The grant of a patent is subject to very specific requirements of law. The applicant must be the first to invent. Even if first to invent, the inventor cannot sit on his rights. A patent application must be filed within one year of the date the discovery is first published or embodiments of the invention are placed on public display or go "on sale." The "on sale" date is the earliest date the invention is first subject to an enforceable contract for sale, lease or other disposition (offered for sale) or demonstrated to a prospective purchaser. Failing to timely file an application may have adverse consequences, even absent public disclosure or offers for sale. Whether or not an actual prototype is constructed (not a requirement for patentability), the invention is “reduced to practice” by filing a patent application, sufficient in content to obtain a filing date, with the Patent Office. Unless the invention is "reduced to practice" by filing the patent application or diligently working to create a prototype within one year of the “date of conception”, patent rights may be lost to another inventor who conceives of the same invention AFTER the first inventor but reduced it to prac­tice BEFORE the first inventor.

The invention must be novel. Under 35 USC '102, a person shall be entitled to a patent unless (a) the invention was known or used by others in this country, (b) or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent, (c) the invention was abandoned, (d) the applicant filed for foreign patent protection more than 12 months prior to filing in the U.S. and the foreign patent issued before the U.S. application was filed, (e) the invention is described in a published patent application filed in the U.S. or in an issued patent to another before the invention by the applicant, (f) the applicant is not the inventor, or (g) another was first to invent and the first inventor had not abandoned, suppressed or concealed his invention. These conditions for patentability have probably given rise to more litigation than the remainder of the patent statute combined.

The invention cannot be “obvious” to one of ordinary skill in the art (industry). 35 USC '103 precludes a patent “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to one of ordinary skill in the art to which said subject matter pertains." It may be obvious if, after consideration of the prior art and the differences enjoyed by the new invention, one of ordinary skill in that field would have been motivated to attempt the proposed modification. Even assuming motivation exists, whether the invention was really “obvious” may be the subject of “secondary” factors set forth in the seminal case of Graham v. John Deere, including (1) the commercial success of the invention, (2) a long felt but unresolved need in the relevant art, (3) the failure of others to succeed in the invention (4) copying by others, (5) superior and/or unexpected qualities over the prior art, and (6) licenses granted on the merits of the invention. Any or all of these six factors may constitute evidence that the invention was not obvious.

If an application meets the conditions of patentability set forth in 35 U.S.C. 101, 102, 103 and 112, the patent applicant can expect to receive a Notice of Allowance from the Patent Office. Upon payment of the Issue Fee, a Patent Certificate will issue, granting the holder his or her monopoly for 20 years on a utility or plant patent and 14 years for a design patent. Utility patents require the payment of maintenance fees at 3 ½, 7 ½ and 11 ½ year intervals to maintain the patent in force. Plant and design patents require no maintenance fees.

Patents offer very strong protection for technology in the stream of commerce. Even the “reverse-engineering” of the product or independent discovery of the same or equivalent means would prevent introduction of infringing technologies. Infringement by equivalence occurs when the competing subject matter performs the same or similar function in substantially the same way to achieve substantially the same result as the patented invention. A U.S. patent protects against infringement within U.S. territorial limits and can be used to block importation into the United States of infringing goods from a foreign country. If the U.S. patent includes a process, the patent holder can prevent the importation of goods made by the patented process, even when the products themselves are not patented. This right may be valuable to a company with a patent on a new method of refining minerals which, themselves, are not patentable.

Perhaps the strongest protection afforded patents are the remedies for infringement. These can include an accounting of profits, opening up a competitor’s books to inspection, preliminary and permanent injunctions, the surrender and destruction of infringing inventory, collateral actions against a competitor’s customer base to the extent they may use or sell, however innocently, the infringing product and, for knowing or willful infringement, treble damages and the possibility of attorney's fees. While an inventor cannot stop others or collect damages arising from making using or selling the invention prior to issuance of a patent, the “patent pending” status of an application may deter investment in the technology or manufacturing facilities which will be rendered useless upon patent issuance. For this reason, marking products with "patent pending" is allowed and to be encouraged. Upon receiving the patent, the owner is also encouraged to properly mark the patented product with the patent number, placing the world on actual notice of the patented nature of the goods. This can have important ramifications, allowing the recovery of treble damages for willful infringement.

Of course, patents also have their disadvantages. Rights may be lost in the U.S. as previously discussed. Even with a U.S. patent, a competitor may capture the foreign market absent foreign patent protection. The one year grace period for sales afforded under U.S. law however, is NOT recognized by many foreign jurisdictions and patent rights may be forfeited by ANY public disclosure or sales prior to filing for foreign protection. While the Patent Cooperation Treaty provides a uniform means of engaging in a preliminary election of nations for which foreign protection is desired, the invention will ultimately be subject to examination in each individual jurisdiction for which protection is desired. If foreign protection is not acquired, the U.S. patent will have disclosed the “best mode” of practicing the invention, as required by 35 U.S.C. 112. Competitors may use this information to penetrate foreign markets.