August 22, 2019

Intro to Intellectual Property Law Part II: What is Patent Law?


There are three primary and distinct types of intellectual property implicated in eCommerce—trademark, patent, and copyright—each with its own set of laws to protect different types of subject matter and indicia of source for goods and services. This three-part series gives a general overview of each. Importantly, this series is designed to be only a basic introduction to three complex areas of law and how the laws are applied in matters of eCommerce. This post addresses patent law. Click here to see our first post on trademark law.

According to the U.S. Patent and Trademark Office (USPTO), a patent “is the grant of a property right to the inventor.” It confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. and to exclude others from importing the invention into the U.S. As with trademarks, there are different types of patents, including utility, design and plant patents. Patents must be federally registered to be protected; there are no common-law patent rights.

An inventor seeking federal patent protection must file an application with the USPTO that describes how to make and use the invention and includes at least one claim defining the invention for which protection is sought. As of 2013, under what is called the first-to-file rule, the first inventor to file a patent application (that is later granted by the USPTO) has the right to the invention, regardless of whether it was the first to create the invention.

Patent-eligible subject matter generally includes the invention of a process, machine, manufacture, or composition of matter, and any new and useful improvement thereof. Notably, the inventive subject matter must be “new,” meaning not publicly known before the filing date of the application, with some exceptions for activities of the inventor that occur within 12 months prior to the application filing date. The inventive subject matter must also be “useful,” meaning that it has a useful purpose and is operative. Additionally, under 35 U.S.C. § 103, the invention must also be “nonobvious,” meaning that a patent may not be obtained “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art . . . .” Laws of nature, physical phenomena, abstract ideas, and suggestions are not eligible for patent protection.

Brands with patents for their products can file patent infringement claims against sellers who are selling counterfeit, knockoff, or copycat products. For instance, a brand with both registered trademarks and patents could potentially sue a seller of counterfeit products for both trademark infringement or counterfeiting (for selling the counterfeit products bearing the brand’s actual trademark) and patent infringement (for selling knockoffs of the brand’s product.

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