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George B. Stefano, J. Patrick Finn III
Med Sci Monit 2005; 11(12): ED9-10
The following discussion provides some general points regarding patent rights and the requirements for obtaining a patent. A patent provides its owner with certain rights to the invention that is recited in the “claims” of the patent. In the United States, those rights include the right to exclude others from making, using, importing, offering for sale, and selling the claimed invention. A patent does not provide its owner with the right to do these activities but rather provides its owner with the right to exclude others from doing them. Owning a patent on an invention does not ensure that you do not infringe some other patent. For example, it is possible for a fi rst inventor to patent compound X, and a second inventor to later patent the use of compound X to treat a particular disease. In this case, the second inventor’s use of compound X would be infringing the fi rst inventor’s patent to compound X. In the United States, the United States Patent and Trademark Offi ce issues patents, which can be in force for up to 20 years from the patent’s earliest claimed priority date. This means that a patent that claims priority to an earlier fi led patent application will expire 20 years from the fi ling date of that earlier patent application. You may also fi le a “provisional” patent application and follow it with a “real” utility application within a year, without starting the 20-year clock until the later fi ling. Other countries calculate patent term in a similar manner. In some cases, a patent may expire before the 20 years. For example, a patent owner may have been required to disclaim a terminal portion of a patent’s term to overcome an examiner’s rejection raised during examination. A review of the issued patent and its fi le history typically reveals
the presence of any fi led terminal disclaimers of patent term. In addition, failure to pay post-issuance
maintenance or annuity fees can lead to a patent expiring prior to the date 20 years from the
earliest claimed priority date.