FAQ

A patent is a right granted by the government to exclude others from making, using, selling, offering to sell, or importing a method, apparatus, or design covered by the claims of the patent. A patent grants such rights only in the country in which it was issued (for example, a US patent provides exclusive rights only in the US; a Japanese patent provides exclusive rights only in Japan).

After a patent application is filed, it is then examined by the Patent Office, during which time the owner of the application can respond to rejections or other concerns the examiner has. If all concerns are addressed to the satisfaction of the examiner, the application may eventually be allowed and issued as a patent.

A US utility patent, as opposed to a design patent, covers a “new and useful process, manufacture, machine or composition of matter.” 35 USC 101. Generally, a utility patent covers the way an article is used and works, i.e., apparatus and/or methods. MPEP 1502.01.

A design patent covers the way an article looks. MPEP 1502.01.  It covers the ornamental features of a device.

The period of enforceability of a US utility patent issuing from an application filed on or after June 8, 1995, starts on the day of issue and extends to 20 years after the effective filing date (ignore any priority claim to a provisional application). On average, that results in about a 17 ½ year or so the period of enforceability. The period of enforceability of a design patent issuing from an application filed on or after March 13, 2015, starts on the day of issue and extends to 15 years from that date.  Regular maintenance fees must be paid to keep a utility patent from expiring.

No, unless the applicant (typically the owner) of the application is a juristic entity (e.g., a corporate employer of the inventor(s)).  However, even if you, the applicant, are an inventor(s) (for example, it’s not owned by your employer) and therefore can represent yourself before the US Patent Office (meaning you can proceed pro se in filing and prosecuting your application), it’s highly recommended that you hire either a patent attorney or a patent agent. Doing so will likely significantly increase the odds that your patent application is prepared and filed properly, and that any patent that issues from it is valid and provides valuable coverage.

Here are a few of the many patent-related pitfalls:

(i) generally, the effective filing date of a US application must be no later than one year after an inventor’s (or someone who learned of the invention from him or her) publicly disclosure or sale of (or offer to sell) the invention, or the application is barred (not allowed).  In most foreign countries, that public disclosure cannot even be after (even one day after) such disclosure;

(ii) an independent contractor, if not properly contracted, can claim that they are inventors of an inventive improvement he or she makes or conceives;

(iii) an inadequate provisional application description that does not describe aspects of the invention of a later filed non-provisional application, or failing to file additional provisional applications that describe improvements or modifications as they are conceived, can cause significant problems;

(iv) failing to do a prior art search before spending perhaps significant funds on something other than a much less expensive provisional application can result in a wasted effort and wasted money spent trying to get a patent on an invention that is already known to the public; and

(v) a “did-it-myself” application, which, even if it results in a patent (unlikely), will very possibly have significant validity and coverage issues.

While it has been said that “anything under the sun that is made by man” can be patented in the US, Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), there are limits.  For example, abstract ideas and laws of nature cannot be patented.

The average legal fees and costs for preparing and filing a US Non-Provisional patent application total about $10,000.00 on average (but can range from approximately $5,000.00 to $50,000.00 and beyond). Understand that such is for filing only, and does not include fees and costs for prosecuting the application to issuance (e.g., responding to Patent Office rejections, etc.).  Prosecution fees are unpredictable and can range from virtually nothing (rather uncommon, because approximately 90% of all US Non-Provisional patent applications receive a first office action rejection) upwards. In exceptional cases, hundreds of thousands of dollars have been spent on prosecuting a single application for issuance as a patent.

Patent claims are often called the engine of a patent. They govern what a patent covers and what the owner can prevent others from commercializing, generally. Utility patent claims (as opposed to the claim of a design patent) are the numbered paragraphs at the end of a patent that describes the subject matter that the owner of that patent is entitled to exclude others from making, using, selling, or offering to sell, or importing.  Thoughtfully drafted and prosecuted claims will provide coverage that is as broad as possible. A design patent has a single claim that refers to the figures; those figures substantively describe what that design patent covers.

Briefly, prior art includes all technology published before your patent application’s effective filing date (which can be earlier than the filing date if your application claims priority to an earlier-filed application).  Prior art can include electronic publications such as websites, journal articles, flyers, patents, patent application publications, offers for sale, videos of uses of technology, etc. During the examination of your patent application by the Patent Office, a patent examiner will compare the technology described by your claims with the prior art and make a judgment call as to whether your claims are both novel and non-obvious relative to that prior art.

