We assist inventors and entrepreneurs in Maryland with the contractual and enforcement side of patents, drafting licensing and assignment-of-rights agreements and protecting patent rights against infringement. We also represent people accused of infringement or patent misuse.
A note on scope before you read further. Our attorneys do not handle patent prosecution, meaning the application process before the USPTO. We focus on patent litigation, licensing, assignment of rights and defense. If you need an application filed, we can refer you to a qualified prosecution attorney.
What a patent actually gives you
This is the most commonly misunderstood point about patents, and the USPTO is explicit about it. A patent does not grant you the right to make, use, offer for sale, sell or import your invention. It grants you the right to exclude everyone else from doing those things.
The consequence matters. The USPTO does not police infringement. It issues patents and stops there. Watching for copying, and doing something about it, falls to the patent owner. That is the work we do.
The three kinds of patent
Utility patents cover new and useful processes, machines, articles of manufacture and compositions of matter, and they are by far the most common. Design patents cover a new, original and ornamental design of an article. Plant patents cover a distinct and new variety of asexually reproduced plant.
Requirements for patentability
An invention has to clear five hurdles. It must be patentable subject matter, and it must satisfy utility, novelty, non-obviousness and enablement. Failing any one of them is fatal to the application, and non-obviousness is where most applications run into difficulty.
Provisional and non-provisional applications
A provisional application, filed under 35 U.S.C. § 111(b), is a faster and less expensive way to establish an early filing date. It is not itself a patent and it expires. A non-provisional application has to follow within 12 months, or the benefit of that earlier date is lost.
A non-provisional application under 35 U.S.C. § 111(a) is the real thing. It requires the application form, fees, a specification, and an inventor’s oath or declaration.
Term and maintenance fees
A utility patent runs for 20 years from its earliest filing date, not from the date it is granted. Keeping it alive requires USPTO maintenance fees, due at 3.5, 7.5 and 11.5 years after issuance. Miss one and the patent can lapse, which is an avoidable way to lose an asset you spent years obtaining. The USPTO’s maintenance fee page sets out the current schedule, and the patent basics pages cover the application process end to end.
Where we come in
A patent is only worth what you can do with it. Most of our patent work is contractual, licensing the invention to someone who will commercialize it or assigning rights outright, and the terms that matter are the ones people skip. Scope, exclusivity, territory, royalties, sublicensing, what happens on breach, and who controls enforcement.
Those questions are far cheaper to settle before disclosure than after. If you are approaching a manufacturer, a partner or an investor, talk to us first. Call (410) 752-9300 or use the contact form on this page.