What is a Patent? A patent for an invention is the grant of a property right to the inventor. The right conferred by the patent grant is the right to exclude others from making, using, offering for sale or selling the invention.¹

Types of Patents: There are three types of patents: Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof;2 Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and3 Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants.4 Term and Scope of Patent: The term of a new utility or plant patent under the US patent law is 20 years from the date on which the application for the patent was filed in the United States.5 Patents for designs are granted for the term of fourteen years from the date of grant.6 The scope of the protection afforded by a patent is determined by the language of the claims and description upon which the patent was granted.7 US patent grants are effective only within the US, US territories, and US possessions.

CONTENTS WHAT IS A PATENT? TYPES OF PATENTS TERM OF PATENT PATENT LAW INVENTIONS PATENTABLE CONDITIONS FOR PATENTABILITY INFRINGEMENT APPLICATION FOR PATENT AUTHORITIES U.S. PATENT LAW: USC TITLE 35 U.S. PATENT AND TRADEMARK OFFICE (USPTO) USPTO PATENT SEARCH (1976-) USPTO APPLICATION SEARCH (2000-2002)

Patent Law

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which provides:

Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.⁸

The first patent law was enacted in 1790. The patent laws underwent a general revision which became effective January 1, 1953 and was, in turn, most recently amended by the American Inventors Protection Act of 1999 (AIPA).⁹

The current US patent law is codified at Title 35 of the United States Code and specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.¹⁰

Inventions patentable

Patent law protects new, useful, and nonobvious inventions. Section 101 of the patent Title provides that:

[w]hoever 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...¹¹

The patent law requires that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes a requirement actual operability.

A patent cannot be obtained upon a mere idea or suggestion. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Interpretations of the patent law by the courts have defined additional limits on the range of subject matter that can be patented. In particular, the Supreme Court has held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.¹²

In the past, the courts have interpereted this rule as specifically excluding "mathmetical algorithms" and "business methods" from the range of patenable subject matter.¹³

However, more recent decisions by the United States Court of Appeals for the Federal Circuit have construed the "laws of nature" rule as essentially a restatement of the statutory "usefulness" requirement.

[I]f a mathematical algorithm is found, the claim as a whole is further analyzed to determine whether the algorithm is "applied in any manner to physical elements or process steps," and, if it is, it "passes muster under § 101."¹⁴

Under this regime, both the courts and Patent and Trademark Office have a adopted a fact-sensitive approach to applications including either algorithmic and/or business method elements within the scope of their claims.¹⁵ This has permitted the patenting of, among other things, computer software which is at core a series of Boolean algorithms.¹⁶

This has also, somewhat more controversially, led to the issue of a number of business method patents,¹⁷ including most famously Amazon.Com's "one-click" purchase method patent.¹⁸

Conditions for patentability

In order to qualify for a patent, an invention must be both "novel" and "non-obvious". Title 35 provides that an inventor shall be entitled to a patent unless:

• Novelty the invention was known or used by others in this country, or patented or described in a printed publication before the invention thereof by the applicant for patent.¹⁹
• Non-obvious 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 at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.²⁰

In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon.

Infringement of Patents

Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention during the term of the patent.²¹

If a patent is infringed, the patentee may sue for relief in the appropriate federal court.²² The patentee may ask the court for an injunction to prevent the continuation of the infringement,²³ and may also ask the court for an award of damages because of the infringement.²⁴

As a defense to such an infringement suit, the defendant may challenge of the validity of the patent, which is then decided by the court.²⁵ Claims of invalidity may include challenges to the propriety of the subject matter, novelty or non-obviousness of the invention.²⁶

The defendant may also claim that its activities do not constitute infringement.²⁷ Infringement is determined primarily by the language of the claims of the patent.²⁸ If the defendant's process does not fall within the scope of any of the claims of the patent, there is no literal infringement.

If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Court of Federal Claims.²⁹ The government may use any patented invention without permission of the patentee, but the patentee is entitled to obtain compensation for the use by or for the government.³⁰

Application for Patent

An application for a patent is made to the Commissioner for Patents and includes:

1. A written document which comprises a specification (description and claims);³¹
2. An oath or declaration;³²
3. A drawing in those cases in which a drawing is necessary;³³ and
4. The filing fee.³⁴

The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.³⁵

The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent.³⁶

• Examination

  The examination of the application consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and nonobvious and if the application meets the requirements of the patent statute and rules of practice.³⁷ A decision is reached by the examiner in the light of the study and the result of the search.

• Initial Rejection

  If the claimed invention is not directed to patentable subject matter, the claims will be rejected.³⁸ If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected.³⁹ It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner, relatively few applications are allowed as filed.⁴⁰

• Reconsideration

  Following an initial rejection, the applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner's Office action.⁴¹ A bare allegation that the examiner has erred will not be received as a proper reason for such reconsideration.⁴²

• Appeal to the Board of Patent Appeals and Interferences

  An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences⁴³

• Appeal to Court of Appeals for the Federal Circuit

  An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. ⁴⁴

  • Proceedings on Appeal: The Commissioner shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. In an ex parte case, the Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.⁴⁵
  • Decision on Appeal: The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Commissioner its mandate and opinion, which shall govern the further proceedings in the case. ⁴⁶
• Civil Action to Obtain Patent

  An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Commissioner in the United States District Court for the District of Columbia.

  The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear and such adjudication shall authorize the Commissioner to issue such patent on compliance with the requirements of law.⁴⁷

ENDNOTES:

1. 35 U.S.C. § 271(a)
2. 35 U.S.C. § 101
3. 35 U.S.C. § 171
4. 35 U.S.C. § 161
5. 35 U.S.C. § 154(a)(2)
6. 35 U.S.C. § 173
7. 35 U.S.C. § 112
8. U.S. Const., Art. I, Section 8
9. Public Law 106-113 (1999)
10. 35 U.S.C. § 101, et seq.
11. 35 U.S.C. § 101
12. Diamond v. Diehr, 450 U.S. 175, 185 (1981)
13. See, e.g., Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972)
14. State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)
15. See, e.g., Examination Guidelines for Computer-Related Inventions, Patent and Trademark Office (1996)
16. AT&T v. Excel Corp, __ F.2d at ___
17. State Street, 149 F.3d at __
18. U.S. Patent No. 5,960,411
19. 35 U.S.C. § 102(a)
20. 35 U.S.C. § 102(b)
21. 35 U.S.C. § 271(a)
22. 35 U.S.C. § 281
23. 35 U.S.C. § 283
24. 35 U.S.C. § 284
25. 35 U.S.C. § 282
26. 35 U.S.C. §§ 282(2) - 282(3)
27. 35 U.S.C. § 282(1)
28. 35 U.S.C. § 112
29. _
30. _
31. 35 U.S.C. § 111(a)(2)(A); 35 U.S.C. § 112
32. 35 U.S.C. § 111(a)(2)(C); 35 U.S.C. § 115
33. 35 U.S.C. § 111(a)(2)(B); 35 U.S.C. § 113
34. 35 U.S.C. § 111(a)(3)
35. 35 U.S.C. § 112
36. _
37. 35 U.S.C. 131
38. 35 U.S.C. 102(a)
39. 35 U.S.C. 102(b)
40. 35 U.S.C. 132
41. 35 U.S.C. 132
42. _
43. 35 U.S.C. § 134
44. 35 U.S.C. § 141
45. 35 U.S.C. § 143
46. 35 U.S.C. § 144
47. 35 U.S.C. § 145