding non-provisional application generally must be filed within one year.

5. International Rights Require Early Planning

Many countries provide no grace period after public disclosure. Foreign filing strategy should be considered before an invention is disclosed and well before priority deadlines expire.

6. Patent Assignments Should Be Recorded

When ownership changes, the assignment should be documented and recorded with the USPTO so the public record accurately reflects title.

7. A Prior-Art Search Is Often The First Step

Searching patents, applications, and technical publications can help evaluate patentability before committing substantial resources to preparation and prosecution.

8. Owning a Patent Does Not Guarantee Freedom to Operate

The USPTO decides whether an invention is patentable, not whether commercializing it infringes someone else’s patent. A separate freedom-to-operate analysis may be necessary.

9. State-Bar Admission Does Not Authorize Patent Prosecution

Representing applicants before the USPTO generally requires separate admission to the patent bar and qualifying technical credentials.

10. What Is Filed Matters as Much as When It Is Filed

A patent application is a technical and legal document whose wording can determine the value and enforceability of resulting rights. A poorly drafted application may provide little meaningful protection.