WHAT IS A PATENT? A patent is a grant by the government, to an inventor, conferring the right to exclude others from making, using, or selling his/her invention for a limited period of time. U.S. patents are granted for a period that begins at the date of issue and ends 20 years from the date that the application was filed. (For patents based on applications that were filed prior to 1995, the patent term is 17 years from the date of issue.) There are three basic characteristics commonly attributed to patents: The Contractual Characteristic In viewing the patent as a contract, the focus is on the contractual exchange between the two parties -- the inventor and the government. The inventor gives a full disclosure of the invention in how to make and use it, so that when the patent expires, the public will possess the invention and will be able to use it freely. In return, the government gives the inventor the right to exclude others from making, using, or selling his or her invention for a limited period of time. The Property Characteristic Patents have a right of ownership similar to real property that can be transferred in whole or in part. A patent may be sold. It may also be "rented" (i.e., licensed, as discussed below) and rent collected for its use (i.e., royalties). The Monopoly Characteristic The monopoly associated with patents is limited in time and negative in nature (i.e., exclusionary). A patent is not a license to make, use, or sell the invention. It does not give the patentee the right to practice his/her invention. In fact, the patent merely grants the patentee the right to exclude others from practicing the invention. The inventor's right to practice his/her invention is independent of the patent. It is not uncommon for an inventor to be granted a patent and not have the right to practice the invention. This happens, for example, when a patented invention is directed to subject matter that falls within the exclusive rights of another's earlier, broader patent. The earlier patent is said to "dominate", and the first patentee may have the right to exclude the second patentee from practicing his/her own invention. Neither patent grants the positive right to practice the invention -- only the negative right to exclude others. THE PATENTABLE INVENTION Patentable Subject Matter United States patent law specifies the subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the patent law, any person who "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," subject to the conditions and requirements of the law. The word "process" means method and may be defined as one or more steps performed on a material, a composition, or an article to produce a change in its nature or characteristics. Examples include a process for making a chemical compound, a process for treating leather, and a process for fabricating metal parts. Newly included are "Business Method" processes. Novelty Requirement A patentable invention must be novel. This means that it must not have been known or used by someone in the United States, or published or patented anywhere in the world before being invented by the person applying for a patent. Further, the invention must not have been published or patented anywhere in the world, or in use or on sale in the United States more than one year prior to the date of application for a patent.
The third requirement for patentability is that the invention be non-obvious. The patent law requires that the differences between the inventive subject matter for which the patent is sought and the prior art (e.g., public knowledge, prior publications, patents, etc.) are such that the subject matter as a whole would not have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. Courts have identified certain factors to be considered in determining whether an invention is non-obvious. These factors include the scope and content of the prior art; the differences between the prior art and the claims at issue; and the level of ordinary skill in the art. Therefore, if the differences between what was previously known (prior art) and the invention claimed are such that the invention would have been obvious to one of ordinary skill in the art, the invention is considered obvious and unpatentable. Other factors include commercial success; long felt, but unresolved needs; and failure of others in the art. Therefore, a showing of commercial success, a recognition that the invention fills a long recognized but unsolved need, and/or the failure of others who tried to solve the problem can contribute to a finding of non-obviousness. The issue of non-obviousness is subjective. However, most of the rejections of patent applications are based on this issue. THE PATENT PROCESS Who May Apply for a Patent Under the law, only the inventor may apply for a patent. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution to an invention is not a joint inventor and cannot be joined in the application as an inventor. Applications for Patent Non-Provisional Application A non-provisional application for a patent is made to the U.S. Patent and Trademark Office (PTO) and includes: (1) a written document that comprises a specification (i.e., description and claims), and an oath or declaration; (2) a drawing, in those cases in which a drawing is necessary; and (3) the filing fee. All application papers must be in the English language or accompanied by a verified translation into the English language. All application papers must be legibly written either by a typewriter or by a mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable and white paper. All applications received in the PTO are numbered in serial order and the applicant will be informed of the application serial number and filing date by a filing receipt. The filing date of an application for patent is the date on which the names of the inventors, a specification and any required drawings are received in the PTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application. Since 1995, the PTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. Provisional applications are not examined on the merits. A provisional application will become abandoned by operation of law 12 months from its filing date. The 12-month pendency of a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application. Oath or Declaration, Signature The oath or declaration of the applicant is required by law for a non-provisional application. The inventor must make an oath or declaration, among other things, that he/she believes himself/herself to be the original and first inventor of the subject matter of the application. The oath or declaration must