Because prior art includes all sorts of publications, patent or otherwise, just looking at existing patents to assess whether your claims are patentable over prior art that exists as of your application’s effective filing date is not sufficient to make that assessment; you should consider all publications, not just patents.

Reviewing patents is how you would do a freedom-to-operate search, which will give you an idea if you can make, use, sell, offer to sell, or import something without infringing an existing patent.

A prior art search, often called a patent search, is a search for prior art, which includes all technology published before your patent application’s effective filing date.  It can include electronic publications such as websites, journal articles, flyers, patents, patent application publications, offers for sale, etc.  Conducting a prior art search before an application is filed (often performed before the more expensive non-provisional application is filed), can help you assess whether you have a good chance of getting a valuable patent. Of course, if your idea or something virtually identical to it is already in the prior art, it may make little sense to file a patent application for it.  You would likely have a hard time convincing a patent examiner that claims describing your idea are novel and non-obvious over the prior art, which they must be to get a patent. And money spent on preparing and filing that non-provisional patent application may have been, to a large degree, a waste.

No, there is no requirement that an inventor, company owner, applicant, or attorney conduct a prior search.  However, it is required that the inventor and others connected with the application inform the Patent Office of all technology that is, roughly, relevant to the examination of your patent application (including prior art that is even arguably “close” to the invention).

Even though a search is not required, it may often make sense… even though you may have a solid understanding of your inventive technology and known solutions to the problem your invention solves, you likely are not aware of all relevant prior art.  And if there is very close or identical prior art out there, wouldn’t you want to know that before you file an expensive patent application? You could avoid a pointless effort and waste of money.  And even if your idea is different from the prior art, but still somewhat close, having an understanding of what that prior art looks like can help your attorney draft claims that have better odds of success in overcoming that prior art.

Even though a search is not required, it may often make sense… even though you may have a solid understanding of your inventive technology and known solutions to the problem your invention solves, you likely are not aware of all relevant prior art. And if there is very close or identical prior art that you’re unaware of, wouldn’t you want to know that before you file an expensive patent application? You could avoid a pointless effort and waste of money.  And even if your idea is different from the prior art, but still somewhat close, having an idea of what that prior art looks like can help your attorney draft claims that have better odds of success in overcoming that prior art. Also, in doing your search, you might discover prior art that is very close to or even discloses identically the claims of a competitor’s patent; you could leverage that prior art against that competitor if they assert your patent against you.

Reasons against doing a search include the cost of a search (often relatively small, but a factor nonetheless); the fact that you’ll likely never find all relevant prior art; the fact that what you might consider relevant may be different from what the patent examiner considers relevant, so your search will have uncertain predictive value; the fact that searching can, at times, open the doors for an argument from an adversary that your patent is invalid because you didn’t cite “close” prior art in your application in an effort to hide it from the Patent Office.

In the balance, I myself think that it makes sense to almost always do a prior art search.

A provisional patent application is a US application with relaxed formal requirements and reduced cost. It provides a less expensive option for inventors and companies to quickly establish a firm filing date. An early filing date can be very important, especially due to the fact that today, where two or more entities file a patent application for the same invention, the US and foreign patent laws afford patent rights to the first to file their application.

A provisional application need not have any claims and is not examined.  While it expires within one year, a follow-up non-provisional application (roughly, a US or foreign application that must have claims and is examined) filed within one year of the provisional application filing date and that claims priority to that provisional application, will be accorded the filing date of the provisional for technology disclosed in both the provisional and the later-filed non-provisional application. That priority filing date can be critical in meeting certain deadlines (for example, triggered by public disclosures of offers for sale) imposed by various patent offices in the US and across the world, and overcoming close prior art.

A provisional, like a non-provisional patent application, can be used to reduce the odds that another entity patents your invention. A provisional makes it much safer for you to disclose your invention if such disclosure is done after the filing date.  In this way, a provisional application can be a strategic way to more safely test whether it is favorably received in the marketplace, and do so before the more expensive non-provisional application is filed.

A non-provisional patent application is an application that has claims, is examined, and can potentially be issued as a patent.  It’s a term used to differentiate from a provisional application, which is a US “creation” that is not examined, need not have claims, and cannot, by itself, turn into a patent.  While “non-provisional” is a US term, it can also be used to refer to all foreign utility patent applications, which have claims, are examined, and can potentially turn into patents in those countries.

