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A Patent Is Not A Guarantee That The Patented Invention Does Not Infringe Other Patents

The issues of patentability and infringement are entirely separate. A patent granted by the U.S. Patent Office confers upon the owner the exclusive right to exclude others from “making, using, and selling” the patented invention. The issuance of the patent does not confer upon the owner the right to make, use, and sell the patented invention. One reason for this distinction is that the patented invention may be an improvement over a prior, valid patented invention. In that case, making, using, and selling the improvement is subject to the prior patent. For example, assume that a first inventor develops a fixed blade knife (e.g., a knife having a handle and a blade). The first inventor applies for and obtains a patent. Later, during the term of the patent, a second inventor develops a pocketknife that is identical in every way to the fixed blade knife — with the exception that the blade rotates and folds into the handle. On these facts, it is possible that the first inventor’s patent may be broad enough to cover the second inventor’s pocketknife. This is true regardless of whether the second inventor applies for and/or receives a patent from the U.S. Patent Office. The question of whether a license is required is based on the claim language of the first inventor’s patent — not the patent status of the second inventor’s invention.

Time Required To Obtain Patent Protection

On average, it takes between one to four years from the filing date of a patent application to obtain an issued patent. Some patent applications remain pending for decades. However, the U.S. Patent Office has set a three (3) year period as its maximum target for reviewing a patent application (not counting continuation applications or other specified events). If the time period exceeds three years, then the patent term extension discussed above would be applicable. The applicant can also control to some extent the speed with which the application is processed by filing a very complete application and responding quickly to the Examiner’s Office Actions. The number of Office Actions issued will usually be limited to two, because the Examiner will denote the second Office Action as a final action. The applicant will then be required to either (i) prepare the application for issuance of any allowed subject matter, (ii) appeal the case to the Patent and Trademark Board of Appeals, or (iii) file a continuing application starting the examination and response process over again. At any time beginning with the first Office Action, the Examiner may find allowable subject matter and allow the application. The applicant may abandon the application at any time, even after allowance.

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