After a U.S patent application is filed, whether it is a provisional patent application or a nonprovisional patent application, the patent attorney is often confronted with the proverbial question: “Am I protected?” This simple question produces an enormous amount of apprehension.
How do we explain to the client, after the client has spent considerable money and time in filing the application, that any protection upon the application being filed is limited at best? On top of that, how do we explain to the client that there is minimal protection while easing the client’s concerns about a number of issues, most of which the client is not aware of (but all of which we are aware of and need to explain in order to fully answer the question)?
‘Am I Protected?’ and Its Double Facet
The question “Am I protected?” generally has two facets. One relates to the issue of the client infringing someone else’s patent rights, while the other relates to the issue of the client’s ability to stop others from infringing the client’s purported patent rights. In both cases, the answer is a negative one.
There is a prevalent notion amongst the non-patent community that one consequence of a client filing a patent application (or having a patent granted) is that the client cannot then be a patent infringer. The emphatic answer is a big NO. This has been a difficult concept for the non-patent community to understand.
The Three-legged Chair
One explanation of this concept that has worked on occasion is by way of example. Let’s say there is an existing patent for a three-legged chair (i.e., a chair having a seat and three legs). The client invents a chair having a seat and four legs, and obtains a patent for that new seating configuration. Does a four-legged chair infringe the three-legged chair patent? Of course, it does, since a four-legged chair has to necessarily include three legs and a seat. The fact that the client has received a patent for a four-legged chair gives the patent owner the right to stop others from making four-legged chairs. However, the patent owner’s right to make four-legged chairs is always conditioned on prior broader patent rights which, in this case, is the three-legged chair patent.
But wait, the client asks: “Isn’t there a ‘conflict’ between the two patents? Doesn’t the four-legged chair patent infringe the three-legged chair patent?” Nope. There is no such thing as a “conflict” between two patents. 35 U.S.C. 271 states: “[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” Nowhere in this federal statute does it say whoever obtains “a conflicting patent.” Infringement is a physical act. A “conflicting patent” is apparitional at best. Unicorns are more likely to exist! Patents do not infringe other patents.
Stopping Others from Copying
Upon filing a patent application, others can still copy the client’s invention without retribution. The client has no right to stop an alleged infringer at this point in the process. Since the U.S. patent system gives rights to the person who first filed a patent application, the client’s filing serves to establish a priority date for the client’s rights to the invention. This is not a trivial matter because if someone else beats the client to the patent office, the client would be in danger of not being able to produce items embodying the client’s invention.
The client’s right to stop others from copying the invention materializes upon the date that a patent is granted. Unfortunately, that may take a few years from the application’s filing date.
So, if you are confronted with the traditionally vexing question of “Am I protected?” by a patent applicant, please feel free to pass this column along.