Total legal fees and costs for preparing and filing a US Non-Provisional patent application average about $10,000.00. However, that is for filing only, and does not include fees and costs for prosecuting the application to issuance (e.g., responding to Patent Office rejections, etc.).  Legal fees and costs can range from about $5,000.00 to $80,000.00 and beyond, depending on, for example, the complexity of the technology and the number of inventions.

Where two or more entities file a patent application for the same invention in a country, the US and foreign patent laws afford patent rights only to the first-to-file.

The average elapsed time from filing of a US Non-Provisional application to issuance (if that happens) is about 2 ½ years, although there are options to expedite the examination process. However, prosecution of an application to issuance or a final office action, sometimes even when initially expedited, can take much longer.

Yes, there are options to expedite or prioritize patent examination.  Briefly, without getting into requirements as to when they must be requested, limits on numbers of applications expedited, etc., they include:

• Prioritized Examination (Track I), which expedites examination upon payment of a fee of approximately $2,100.00 (small entity) or $4,200.00 (large entity);

• Petition To Make Special (no cost): Expedited examination if:

– your invention either enhances the quality of the environment, conserves energy resources, or counters terrorism;

– the inventor has health issues that might preclude his or her ability to provide assistance during the examination if it is not expedited; and

– the inventor is older than 65 years of age.

• Prioritized Examination of COVID-19-related inventions that are subject to FDA approval.

In the U.S., “patent pending” means that the technology (product or otherwise) that you’ve indicated as “patent pending” is disclosed in a pending US application, whether a provisional application or a Non-Provisional application (including a PCT application). If at some point in time after that filing, there is no longer pending an application for a patent for that technology (e.g., you filed a provisional application but before it expired you didn’t file a follow-up application, or you abandoned your non-provisional application), you cannot continue to label your technology as “patent pending.” And if your pending patent application issues a patent, you should change the “patent pending” label to the correct marking to indicate that your product (or otherwise) is patented (e.g., “US Pat. No. #,###,###”).

Note that a product that is merely patent pending affords to the owner no rights to exclude others from making, using, or selling the invention.  It merely indicates to others that they may want to think twice before investing in, e.g., the infrastructure needed to make, sell, use or import the invention, as they will need to stop practicing the invention once the patent is issued, and at that point in time, they may not have recouped their investment costs.

If it’s a provisional application (which is filed in the United States), the US Patent and Trademark Office does almost nothing with it, other than assigning it an application number, confirming payment, and sending the applicant (or the applicant’s representative) a filing receipt.  If it’s a US Non-Provisional application, then an application number is assigned, a filing receipt is prepared, and an intake review is performed to assure certain formality requirements are met (e.g., payment, the sufficiency of drawings). Upon the applicant’s correction of any formality concerns, the application is forwarded to an examiner where it sits until he or she is prepared to initiate examination (expedited or prioritized examination can speed up the process).

Substantive examination of a non-provisional application typically (about 90% of the time) starts with a rejection of all claims based on prior art, in addition to, perhaps, concerns regarding the written description or drawings. For example, the examiner may issue a novelty concern under 35 USC §102, in which he or she states that the invention described by the claims is no different from (i.e., is “anticipated by”) a prior art reference. And/or the examiner may issue an obviousness concern under 35 USC §103 in which he or she states that the invention described by the claim(s) is simply an obvious combination of elements shown in the prior art (e.g., in two or more prior art references). The examiner may also express a concern that the claims are unclear or have other errors.

In response, the applicant can explain why the examiner is wrong and/or amend (change) the claims, which can be done by, for example, adding text to them, thereby making the subject matter they describe more detailed and unique relative to the asserted prior art, or clarifying the invention they describe. The task is often to sufficiently distinguish the claims from the prior art without making them so detailed or narrow that they lose their value.

The primary test is whether the technology described by your claims is both novel and non-obvious in view of the prior art.  That test is applied to every single claim.  Prior art, generally, includes, among other things, all publications that occurred before the effective filing date of the application.  A claim is novel if there is no single prior art reference that discloses all of the elements of that claim; a claim is non-obvious if, in the judgment of the examiner, upon his or her application of obviousness law, two or more prior art references can reasonably be combined to arrive at the technology described by the claim (e.g., elements a, b and e of the claim appear in Reference A, and elements c, d, and f appear in Reference B).  There are also requirements regarding, for example, adequacy of the figures and written description, and clarity of the claims.

