Ch10. Patent Law Basics — Comprehensive Final Review

Industrial Property Rights — Full Comparison

Category   Utility Patent  Utility Model   Trademark       Design Patent
Subject    Inventions      Articles only   Mark/Symbol     Ornamental
Start Date Filing date     Filing date     Registration    Grant date
Term       20 years        10 years        10 yrs + renew  15 years
Exam Type  Substantive     Formal only     Substantive     Substantive
Renewal    No              No              Unlimited       No

Critical Memory Points:
Utility Patent & Utility Model: term counted from FILING date
Trademark & Design Patent: term counted from REGISTRATION / GRANT date
Only trademarks offer unlimited renewal → potentially perpetual protection

Patent Requirements and Procedure — Core Review

Three Requirements for Patentability:
Novelty (35 USC § 102) + Non-Obviousness (35 USC § 103) + Utility (35 USC § 101)
(The "NNU" triplet)

Critical Time Periods:
AIA Grace Period: within 12 months of filing (must invoke, not automatic)
Application Publication: 18 months from earliest effective filing date
No separate examination request in US (automatic for non-provisionals)
Office Action response: 3 months (extendable to 6 with fee)

License Types:
Exclusive License: property-like; exclusive right; writing required
Non-Exclusive License: contractual; multiple licensees allowed; writing not required
Statutory License (Govt. use, § 1498): arises by operation of law
Implied License: arises from authorized first sale (patent exhaustion)

Infringement, Trials & Litigation — Core Review

Infringement Types:
Literal Infringement → Doctrine of Equivalents → Indirect Infringement

IPR / Post-Grant Review (PTAB):
Anyone may petition (within 1 year of infringement complaint for IPR)
Confirmed invalidity: void ab initio (retroactive)

Federal Circuit (CAFC):
Exclusive appellate jurisdiction over all patent matters from district courts and PTAB

Damages:
Reasonable royalty (floor) — Georgia-Pacific factors
Lost profits (Panduit four-factor test)

Criminal:
Counterfeiting only (18 USC § 2320); patent infringement itself is not a crime

International Filing — Core Review

Paris Convention Priority:
Patents/Utility Models: 12 months from first filing
Trademarks/Designs: 6 months from first filing

PCT:
One filing → priority date in all PCT member states
National phase entry deadline: 30 months from priority date

Design Patent Term: 15 years from grant date
Trademark non-use abandonment: 3 consecutive years
Utility model: no substantive examination (formal only)
US provisional: 12-month pendency; must convert to non-provisional

Key Concept Cards

Four IP Categories = Patent(20) · Utility Model(10) · Trademark(10+∞) · Design(15) ★★★★★ : Know all four terms and their start dates cold. Memory hook: P20F · UM10F · TM10R+∞ · D15G (F=filing, R=registration, G=grant)

Patentability = Novel + Non-Obvious + Useful ★★★★★ : §§ 101, 102, 103 — the three pillars. NNU. Memory hook: NNU

International = Paris12 · PCT30 ★★★★★ : Paris Convention 12 months; PCT national phase 30 months. Memory hook: Paris=12, PCT=30

Practice Questions

Q. What are the three most frequently tested topics in patent law basics?

(1) Term start-date distinctions: utility patent/utility model = from filing date; trademark/design patent = from registration/grant date. (2) License distinctions: exclusive license = writing required, patent owner may be excluded, property-like; non-exclusive = contractual, multiple licensees, no recording required. (3) Invalidity effect: IPR/PTAB cancellation is void ab initio (the patent never existed). Also highly tested: Paris Convention 12 months vs. PCT 30 months; AIA grace period (12 months, must be invoked); and non-obviousness as the most-litigated patentability issue.

Q. How do utility patents, utility models, design patents, and trademarks work together in an IP portfolio?

Core technology: utility patent (20 years; covers methods, compositions, and devices). Peripheral improvements: utility model filing (fast rights, 10 years; articles only). Ornamental appearance: design patent (15 years; protects the look of the product). Brand identity: trademark (10 years renewable indefinitely). Same product: can simultaneously hold a utility patent, design patent, and trademark — creating overlapping, reinforcing layers of protection. The goal is to build competitive moats: make it difficult and expensive for a competitor to design a product that competes on function, appearance, AND brand without triggering at least one of the four rights.