When Do Patent Rights Begin?

By Charles Thoeming:

Clients often ask about patent property rights in and to an invention, and when those patent property rights mature or vest into actionable remedies under United States patent laws. Some believe that their patent rights accrue when the invention is conceived. Others think that their patent rights come into being when the invention is built, tested, or demonstrated to be workable. A third opinion is that patent rights are attained when a patent application has been prepared and filed. None of these scenarios is accurate as far as exclusion to third parties under patent law. The right to exclude others from making, selling, offering to sell, using, or importing, however, becomes an actionable remedy only when a patent issues. Upon issuance of U.S. Letters Patent, the United States has legislated (35 U.S.C. §281 et. seq.) the patent property rights for the patent owner to enforce such remedies exists, and at no time before.

Aside from patent rights, however, trade secret rights certainly may exist in and to the conception, reduction to practice and details of the unpublished application for patent, so long as the inventor(s)/owner(s) have preserved these detailed matters as trade secrets. If properly maintained, those trade secret rights can include the right to exclude others, as well. These trade secret remedies are separate from patent remedies, and it is important to fully understand the distinctions as well as the similarities between these two separate areas of intellectual property law. Pre-patent filing or pre-patent issue agreements with third-parties can protect trade secret rights if those agreements are properly drafted to include confidential disclosure language and to specifically address the respective trade secrets disclosing the invention.

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