What is a Patent?
A patent is a legal monopoly granted over a particular invention for a limited time period. A patent owner may prevent other parties from practicing the patented technology, or the owner may allows others to practice the technology under a license agreement.
The authority for Congress to protect innovation via patent grants derives from the “Patent and Copyright clause” of the U.S. Constitution, contained in Article 1, Section VIII. This clause provides that, “Congress shall have the power ... [t]o promote the progress of science ... by securing for limited times to ... inventors the exclusive right to their respective ... discoveries.” This clause outlines the basic characteristics of a patent - that is, to secure an exclusive right over an invention for a limited time - as well as the intended purpose of the clause - to promote scientific development.
So what exactly is a patent, and what protection does it provide?
A patent offers its owner the right of exclusion. The law provides that a patent infringer is anyone who makes, uses, sells, offers to sell, or imports any patented invention during the term of the patent without authority. 35 U.S.C. Sec 271(a). Of course, a patent owner may seek legal recourse against an infringer. This includes compelling the infringer to cease the infringing activity and receiving compensation for the use of the protected invention.
In addition, patents are territorial and, to be effective, must be granted by the jurisdiction (country) in which patent rights are desired. A U.S. patent is valid in all 50 states and U.S. territories. It will not provide any protection in other jurisdictions; nor will a foreign patent provide the owner with any legal protection in the U.S.
Types of Patents
There are three types of patents recognized under U.S. patent law, as follows.
Utility Patents. This is what most people envision when they think of a patent. Utility patents cover items that function in a unique manner to produce a useful result. This includes machines, processes, articles of manufacture, and new chemicals or drugs. Most patents are utility patents. The effective term of a utility patent is 20 years from the date of filing the application.
Design Patents. Design patents cover the unique ornamental aspects or surface appearance of an article. Unlike utility patents, the protection granted by a design patent is for non-utilitarian aspects of an invention. This ornamentation must be inseparable from the object (otherwise copyrighting is the appropriate form of protection). Examples include a unique shape of a soda bottle, lamp or automobile body. Design patents last 14 years from the date of issuance.
Plant Patents. These are relatively rare and specialized patents. They are used to protect asexually reproducible plants, such as plants that are reproduced by grafting and cutting.
Legal Requirements for Utility Patents in the U.S.
There are four general requirements for patentability: the subject matter of the invention must be legally recognized as a subject that warrants patent protection; the invention must be useful; it must be new; and it must not be merely an obvious advance over the state of the prior art already in the public domain.
Statutory Subject Matter
Congress has stated that a patent may be obtained on “anything under the sun that is made by man.” This includes a process, machine, manufacture, composition of matter, or improvement thereof. It does not, however, include laws of nature, physical phenomena, or abstract ideas.
For example, Newton’s laws of motion would not meet the test for patentability. A mathematical formula or an algorithm, such as a procedure for calculating pi, are also not patentable. However, processes used for software or business methods can meet the subject matter test. A new chemical composition may be patented. A naturally-occurring substance may not be patented unless its characteristics have been altered through human interaction.
Inventions often fall into more than one category. For instance, an electric can opener can be thought of as both a machine and an article of manufacture. It is not necessary to identify the particular category that a device falls into. It is merely necessary that the device meets this requirement.
To meet the utility requirement, an invention must achieve a useful result. “Utility” is a broad term in a patent law sense. An invention does not need to change the world. Such items as toys and games, for instance, are considered to be useful. Software inventions can run afoul of this prong if they do not produce a "useful" result (e.g. if they are merely akin to an algorithm). Outputting a result to a computer screen will normally satisfy this requirement.
Although the patent office generally will not go out of its way to ensure that your invention actually works as described (patent examiners are busy enough already!), it may require proof of concept if the function of your device appears implausible - for example, if you are attempting to patent a perpetual motion machine.
To obtain the benefit of patent protection, you must advance technical knowledge in the public domain by adding something new and unique to the state of the prior art. This is known as the quid pro quo (or equal exchange) of patent law. Essentially this means that there must not be another prior art technology that contains every element of your invention prior to your date of conception.
An application must be filed within one year after a public use or sale has occurred in the United States. The term “public” is not necessarily synonymous with “many.” One court ruled that a patent was invalid because a “public use” occurred when the inventor revealed his device to a few friends at a party. In most foreign countries, the patent application must be filed before any public use occurs. This is an important consideration for those contemplating international filing.
