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NON-U.S. PATENTS 21Reasons for Obtaining a Patent
There are many reasons a party may wish to obtain patent
protection, and the brief discussion presented here is not
intended to be all-inclusive. One reason for obtaining a
patent is to protect one’s intellectual property. Thus, the
holder of the patent may be able to prevent competition by
preventing others from taking advantage of the invention.
Others may decide not to compete at all in the particular
area, or may decide to spend significant amounts of time
and money developing processes or products that do not
infringe. Alternatively, if both sides are willing, the patent
holder may license part or all of the patent to another
party for a fixed fee, a royalty, or some combination of
the two. A license is basically an agreement between a
licensor (patent holder) and licensee that the licensor will
not sue the licensee for what would otherwise constitute
infringement of some or all of the patent claims.
Another reason for obtaining a patent is more defen-
sive. For example, Company B may be reluctant to sue
Company A for infringement of Company B’s patent, if
Company B thinks that Company A may countersue for
infringement of Company A’s patents. Often, such a situa-
tion may result in cross-licensing between the two parties,
in which each agrees not to sue the other for infringement
of all or part of each other’s patents.
Yet another reason for obtaining a patent, especially for
start-up companies, is for attracting investment. Investors
like to know that there is some value in whatever they are
investing in, and the existence of one or more patents (or
even pending patent applications) may be an indication
of a company’s viability.Types of Patents
In the United States, there are several types of patents:
utility patents, plant patents, and design patents. Utility
patents are the patents that most people typically think
of when they think of patents. Utility patents may be
obtained for “any new andusefulprocess, machine, man-
ufacture, or composition of matter, or any new and use-
ful improvement thereof” (35 U.S.C. §101). The Plant
Patent Act of 1930, now codified as 35 U.S.C. §161,
allows “plant patents” for plants that are asexually repro-
duced. Tubers, such as potatoes, are excluded (i.e., they
are not patentable). To be patentable, a plant must have
been found in an uncultivated state (e.g.,notin a garden).
A plant patent includes the right to exclude others from
asexually reproducing the plant; using, offering for sale,
or selling the plant (or parts of the plant) in the United
States; or importing the plant into the United States if it
was asexually reproduced (see 35 U.S.C.§§161–164).
Despite the availability of plant patents, utility patents
may also be obtained for both sexually and asexually re-
produced plants (seeJ.E.M. AG Supply Inc, dba Farm
Advantage, Inc., et al. v. Pioneer Hi-Bred International,
Inc., 2001; slip op at http://www.supremecourtus.gov/opinions/
01pdf/99–1996.pdf ). The requirements for obtaining a
plant patent are more relaxed than the requirements for
obtaining a utility patent, however.
Design patents may be obtained for new, original, and
ornamental designs for manufactured articles. A design
patent protects the way an article looks, as depicted inthe drawings. Design patents have a term of 14 years
from the issue date. Design patents may be obtained
for computer-generated icons, including full-screen dis-
plays and individual icons. The USPTO’s Manual of Patent
Examining Procedure (MPEP), section 1504.01(a) pro-
vides “Guidelines for Examination of Design Patent Ap-
plications for Computer-generated Icons.” (See U.S. De-
sign Patent D453,769 for an example of a design patent
for a computer-generated icon.) According to the MPEP
(section 1504.01(a).1.A), to satisfy the manufactured ar-
ticle requirement, such an icon must be claimed as “a
computer-generated icon shown on a computer screen,
monitor, other display panel, or a portion thereof” or with
similar language. The icon must also be fundamentally
ornamental rather than functional. Fonts may also be
patented with design patents. (For an example, see U.S.
Design Patent D454,582.)Provisional Applications
A provisional application is a patent application and must
have a written description and drawings sufficient to teach
the invention to one skilled in the art. A provisional appli-
cation is never examined, however, and no claims are re-
quired. It is relatively inexpensive to file and provides a pri-
ority date for any application filed within a year claiming
the benefit of the provisional application, as to the matter
disclosed in the provisional application. Note, however,
that a provisional application is automatically abandoned
1 year from its filing date. Provisional applications do not
issue. A nonprovisional application must be filed within
a year to receive the benefit of the filing date. Although
a provisional application establishes a priority date, the
20-year term of an issued patent claiming the benefit of
the provisional application begins on the filing date of the
first nonprovisional application in the priority chain.NON-U.S. PATENTS
General Information
Patents are, of course, available in other countries as well
as in the United States. For example, one may apply for
and obtain a patent in almost any country in the world.
One may file a first application almost anywhere in the
world, follow up with applications in other countries
within 1 year of filing the first application, and obtain
the first application’s filing date as a priority date. Be-
sides filing in individual countries, there are several re-
gional areas in which applications can be made. These
include the European Patent Convention (EPC; http://
http://www.epo.org); the African Intellectual Property Organi-
zation (OAPI; http://www.oapi.wipo.net), the members of
which are French-speaking African countries; the African
Regional Industrial Property Organization (ARIPO; http://
http://www.aripo.wipo.net), the members of which are English-
speaking African countries; and the Eurasian Patent
Organization (EAPO), the members of which include for-
mer republics of the Union of Soviet Socialist Republics
(http://www.eapo.org).
For protection in European countries that are EPC
members, an application is filed at the European Patent
Office (EPO) in Munich, Germany, designating some or