Patents

Patents protect new and useful processes, machines, articles of manufacture, compositions of matter or improvements thereof. United States patents are valuable business assets because they give owners a constitutionally sanctioned 20-year monopoly to exclusively make, use and sell the patented invention. The purpose of the patent system is to enhance the incentive to develop new technologies that are important to everyone in society. United States patent law recognizes three types of patents: Utility, Design and Plant; the following discussion focuses on utility patents, unless otherwise stated.

Contents of a Patent Application

– As a threshold issue, in order to be successfully issued as a patent, the application for patent must sufficiently disclose the invention in its “best mode” to enable a “person skilled in the applicable art” to “practice” the invention. It is not necessary to offer all possible ways to make and use the invention, only the best example that the inventor has conceived at the time of application. There are two main parts to the U.S. patent application: the drawings and the specification.

The Drawings

– The U.S. Patent and Trademark Office (“PTO”), in enforcing the patent laws, only requires drawings when the nature of the invention makes them necessary for understanding the subject matter. There is no rule mandating a certain number of drawings that must be included in the application; the only requirement is that each element described in the specification appears in the drawings. Defects in drawings can be corrected during prosecution of the application before the patent office without penalty.

The Specification

– The specification is that portion of the patent application that describes the invention in detail. Included in the specification are the description and the claims. It is the claims that define the invention in which property rights are created; information that appears in the description that covers more than the elements of the invention contained within the claims will not benefit the applicant (only the claims create property rights).

It is critical that the specification as originally filed adequately describe all inventions claimed because later-added description (i.e. “new matter”) will not be afforded the original filing date, and in fact may be barred from patenting altogether. The inventor and patent practitioner must, therefore, work closely together prior to filing the initial application to avoid leaving any inventive part out of the document. Furthermore, strict requirements exist for interpretation of the language of a patent application; registered patent attorneys are uniquely qualified to understand these criteria.

Patentability

– There are three general requirements for an invention to be patentable – utility, novelty and nonobviousness.

Utility

– Perhaps the easiest standard to meet, “utility” mandates that the invention have some usefulness. The invention need not have any particular level of utility, but it must be more than merely a novelty or curiosity and cannot be solely detrimental. At least one specific utility must be identified within the patent application.
Novelty – An invention is said to be novel if it is new and has not been anticipated by others. In assessing novelty, the patent laws create certain “statutory bars” to patentability for lack of novelty. These bars focus on the inventors’ and others’ acts.

There are three groups of statutory bars: those relating to acts occurring before the date of invention (group I), those relating to acts occurring any time before the patent appli-cation is filed (group II), and those relating to acts occurring more than one year before the patent application is filed (group III). Some of the types of acts that may trigger a statutory bar are listed here:

Group I (before “invention”)

  • the invention is already known or used by another
  • the invention was invented by another who has not suppressed or concealed it

Group II (before filing)

  • the inventor abandoned the invention
  • the inventor did not invent the subject matter sought to be patented

Group III (1 year before filing)

  • the invention was patented or described in a printed publication
  • the invention was in public use or on sale

As can be seen from the preceding (albeit incomplete) list, one must carefully manage any disclosures of the invention in order to avoid barring one’s self from eligibility for a patent.

Non-obviousness – Perhaps the least “concrete” standard to meet, non-obviousness is nonetheless a common reason for rejection of claims in a patent application. In order to be patentable, the invention must represent some advance over the “prior art” so that the “ordinary person skilled in that prior art” would not have been capable of making the advance. A few of the considerations that are relevant to determining whether or not a particular invention is obvious are:

– the invention has met great commercial success
– there was a long-felt need for the invention that was not met until this invention
– experts in the field didn’t believe that the invention was viable

The Patenting Process – The patenting process begins with the filing of a patent application along with the appropriate filing fee. The amount of the filing fee varies, depending upon several factors, but starts at $125 for Provisional Utility Patent Applications, $533 for Non-provisional Utility Patent Applications, $415 for plant patent applications and $265 for design patent applications (as of 10/5/2012).

Once filed, “prosecution” of the application begins with the PTO assigning the application to a patent examiner. The examiner will “examine” the application for patentability and will conduct formal communications with the point of contact for the application (typically a registered patent attorney). Once filed, the words “patent pending” should be ascribed to any copies of the invention that are distributed.

Although the PTO continues to streamline the prosecution process, current applications require an average of over 18 months to issue as a patent. Under the GATT provisions, a patent is effective for 20 years from the filing date of the application.