You will have an opportunity to explain why the examiner is wrong and/or amend (change) the claims, which can be done by, for example, adding text to them, thereby making the subject matter they describe more detailed and unique relative to the asserted prior art or clarifying the invention they describe. The task is often to sufficiently distinguish the claims from the prior art without making them so detailed or narrow that they lose their value. If you get a subsequent rejection, and that rejection is final, you still have options in response (e.g., appeal, filing a request (virtually always granted) for another “round” with the examiner).

If you get a final rejection, you still have options in response. You can file an appeal to the Patent Trial & Appeal Board if you feel you have good arguments that the examiner is wrong, or you can file a Request for Reconsideration (essentially, a request for another “round” with the examiner that is virtually always granted) if you want to further amend the claims (to make them more unique relative to the prior art asserted by the examiner and/or to clarify what they describe). A final rejection is not as final as it sounds… unless, of course, you choose not to respond to it.

An international, or PCT (Patent Cooperation Treaty) application, acts as a preliminary filing of sorts in any of over 150 countries, and can be used to delay the decision as to what countries in which you want to officially file an application, and hopefully obtain a patent. It also consolidates the examination of a utility application, resulting in a single final examination report. The goal of a PCT application is to hopefully obtain a favorable examination report (e.g., a report that certain of the claims are patentable over the prior art), which is often achieved by responding to PCT examiner rejections via explanation and/or claim amendments.  The applicant can then, by a certain fixed deadline, forward that hopefully favorable examination report to specific PCT member countries of interest (or regions of selected countries) as part of patent applications in those countries.  Often, those countries' (or region's) patent offices will “rubber stamp” that examination report; if that report is favorable, then the application will have been allowed in that country with the minimal additional examination.  A PCT application can be a good idea where it is particularly helpful to delay the decision as to which countries to file in and/or the applicant wants to file in more than 4 or so countries.

Note that there may be certain regions, such as the European Region, that are similar to the PCT system in certain ways, although they apply to only a few states located in the same general area.

Yes. With respect to utility patents, there is a European Unitary Patent that is, essentially, one patent that is enforceable in most European Union member countries, and certain African regional patents (ARIPO and OAPI) that may apply in several African countries. There is also an international patent application (a PCT, or Patent Cooperation Treaty application) that allows a single filing applicable in the vast majority of countries, but a PCT applicant must, generally, still eventually file an application in each country or region in which he or she wants a patent.  As to design patents, there is a version of a design patent that applies in several European countries, called the ECD or European Community Design, in addition to certain African regional design patent options.

You need a utility patent in every country in which you want enforceable patent rights (or a regional patent that applies in every country you want such rights).  For example, if you do not file an application in Japan by the applicable deadline, you will not have patent-related rights in that country.  So, with no patent in Japan, someone could, generally, commercialize your invention in Japan.

Patent infringement is found where, without authorization from the patent owner, someone makes, uses, sells, offers to sell, imports, or practices (e.g., a method) the invention described by one or more claims of the patent. A patent can only be infringed upon in the country in which it was granted. To infringe, someone must practice all elements of one or more claims of the patent; infringement is found even if (in the product or method), there are additional elements (e.g., parts of a product, steps of a method, etc.).  An individual or entity found liable for infringement may be subject to an injunction (an order to stop the infringing activity) and/or damages (e.g., profits lost by the patent owner due to the infringement).  And, generally, if the infringer is found to have known of the patent and proceeded with the infringing activity anyway, without having obtained an opinion from a patent attorney that the activity would not be infringing, the infringement may be considered willful, and damages may be trebled (e.g., tripled).

The term “design around” refers to an intentional effort to avoid infringing a patent by designing technology to not include, or not feature, at least one element of every claim of that patent that might otherwise (without the design around) be infringed.  Because one need only infringe one claim of a patent to infringe that patent, a competent attorney will assure that there are good arguments that his or her client’s technology does not feature at least one element of each independent claim of the patent, whether due to design around or otherwise. The more elements of a single claim that are avoided, the less the odds of a finding of infringement of that claim.

A patent attorney can help you determine whether it looks like someone is infringing your patent.  Only one claim of a patent needs to be infringed for that patent to be infringed.  One infringes a claim of a patent if every single one of the elements of that claim is found in commercialized technology (e.g., a device or method) that you suspect is infringing, even if that technology includes one or more other elements.  A legal claim of infringement determination is heavily dependent on the interpretation (or construction) of the claims. That construction is typically determined by a federal district court in what’s referred to as a Markman Hearing.

See a patent attorney.  That attorney can help you assess the odds that a court will find infringement.  That, in addition to an estimation of damages, and of the costs of an infringement suit against your adversary, can help you decide whether an infringement suit might make sense.  While not required, a thoughtfully drafted cease and desist letter can be a good first step; it can help to avoid litigation, and possibly encourage the suspected infringer to become a licensee.

