Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
on a chair, without arms, and I decide to improve your chair by adding arms to the chair. You have your patent on your chair; I now have a patent on the chair plus the arms. However, every time I manufacture a chair with arms under my patent, I am infringing your patent on the chair per se. Another example of a patent not assuring the inventor that the invention can be introduced is a new drug that is patented, since the U.S. Food and Drug Administration requires approval before any drug is marketed to the public.
A patent is not self‐enforcing. The government issues the patent, but will not take any positive action on behalf of the patent owner to enforce the inventor’s rights established by the patent. The government simply grants the owner of the patent the right to exclude others from practicing the invention, and leaves it to the patent owner to enforce the patent in the courts. The Constitution of the United States provides the Federal Judicial System, through which patent enforcement can be obtained.
Since a patent simply grants the intangible right to exclude, its value rests entirely upon the utility and importance of the invention, and the desire of others to use it or to be in possession of the right to exclude. For example, someone may desire to buy the patent from its owner. The patent is simply a document, and not an invention. The invention is that which is described and claimed in the patent.
A patent, and the information that it discloses, cannot be kept secret. An essential aspect of obtaining a patent is that a full and complete disclosure of the invention needs to be made, so that others may practice the invention upon expiration of the patent without having to go through undue experimentation. U.S. patent applications are published 18 months after filing, unless no foreign corresponding patent applications will be filed. Patent applications, if published, are held secret in the USPTO until the date of publication, and, if not published, until the patent is issued after the examination process. However, issued patents and published patent applications are freely available to the public, with certain limited exceptions where national security is involved. The patent grant does give the right to the inventor to not commercialize the invention, or to refuse to allow others to commercialize the invention by a refusal to grant licenses. However, the patent itself issues as a public document available to all. Thus, inventions themselves may be suppressed by keeping the technology out of the public eye, but patents can neither be kept secret nor suppressed.
A U.S. patent is limited in enforcement to the 50 states of the United States and its territories and possessions. A U.S. patent cannot be enforced in Canada, Japan, Europe, or any other foreign country. However, a U.S. patent may be used to stop the importation of products that infringe the patent from abroad into the United States. Also, if a U.S.‐patented method is used to manufacture a product overseas, the product made by that method may be stopped from entering the United States by enforcement of the U.S. method patent against the importer of the product, even though the infringing method was not used in the United States.
The United States has ratified several treaties that provide significant advantages for those seeking foreign patent protection, based on a patent application initially filed in the United States. Remember, at present, there is no such thing as an international patent; patents must be obtained in each of the countries or regions in which patent protection is sought. At present, there is a single European patent.
3.6 INVENTIONS RELATING TO ATOMIC WEAPONS
As part of the Atomic Energy Act of 1954, the U.S. Congress enacted a separate law covering inventions that have utility solely relating to nuclear material or atomic weapons. This statue appears at 42 U.S.C. §2181, and is entitled “Inventions Relating to Atomic Weapons.” Section 2181(a) states: “No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. Any patent granted for any such invention or discovery is revoked, and just compensation shall be made therefore.” Section (b) of the statute states that: “No patent hereafter granted shall confer any rights with respect to any invention or discovery to the extent that such invention or discovery is used in the utilization of special nuclear material or atomic energy in atomic weapons. Any rights conferred by any patent heretofore granted for any invention or discovery are revoked to the extent that such invention or discovery is so used, and just compensation shall be made therefore.”
The statute also provides a definition of an “atomic weapon.” Note that if an invention can be used in an atomic weapon, but it also has non‐weapon utility, a patent may issue. However, the patent may be held up in the secrecy division of the USPTO, preventing the inventor from commercializing the invention.
3.7 THE U.S. GOVERNMENT’S RIGHT TO PRACTICE YOUR PATENTED INVENTION
During World War I, the U.S. government mobilized the nation’s industries to provide munitions and other materials to support the war effort. This program ran into several barriers when patent owners filed patent infringement lawsuits against government contractors, and obtained injunctions stopping the production of needed weaponry, among other military necessities. To correct this situation, the Congress, circa 1918, passed a law that is now codified at 28 U.S.C. §1498. This law provides that, whenever a manufacturer is using or manufacturing an invention described in a U.S. patent for the government and with the authorization and consent of the government, the patent owner cannot bring a patent infringement suit against the infringing user or manufacturer. The patent owner’s only remedy is to file a patent infringement action against the government in the Court of Federal Claims, and the patent owner can only recover “reasonable and entire compensation for such use and manufacture” (28 U.S.C. §1498(a)). The patent owner cannot obtain an injunction stopping the use or production of the patented invention when the government is the ultimate customer.
Under this law, which is still in effect today, the government, by authorizing and consenting to have a patented process used, or a product manufactured, on its behalf, is effectively taking a license under the patent under the powers of eminent domain, whether or not the patent owner wants to grant the government a license. This procedure is akin to the government’s ability to condemn and take private property to construct a highway, for example. When such “taking” occurs, the one whose property, or patent right, has been taken is entitled to be reasonably and entirely compensated, with money, for such taking.
If you discover that the U.S. government has awarded a contract to a competitor who underbid you, and you hold a patent on the subject of the contract, you cannot sue your competitor for patent infringement. You must file your lawsuit against the government in the Court of Federal Claims, and the government lawyers of the U.S. Department of Justice will respond to your lawsuit, usually raising defenses of non‐infringement, patent invalidity, unenforceability of the patent, plus any other of the many defenses to patent infringement that are available. If your competitor, who is the selected government contractor, has agreed in the contract to indemnify or hold the government harmless from patent infringement, the Justice Department attorneys may be accompanied by your competitor’s attorneys in defending against your lawsuit. At the end of the lawsuit, if you prevail, you are awarded your “reasonable and entire compensation” as determined by the Court, which usually is based on a reasonable royalty payment for the infringing sales. However, you will not be awarded an injunction stopping the government from obtaining infringing products from your competitor.
If you discover that the U.S. government has awarded your competitor a contract for the use or manufacture of an invention on which you hold a U.S. patent, my advice is that you contact your patent professional to make a determination regarding the viability of asserting your patent against the government. Remember that, since the U.S. government can obtain a license under any U.S. patent, the contract award can be made to the lowest bidder, regardless of who owns the patent on the subject invention.
Additionally, the same or similar provisions apply to the U.S. government taking a copyrighted work (28 U.S.C. §1498(b)), a patented plant variety (28 U.S.C. §1498(d)), or a mask work or vessel hull design (28 U.S.C. §1498(e)).