In addition to the requirement of being technically new and unique, public policy runs contrary to granting protection for insignificant changes that do not effectively add to the state of technical knowledge. Therefore, an invention will not be patentable if the differences between the invention and the prior art are of a merely obvious nature.
The legal standard that applies is whether the difference between the device sought to be patented and the prior art would be obvious to a person having ordinary skill in the art (“PHOSITA”) at the time of conception. There are a variety of factors that may be considered to make this determination, which means that the test has an inherent degree of subjectivity. As such, it is often the most difficult hurdle to meet when patenting an invention. It also forms the basis for many arguments (and counter-arguments) submitted during patent prosecution and other legal proceedings.
Patent Disclosure Requirements
In addition to the above requirements, there are standards that govern whether a particular patent application is legally sufficient. The following are the primary items must be included in a patent application.
Written Description. This identifies the subject matter of the invention and puts the public on notice that you are in possession of it.
Enablement. The written description must fully describe the invention in a way that enables others skilled in the art to practice the invention after its term expires.
Best Mode. The applicant must put their “best foot forward” by providing their perceived best mode of practicing the invention at the time of filing.
Claims/Definiteness. The patent application must conclude with one or more claims that distinctly point out and particularly claim what the applicant regards as the invention. The claims (which are drafted in a unique form of “legalese”) define the legal boundaries of patent protection offered for a given invention. They must be adequately supported by the written description.
Overview of Patent Procurement Process
Once the inventor(s) have conceived an invention, a three-step process is utilized to obtain patent protection. First, a prior art search should be conducted. Next, the patent application will be prepared and filed. The last step is the prosecution phase, in which patent attorneys interface with examiners at the patent office to argue for patentability, and revise the application as necessary to obtain allowance. After issuance, patent fees must be paid periodically to maintain legal enforcement rights.
Prior Art Search & Opinion
Patentability screening searches are conducted before filing applications to determine the scope of the prior art. Although the searches are not legally required (under most circumstances), they are necessary to make an educated assessment of whether a particular invention is eligible to receive patent protection, and also the extent of protection available. A prior art search is considerably less expensive than the filing and subsequent prosecution of a patent application. If the search indicates a low likelihood of patentability, this expense can be avoided altogether. Even if the invention appears to be patentable, however, the prior art search offers several additional advantages to the patentee(s).
Understanding the state of prior art allows the inventor(s) to gain a better understanding of which aspects of their invention are new and patentable. This can provide focus for further research and development (e.g. focusing on the patentable nature of the particular invention). Additionally, it supports business development decisions by providing a basis for a large capital investment and marketing/distribution efforts that an aspiring patent owner may be considering. Moreover, potential licensees will take the invention more seriously if it can be shown through competent legal opinion that the invention is likely to receive patent protection. This can provide invaluable marketing assistance for independent inventors seeking to license their technology.
In addition, a properly drafted patent application should “sell” the invention over the prior art, and the requisite background information is needed to complete this task. It will also allow the patent drafter to particularly craft the claims to obtain the widest scope of protection while avoiding the prior art. Overall, it optimizes the scope of patent protection, increases the likelihood of allowance, and will lead to less costly prosecution of the application.
Preparing and Filing the Patent Application
Once the inventor/owner has reviewed the prior art search and patentability opinion, and has decided to apply for patent protection, the patent application will be drafted. This involves preparing the relevant sections of the application, and assembling them in a formal manner required by the patent office for examination.
Most patent applications will also require drawings. These may be produced by the patentee or by specialized patent drawing firms. Eventually, formal drawings need to be submitted for the patent to issue; however, the patentee can initially submit informal drawings to defer the cost of drawing production until a later stage of the prosecution.
After the application has been completed and reviewed by the inventor(s), it will be submitted to the patent office along with requisite legal forms and fees.
Prosecuting the Patent Application
After filing, the patent application will be assigned to a particular Art Unit at the patent office based on its subject matter. It will then go into a queue and await review by an examiner in that Art Unit. Eventually, an examiner will review the contents of the application, and conduct their own prior art search. They will then and compare the application to the prior art and make an initial determination of patentability. An initial office action (“OA”) will be issued, which may take a variety of forms, including allowance or rejection some or all of the claims, or objection to various aspects of the application.
