Bench & Bar May/June 2025

FEATURE: INTELLECTUAL PROPERTY

BASICS OF PATENT PROSECUTION BY CHRIS EMERSON

WHAT IS A PATENT? In plain English, a patent may be con sidered a temporary legal monopoly. 1 A patent may be granted for an invention, which is typically defined as a product or a process offering a new technical solution to a problem. 2 United States (US) patent laws are generally similar to those of for eign jurisdictions. However, there are many caveats and distinctions in US patent law relative to even the most similar of foreign jurisdictions. 3 This article will focus exclusively on United States’ (US) patent law, as those rules and regulations are likely to be most pertinent to Kentucky residents and practitioners. This article will also focus on “patent prosecu tion,” which is the process of filing a patent application and trying to get it issued into a patent by working with the United States Patent and Trademark Office (USPTO). This is in contrast to “patent litigation,” which typically occurs after a patent has been issued and when there is an alleged infringer ( e.g. , someone allegedly illegally encroaching on the coverage of a patent). Patent prosecution is an exclusively fed eral law practice and relies on many facets of federal administrative laws due to the abundance of interaction with the USPTO, a federal agency. Patents grant negative rights, that is, the rights to exclude others from doing

are primarily prosecuted, granted, and stored electronically, though the USPTO still offers certified printed copies. 5 The market value of a patent transcends the physical or electronic medium that it is exhibited on. Rather, the market value of a patent is derived from the exclusionary rights it bestows. 6 By holding those exclu sionary rights, a patent owner may regulate competition in a given market, monopo lize a product and/or service for exclusive production and/or sale themselves, and/or license a patent right to another in exchange for consideration. Patent rights may be exchanged for an inexhaustible list of pos sible assets such as money, royalties from sales from products utilizing the patent right, and even equity in a company formed to market the products derived from the patent’s coverage. BASIC REQUIREMENTS FOR A PATENT A patent may be granted for the creation of something novel, 7 non-obvious, 8 useful, 9 enabled, 10 and patent eligible. 11 Patents protect the work product of humans and not the work generated solely by a com puter. For example, something designed solely by artificial intelligence (AI) would not be an eligible creation to be protected by the patent process. 12 “Novel” is generally appreciated to be dif ferent over what is known to the public as

something, such as manufacturing, sell ing, using, etc., an invention in the United States. Patents do not grant positive rights to make, sell, use, etc., an invention in the United States. 4 Put another way, an applicant could be granted a patent on an invention, but may not be able to manufac ture, sell, and/or use the invention without prior authorization from other regulatory authorities, for example the Nuclear Reg ulatory Commission for the invention of an innovation to a nuclear reactor. This is possible because prototypes of inventions are not necessary to obtain a patent. For instance, someone could design a unique firearm on paper and get a patent for it prior to getting permits and licenses to actually manufacture, sell, and/or use the patented firearm. So, to reiterate, such a patent would only grant the patent owner rights to exclude others from making, sell ing, etc., the patented firearm. The patent itself would in no way alleviate the need for the patent owner to get any and all licenses and permits necessary to legally manufac ture, sell, use, etc., a patented invention. Consequently, many patents are issued for inventions that never materialize beyond the patent prosecution stage, as navigating regulatory and/or marketing challenges may render full-scale manufacturing of an innovation to be cost-prohibitive even with an issued patent. Historically, patents were printed on a tan gible medium, paper. Nowadays patents

16 may/june 2025