North Carolina Patent Law

A patent for an invention is the grant of a property right to the inventor in a particular country by a designated office of that country. In the U.S. patents are issued by the United States Patent and Trademark Office, and the term of a new patent is generally 20 years from the date on which the application for the patent was filed. For a patent to remain enforceable for the entire term, periodic maintenance fees must be paid. In some cases the term of a patent is not measured from its filing date, but is instead measured from the filing date of an earlier, related application. The earlier application could have been filed in the same country or a different country.

While specific rights conferred by patents vary from country to country, in the U.S. and in many other countries patents give one the right to prevent others from making, using, or selling the claimed subject matter. Patents do not give the inventor or the patent owner the right to make, use, or sell the claimed subject matter. In this regard, it is possible that another patent could be used to prevent a patent owner from practicing their invention.

There are three types of patents available in the U.S.:

1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

The process of obtaining a patent is generally similar for all three types patents. First an application is prepared, then the application is filed with the appropriate office, the office examines the application and compares it to prior art references (these are generally previously published patent documents), and the office ultimately decides how much, if any, patent protection is granted to the applicant.  

For example, to obtain a utility patent, an application is prepared by the inventor or the inventor’s patent agent or patent attorney. The application must include a written description and drawings that together describe the invention. The application must also include claims. The claims are specialized sentences that identify the extent, or scope, of patent protection that the inventor (in many countries: “the applicant”) feels they are entitled to.

After the utility patent application is filed with the USPTO, it is assigned to an examiner who reviews the application and then searches for references (generally issued patents and patent publications, but many other things can be references too) that disclose, i.e. describe, the claimed invention. If such references are found for some or all of the claims, then the Examiner issues a letter called an Office Action to inform the patent applicant that those claims are rejected and are not allowable. The patent applicant then has the opportunity to write the Examiner a letter called a Response in which the applicant either argues that the references cited by the Examiner do not apply to the claims or amends the claims such that the cited references do not apply.

The back and forth exchange described above is the heart of patent prosecution process. In essence, the patent prosecution process is a negotiation between the patent office and the patent applicant as to how much patent protection should be granted to the applicant’s invention. In other words, the patent prosecution process is a negotiation about the scope of the inventor’s ideas, or intellectual property.

It is generally a patent attorney’s role to prepare and file the application, receive the Office Actions and report them to the applicant, prepare and file responses to the Office Actions in accordance with the client’s instructions, and advise the applicant throughout the process as necessary.