Second in a series of articles aimed at scientists, engineers, business managers, non-patent lawyers, and other professionals that desire or need to understand basic principles of patent law and practice.

New inventors, and sometimes seasoned ones, are often surprised (or horrified) to learn that getting a patent does not give them the ability to practice their own invention.  After all, they’ve probably waited two or three years, endured two or more rejections from the Patent Office, and at last have their prize: a granted patent.  “What do you mean we can’t practice it?”  This is probably the most common of all misconceptions about patents.

It’s true, however.  A patent affords no affirmative right to practice.  A U.S. patent gives its owner a “right to exclude.”  In exchange for making a thorough disclosure of the invention in the patent application, the inventor receives a right keep others from practicing the claimed invention for a limited time, nominally 20 years from the earliest application filing date.  This is analogous to owning a piece of land and being able to tell others to “keep off” your property.  When the patent expires, or when the owner chooses to let it lapse by not paying maintenance fees, the claimed subject matter enters the public domain, and the public benefits from the disclosure.  The useful arts are promoted by the disclosure, while there would have been little or no public benefit if the inventor chose to keep the invention a secret.

Your right to practice something, including your own invention, may well be limited by unexpired patents owed by others.  An earlier “basic” patent may dominate a later improvement, thus preventing the owner of the improvement patent from practicing without a license from the owner of the basic patent.  For instance, suppose in 2010, Fred Flintstone invents, for the first time ever, the stone-age wheel.  His granted patent claim reads: “1.  A wheel.”  Fred is entitled to a patent because the wheel meets patentability requirements (new, useful, and nonobvious to a person of ordinary skill in the art).  In 2012, Barney Rubble ups the ante by inventing and claiming: “1.  A ten-speed bicycle wheel with titanium rims and rubber tires.”  Barney’s wheel is a huge improvement over Fred’s rocky version, so Barney is also entitled to a patent.  However, Fred’s basic patent dominates Barney’s improvement and prevents Barney from making any wheels, including ten-speed bicycle wheels, without Fred’s permission.  Fred can manufacture a stony wheel, but he may not make ten-speed bicycle wheels without Barney’s permission.  In the real world, such headaches are resolved when Fred and Barney execute a cross-license agreement, and some money changes hands to balance out the value.  Fred and Barney will then go forth merrily and manufacture the ten-speed bicycle wheels that everyone (even Fred’s boss, Mr. Slate) wants to buy.

The take-home lesson?  A patent affords a right to exclude others, not an affirmative right to practice what you’ve patented.  When it comes to patent law, your rights end where another’s nose begins.

Stay tuned for Part III of our Basic Patent Law series!


– Jon Schuchardt
Check out Jon’s bio page


This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws.  The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.