Patents

What is a Patent?

A patent is a right granted by the government to an inventor to exclude others from making, using or selling an invention covered by a patent for a period of time. A patent does not provide the right to the owner of a patent to practice an invention since there may be previous patents that cover some aspect of the product or process. Unlike copyright and trademark law, which provide protection regardless of the filing of a copyright or trademark application, respectively, under the patent law, there is no protection provided without the filing and approval of a patent application. Under United States law, a patent may be issued for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. In recent years, this law has been interpreted by the courts as including methods of doing business, computer software and even transgenic animals.

A patent application must contain both a written description of the invention and claims particularly pointing out and distinctly claiming the invention. In this site, most attention will be paid to the utility patent - further information on other types of patents may be found by following the links below.

The description is simply a detailed account of the structure, operation, and function of the invention, written in such terms as to "enable any person skilled in the art…to make and use" the invention. The description must also set forth the "best mode contemplated by the inventor of carrying out his invention." This best mode description is to be provided as of the filing date of the application.
The claims define the "metes and bounds" of the intellectual property and must be carefully drafted to avoid the teachings of the prior art while providing maximum legal protection for the invention. As the legal definition of the invention, the claims are also key to answering questions regarding infringement. The drafting of claims is a key element of patents and is one of the most important skills provided by an experienced patent attorney.

Types of Patents

Provisional Application for Patents
Utility Patent Applications
Design Patent Applications
Plant Patent Applications
International - the World Intellectual Property Organization provides a basic guide to the filing of PCT patent applications.

There are three basic statutory "patentability" requirements. To be patentable, an invention must be:

Utility - Useful 35 U.S.C. § 101
Novel 35 U.S.C. § 102; and
nonobvious 35 U.S.C. § 103.

Of course, application of these requirements assumes that the invention falls within at least one of the four classes of statutory subject matter (35 U.S.C. § 101), as will be further discussed below.

UTILITY - To be patentable, an invention must be useful. (35 U.S.C. § 101)

The statute states: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

This requirement is the most often ignored statutory requirement for patentability, as it is intuitively difficult to understand why someone would seek patent protection for an invention that was not useful. Indeed, an inventor is generally motivated to seek patent protection in an attempt to profit financially from his endeavors. Therefore, usually no practical consideration need be given to the "utility" requirement in relation to common mechanical or electrical devices. If an invention is a new type of hammer, the utility is clear. However, some showing of utility may be necessary when seeking patent protection for inventions whose "real world" value may be difficult to gauge or substantiate, such as chemical and pharmaceutical compounds. In regards to the relatively new biotech technology, the PTO has issued utility guidelines. The utility needs to be credible, specific and substantial.

NOVELTY - To be patentable, an invention must also be novel, or new. (35 U.S.C. § 102)

Although the statute defines legal "novelty" in great detail, in general practice, there are only a few basic rules that need be considered in analyzing whether an invention is novel:

No patent protection is available for:

an invention known or used by others in the U.S. prior to the date of invention by the Applicant.
an invention patented or described in a printed publication anywhere (U.S. or abroad) prior to the date of invention by the Applicant.
an invention patented or described in a printed publication anywhere (U.S. or abroad) more than one year prior to the U.S. filing date of the patent application.
an invention in public use in the U.S. more than one year prior to the filing date of the patent application.
an invention on sale in the U.S. more than one year prior to the filing date of the patent application.

NONOBVIOUS - To be patentable, an invention must not be obvious. (35 U.S.C. § 103)

Obviousness may be the most nebulous concept to grasp in regards to patentability. In general terms, an invention is not patentable if, considering the prior art that existed at the time of invention, the invention would have been obvious to a person of ordinary skill in the art. Obviousness rejections are common during patent prosecution; however, because such rejections are somewhat subjective, they can often be overcome through persuasive argument. Secondary considerations of (1) commercial success; (2) long-felt need; and/or (3) commercial acquiescence can factor into such arguments. See Graham v. John Deere, 383 U.S. 1 (1966).

Again, analysis of the requirements of utility, novelty, and nonobvious assumes that the subject matter of the invention is indeed patentable. For years, the law seemed rather clear concerning what constituted patentable subject matter. As 35 U.S.C. § 101 sets forth, patentable subject matter includes any "process, machine, manufacture, or composition of matter."

The materials on this website are intended to provide general information and should not be relied upon for specific legal advice. Legal counsel should be consulted regarding questions and issues of protection or infringement of rights, so as to avoid possible loss of rights or infringement of the rights of others.

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