Patent law is complex, nuanced, and difficult to apply with precision. Add that to the underlying technology that is at the center of most patent law issues and many non-patent attorneys may feel wholly inadequate when they identify any potential patent issue. Although it is always best to collaborate with specialist patent counsel in those situations, business lawyers can provide significant value to their technology-centric clients and help patent counsel by understanding certain important aspects of patent law.

For example, one important area where the non-patent attorney can help their client is ensuring that the client owns the patent rights to important inventions created on the client's behalf. In some situations, without the proper agreements in place, a company may not even own or control its own inventions. Specifically, without an express agreement to the contrary:

Although company executives may wish to patent almost anything that the company's employees invent and the company seeks to commercialize, the effective business attorney should know that the following are not patent-eligible subject matter:

Patent subject matter eligibility is a complex area of the law and has been the subject of three major US Supreme Court cases in the past few years. For more information on these cases, see:

Identifying the line between patent-eligible and non-patent-eligible subject matter is extremely difficult and an issue for robust discussion with patent counsel. For more information, see Practice Note, Patent-Eligible Subject Matter.

In addition, the US Patent and Trademark Office (USPTO) will only issue patents on inventions that are novel and nonobvious (35 U.S.C. §§ 101 and 103). These requirements are determined in reference to the prior art, which, for the business lawyer, can generally be considered as being any public information concerning the invention that was available before the filing date of the patent application covering the invention. For more information on novelty and nonobviousness, see Prior Art: Determining the Status of a Reference Flowcharts and Practice Notes, Prior Art: Determining the Status of a Reference, Patent Litigation: Anticipation Defense, and Patent Litigation: Obviousness Defense.

Patents are obtained by filing a patent application with the USPTO. The patent application, and any resulting patent, must include a specification that:

(35 U.S.C. § 112.)

For more information, see Practice Note, Patent Litigation: Specification Requirements.

The process of obtaining a patent is called patent prosecution. During patent prosecution, the USPTO examines the application to determine whether the invention meets the criteria for a patent, rejecting applications that do not meet the patentability criteria and allowing those that do. While patent prosecution commonly lasts for more than two years until final resolution, it can take longer. For more information on patent prosecution, see US Patent Application Prosecution Flowcharts.

In addition to the initial patent application process, the USPTO has a number of procedures that allow:

For more information on these proceedings, see Post-Prosecution Patentability Proceedings Checklist and Practice Note, USPTO Post-Prosecution Patentability Proceedings.

Once issued, patents are subject to maintenance fees that must be paid to the USPTO at three specified times over the term of the patent to remain in force. If these fees are not timely made, the patentee has the opportunity to make late payment under certain circumstances (35 U.S.C. § 41(b)).

Marking a patented product with the patent number is not required to maintain patent protection. However, if articles made or sold under a US patent are not marked with the patent number covering the product, damages are not awarded in an infringement action for any period of time before the infringer has actual notice of the infringement. This marking requirement may be satisfied by providing the patent number and product information on a publicly accessible website (35 U.S.C. §287) For more information, see Practice Note, Leahy-Smith America Invents Act: Overview: Virtual Patent Marking.

A patent owner may be able to extract a patent's value through various mechanisms rather than relying solely on actively enforcing the patent against infringers through time consuming, disruptive, and expensive patent litigation. Instead, a patent holder may be able to monetize its patents in various other ways, such as by:

For more information on patent monetization, see Article, Patent Monetization and Valuation and Practice Note, Patent Licensing: Negotiating a Reasonable Royalty.

See all of Practical Law's patent resources, which may help the non-specialist business lawyer get up to speed on and stay abreast of this constantly changing and arcane area of the law to more effectively counsel their technology-centric clients.