be signed by the inventor in person, or by a person entitled by law to make application on the inventor's behalf. A full first and last name with middle initial or name, if any, of each inventor are required. The post office address and citizenship of each inventor are also required. Publication The application will be published by the PTO eighteen months after filing. If the application is not going to be foreign filed, the applicant may request non-publication status for the applications. Office Action Applications, other than provisional applications, filed in the PTO are assigned for examination to the respective examining groups having charge of the areas of technology related to the invention. In the examining group, applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed or in accordance with examining procedures established by the PTO. The examination of the application consists of a study of the application for compliance with the legal requirements and a search through the United States patents, foreign patent documents, and available literature stored in the PTO, to determine if the claimed invention is new and non-obvious. The applicant is notified in writing of the examiner's decision in an "Office Action", which is normally mailed to the patent attorney of record. The reasons for any adverse action or any objection or requirement are stated in the action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of the application. If the claimed invention is not directed to patentable subject matter, the claims will be rejected. 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. 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. Applicant's Response to First Office Action The applicant must request reconsideration of the application by the examiner in writing, and must distinctly and specifically point out the supposed errors in the office action. The applicant must respond to every ground of objection and rejection in the office action. Amendments to the specification or drawings must not include "new matter" beyond the original disclosure. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even though supported by a supplemental oath or declaration. The new matter can only be shown or claimed in a separate application. After response by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, e.g., whether the claims are rejected or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second office action will usually be made "final". After a final rejection, the applicant's response is limited to an appeal in the case of rejection of any claim and further amendment is restricted. Response to a final rejection must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. Restrictions If two or more inventions are claimed in a single application, and are regarded by the PTO to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner. Allowance and Issue Fee If after examination of the application the patent application is found to be allowable, a "Notice of Allowance" will be sent to the applicant. A fee for issuing the patent is due within three months of the date of the notice. Once the issue fee is paid, a patent will issue from the PTO. If timely payment of the issue fee is not made, the application will be regarded as abandoned. Issue of Patent The patent is issued in the name of the United States under the seal of the PTO. The patent contains a grant to the patentee, and a printed copy of the specification and drawings from the application is annexed to the patent and forms a part of it. Maintenance fees must be paid 3 1/2, 7 1/2 and 11 1/2 years after the original grant of a patent to maintain the patent in force. All products covered by the claims of an issued patent should be marked with the patent number in order to place the public on notice of the patent. After the patent has expired, anyone may make, use, offer for sale or sell, or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. The patent term may be extended for certain pharmaceuticals and for certain circumstances as provided by law. Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or United States territories, or the importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in an appropriate federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise, as a defense, question the validity of the patent and assert that the alleged infringement does not constitute infringement. Infringement is determined primarily by analysis of the language of the claims of the patent. If the alleged infringement matches up entirely with the language of any of the claims of the patent, there is literal infringement of the patent. In some cases if no literal infringement can be found, the defendant can be found to be infringing if his/her product or process is a legal "equivalent" to what is claimed in the patent. The PTO has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement patent may be patentable, but it might infringe a prior unexpired patent that the invention improved upon, if there is one. FOREIGN PATENT PROTECTION Patent applications may be filed in foreign countries throughout the world in order to protect an invention. The decision to file foreign applications is primarily a business decision. If a company believes that the invention will generate a great deal of revenue in a foreign country and it anticipates local competition, the filing of a patent application should be considered. Generally, foreign patent protection is very expensive. Under U.S. patent law, an inventor has one year from the date of first disclosure of the invention to file a U.S. patent application. The United States is the only major industrialized country in the world that allows for a public disclosure prior to the filing of a patent application. In the rest of the world, an "absolute novelty" rule is used. This rule bars patent protection for, in most cases, an invention that has been disclosed to the public any time prior to the filing of a patent application. The filing of a patent application in the United States provides a "priority date" for subsequently filed foreign patent applications. This means that foreign patent applications corresponding to the U.S. patent application can claim the benefit of the U.S. filing date. Accordingly, a U.S. patent application should be filed for an invention prior to any public disclosure of the invention in order to comply with the "absolute novelty" rule discussed above. Foreign patent applications for the most part are examined in a manner similar to examination in the United States. Most foreign patents have a term of 20 years from the earliest filing date. |