It is common for the examiner to reject many of the claims of a given application (often due to obviousness) in an initial OA. This may sometimes cause alarm for an aspiring patent owner, but is to be expected during prosecution. The patent attorney will review the examiners statements and respond accordingly. This involves submitting counter-arguments to the examiners rejections, and arguing in favor of patentability. It may also result in changes to the patent application to overcome the examiner’s valid objections.
The examiner will then review the patent attorney’s response and issue a second OA. This OA is usually made “final.” If the examiner has issued a notice of allowance, the patent attorney will file the appropriate paperwork and requisite fees. Shortly thereafter, the patent will issue. Drawings will need to be formalized before issuance. If some of the claims were not allowed after a “final” OA, there are options available for continuing prosecution. Depending on the specific circumstances, claims may be revised to put them into a condition of allowance, some may be cancelled while others are allowed to issue, and further arguments may be presented to the examiner. If the results of this effort are still unfavorable, the examiner’s decision may be appealed to the Board of Appeals and Patent Interferences. Ultimately, the patentee may appeal a negative decision to the Court of Appeals for the Federal Circuit (or possibly all the way up to the U.S. Supreme Court).
Maintaining Patent Rights
After issuance, the patent office requires periodic fees to prevent abandonment of the patent. Three post-issue fees, spaced at four-year intervals, must be paid to effectuate the full term of patent protection.
Most industrialized countries are signatories to treaty agreements that facilitate the filing of international applications. Most have signed onto the Paris Convention. This allows foreign applications to be filed within one year of the filing of the corresponding U.S. application (6 months for design applications). Additionally, a single application can be filed in the European Patent Office (EPO) for all member countries, although translations (when applicable), registrations, and fees will be required for each member country in which patent protection is granted. Most industrial countries are also members of the Patent Cooperation Treaty (PCT), which allows a single international application to be filed for all member countries. As long as an international PCT application is filed within one year of the U.S. filing date, applications can be filed in the member countries up to 30 months after filing the U.S application. Again, translations, registrations, and fees are required.
Patent laws differ internationally, and foreign filing can be extremely expensive. For instance, the EPO requires stiff annuity fees during the pendency of patent prosecution. After issuance, member countries where the invention has been registered also require annuities (as opposed to the post-issue fees in the U.S. spaced at 4-year intervals.) Moreover, foreign agents and translators must be employed to prosecute the application. Due to the cost and complexity involved, foreign filing is typically conducted for inventions with substantial commercial potential, and carried out by organizations that have the financial means to support international patent prosecution.
Patent Infringement Remedies
If a patent owner becomes aware than another party is practicing their patented technology without authorization (i.e. the other party is infringing the patent), there are various legal remedies available. These require positive action by the patent owner. There are no “patent police” and the USPTO does not concern itself with infringement. It only manages the patenting process.
The patent owner may seek an injunction compelling the unauthorized party to cease the infringing activity. Additionally, the patent owner may seek damages. Damages will generally be awarded for lost profits. This is not always a simple matter to determine, but the award should in no event be less than what a court determines to be a reasonable royalty.
Moreover, in cases of willful infringement courts may award treble damages and attorneys fees. Willful infringement will be found when the infringer has notice of the patent infringed and lacks a reasonable belief that their actions were not infringing. Patent infringement is not necessarily a straightforward determination. (Judges and lawyers sometimes do not agree on the issue.) Accused infringers often seek professional opinions from legal counsel to make this determination. A competent legal opinion stating the belief that a patent is not infringed will normally avoid the charge of willful infringement even if a court later determines that infringement had occurred.
A common practice for defendants in patent infringement proceedings is not only to argue against infringement, but also to argue against the validity of the allegedly infringed patent (either in court or through a reexamination proceeding in the patent office). The infringer may conduct their own prior art search (which is likely to be more rigorous than the searches conducted during patent prosecution) in the hope of finding additional prior art that will invalidate the patent.
Of course, rather than pursue legal remedies a patent owner may negotiate with an infringer to license the technology (in which case infringement may be a blessing in disguise for a patent owner attempting to market their invention). If a potential infringer is identified, professional advice from competent legal counsel may be sought to identify the proper course of action.