An infringement action, from its initial start via examination of the patent and the accused technology, filing of the complaint, discovery, motion practice, expert witness depositions, claim construction hearing (interpretation of the claims), trial, etc., can easily cost millions of dollars.

While the default rule is that the inventor owns an invention, and thus owns its related patent application or patent, that rule may be overridden by law that, in many instances, automatically assigns inventions (transfers ownership in them) conceived by employee inventors to the employer.  Ideally, there will be an employee contract, and a written assignment, that formalizes this transfer and leaves no doubt as to ownership.

An inventor from whom an invention has not been assigned, via common law (employee ownership) or otherwise, can choose to assign the invention (and a related application(s) and patent(s)) that he or she owns, to another, whether individual(s) or entity(ies), for compensation.  Often, joint ownership of a patent (e.g., by more than one individual such as inventors) is discouraged because US law generally allows any one inventor to do whatever he or she wants with his/her interest (e.g., assign or license) without accounting to the other owner(s).  A corporation can also transfer ownership to a patent (or other intellectual property) that it owns.

First, understand that a patent gives its owner the right to exclude others from certain activities; it doesn’t give the owner a right to engage in certain activities, like making, selling, or otherwise commercializing the patent’s invention.  What governs whether you, the patent owner, can commercialize your invention (whether it’s patented by you or not) is whether there are other patents out there that might block you (because they have a claim that covers your invention). How can there be two or more patents that cover an invention? Perhaps you obtained a patent on a narrow, unique version of a known product, and that product is covered by an earlier-filed patent with claims that are broad enough to cover your product.   So, the answer to whether, if you get a patent on your invention, you can commercialize your invention is: maybe… it depends on whether there’s another patent out there that covers your invention.

For example, say there’s a pre-existing, broad patent on a vehicle rearview mirror; its claims indicate that the invention is a vehicle rearview mirror apparatus that has a mirror and a housing that is manually adjustable about a pivot attachment point between it and the stem that attaches it to the windshield.  You invent a vehicle rearview that is identical to the patented mirror, but for a small lever that you’ve added to it that allows the driver to quickly change the position of the mirror (when headlights from a trailing vehicle reflect into the driver’s eyes), and then quickly change it back to the original position, which your invention has “memorized” (thus precluding the need to readjust the mirror to regain that original position).  You may have been able to get a patent on your narrower memory-type quick-change mirror in view of the pre-existing broad patent (which would be prior art to your patent), but the manufacture of your mirror would still infringe the pre-existing, broad patent because your inventive mirror includes all of the elements of one or more of that patent’s claims: it’s a vehicle rearview mirror apparatus with a mirror and a housing that is manually adjustable about a pivot attachment point between it and the stem that attaches it to the windshield (and it infringes such claim(s) even though it has additional components regarding the quick-change, position-memory lever).

So was your patent a waste? Not necessarily.  Particularly where your invention would meet with such commercial success that even the owner of the pre-existing patent wants to sell your improved mirror, perhaps a cross-license can be arranged.  You would license your patent to the owner of the pre-existing patent, and that owner would license its patent to you, so both you and the owner of that pre-existing patent could commercialize your improved rearview mirror. Or perhaps you could assign it to an entity that obtains a license from both you and the pre-existing patent owner.  At the least, hopefully, the owner of the improved mirror could find success through either a license to the pre-existing, broader patent owner (so that owner could make, use, sell, offer to sell, or import the improved mirror), or through a license from that owner (so the owner of the improved mirror patent could make, use, sell, offer to sell, or import the improved mirror).  Things can get a bit tricky at times, but attorneys can get very creative in coming up with agreements, whether a license, assignment or otherwise, that result in win-win deals for all parties involved.

Freedom to operate refers to the ability to make, use, sell, offer to sell, or import technology with an acceptably low risk of infringing another’s patent(s).  There may be a legal requirement that one contemplating commercialization of a product or method first exercise due diligence in assessing whether they are free to commercialize that product or method. That due diligence typically involves a thorough, competently conducted search for patents that might pose a risk of infringement, a careful examination of those patents for infringement risk, and then an infringement risk determination by a competent patent attorney.  Acceptably low risk of infringement, of course, advises in favor of commercialization; however, proceeding in the face of higher risk may be foolish, possibly resulting not only in a finding of infringement but a finding that such infringement was willful, potentially tripling damages.

Only one claim of a patent needs to be infringed for that patent to be infringed.  You infringe a claim of a patent if, without authorization, technology (e.g., a product or method) that you practice (make, use, sell, offer to sell, or import) includes every single one of the elements of a claim of that patent, even if that technology includes one or more other elements.  A legal infringement determination is heavily dependent on the interpretation (or construction) of the claims.

If you’re aware of a patent that appears concerning, have a patent attorney review it to determine whether it poses a risk. If it does, perhaps you can design around it. A design around refers to an intentional effort to avoid infringing a patent by designing technology to not include, or not feature, at least one element of every claim of that patent that, without much effort, poses an unacceptably high risk of infringement.  The more elements of a single claim that are avoided, the less the odds of a finding of infringement of that claim.

Note that due diligence obligations may strongly advise in favor of additional searching to determine whether there are patents owned by others that pose an infringement risk.  This can be done as part of a freedom-to-operate investigation.  That investigation will also take a closer look at patents that might appear to pose an unacceptable infringement risk. And one can look into designing around patents that do pose an unacceptably high risk of infringement.

Note that a patent can be invalid or unenforceable for several reasons, including, for example, its claims describe technology that is no different from, or clearly obvious in view of, technology that was known before that patent’s effective filing date, especially if that prior art technology was not considered by the examiner during the examination of the application that turned into that application. Or perhaps the claims are so poorly written that they’re incomprehensible.  Perhaps the patent owner failed to pay maintenance fees (if it’s a utility patent).

Perhaps a competitor has a patent that appears to pose a concerning risk of infringement to you.  Perhaps it appears that you cannot design around the claims of that patent.  However, even if that’s your situation, if that patent appears invalid or unenforceable (according to a patent attorney), your attorney may be able to help you proceed with product commercialization.

A patent attorney can advise you on whether there are good arguments as to why a patent is invalid or unenforceable, and whether you have options (e.g., post-grant procedures before the Patent Board and Appeal Board, a federal lawsuit, or perhaps an astutely crafted letter where the patent owner has threatened you with the patent already) to perhaps preemptively challenge and hopefully invalidate that patent, or at least keep the patent owner at bay, after which you can more safely commercialize the product. A riskier, often ill-advised strategy would be to, forego, at least initially, any sort of affirmative action, and commercialize the product with the plan of leveraging your reasons for patent invalidity against that patent owner if and when it asserts or threatens to assert its patent against you.

Not necessarily, because it may be possible to make money on your invention without a patent. First, even a patent application (that hasn’t yet been issued as a patent) can be monetized, e.g., sold (assigned) or licensed. While a patent application may command a smaller price or royalty than can a patent (because there is no guarantee that an application will issue as a patent), an application can still command respectable compensation to its owner.  Secondly, if there are no patents owned by others that cover your invention and thus effectively block your commercialization of it, you can commercialize your invention.  And if you have a patent on your invention (and there are no blocking patents), you can exploit the exclusive rights granted under your patent by making, using, selling, or importing the invention yourself, effectively monopolizing the market for your invention.  These are a few of the more popular ways of monetizing an invention.  Note that it can be very hard to monetize a “naked” idea, i.e., an invention for which there is neither a pending application nor a patent.  Note that any plan to monetize certain technology should first examine whether there are patents owned by others that cover that technology (and if there are, it may be necessary to first obtain, e.g., a license or assignment of patent rights before you can monetize that technology).

A license is an agreement whereby, typically, the patent owner authorizes a licensee to make, use, sell or import a patented invention (or an invention merely for which a patent application is pending) in exchange for some sort of compensation from that licensee.  That compensation can be, for example, an upfront fee and/or a royalty payment (e.g., a certain percentage of the item sale price).

An assignment is an agreement whereby an owner of an invention disclosed/claimed in a patent application or patent sells their ownership rights to another party, whether an individual(s) or an entity.  An assignment between an employee inventor(s) and their employer may be intended merely to formalize a transfer of rights that may have already taken place, at the moment of the employee(s)’ conception of the invention, under applicable law and/or an employment contract.  Assignments that are not intended to merely formalize (put into writing) that which may have already occurred via operation of law or contract – for example, an assignment of an unemployed “garage” inventor to a large manufacturer, or an assignment from one employer owner to a corporate competitor – may be much more lucrative for the seller (assignor) of the invention.  Note also that it can be very hard to sell a “naked” idea, i.e., an invention for which there is neither a pending application nor a patent.