Patent Law

What is Patent Law?

Patent law, a form of intellectual property law, is designed to encourage inventors to disclose their innovations in technology for the purpose of promoting the common good by offering the incentive of a limited-time monopoly on such technology. Governed by federal law, namely, Title 35 of the United States Code, patent law applies to “[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, subject to the conditions and requirements of this title.” (35 U.S.C. § 101).

A patent grants its holder the exclusive right to prohibit others from making, using, importing, and selling the patented innovation for a limited period of time.  Congress enacted the Patent Act in accordance with its Constitutional grant of authority to secure for limited times to inventors the exclusive right to their discoveries. (See Article I, Section 8, Clause 8). “Granting exclusive rights to the inventor is intended to encourage the investment of time and resources into the development of new and useful discoveries.  In exchange for this limited monopoly, immediate disclosure of the patented information to the U.S. Patent and Trademark Office is required.  Once the term of protection has ended, the patented innovation enters the public domain.” (LII).

Requirements for Patentability

The five primary requirements for patentability are: Patentable subject matter, utility, novelty, and non-obviousness.

(1) The patentable subject matter requirement speaks to the types of inventions that will be considered for patent protection. The categories for patentable subject matter are broadly defined as “any process, machine, manufacture, or composition of matter, or improvement thereof.” (35 U.S.C. § 101). The Supreme Court noted the breadth of this in Diamond v. Chakrabarty, 447 U.S. 303 (1980), stating that Congress intended patentable subject matter to “include anything under the sun that is made by man.”

  • The Patent Act provides the following definitions of the aforementioned terms:
  • (i) “Process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes.
  • (ii) “Manufacture” refers to articles that are made, and includes all manufactured articles.
  • (iii) “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

(2) The invention must be useful. This means that the invention must have a utilitarian purpose and “also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.” (USPTO).

(3) The invention must be novel or new. The “novelty” requirement states that an invention cannot be patented if certain public disclosures of the invention have been made. While the law sets out specific rules governing public disclosures, in short, with the exception of disclosures made by the inventor less than one year before the patent application was filed, an invention will not normally be subject to patent protection if:

  • (i)    The invention was known to the public before the applicant filed for patent protection;
  • (ii) The invention was described in a printed publication before the applicant filed for patent protection; or
  • (iii) The invention was described in a published patent application or issued patent that was filed before the applicant filed for patent protection.

(4) The invention must be non-obvious. In addition to being new, the invention must be a non-obvious improvement over the prior art (35 U.S.C. Section 103). The subject matter sought to be patented must be “sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.” (USPTO). For example, “the substitution of one color for another, or changes in size are ordinarily not patentable.” (USPTO).

What Works are Protected by Patent Law?

There are three distinct types of patents that fall under the larger umbrella of patent law: utility, design and plant patents. The USPTO described them as follows:

  1.  Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. These are most commonly relief upon in fashion. Some recently issued design patents include: the designs of Christian Louboutin’s Azimut Leather Lace-up Ankle Boots, Manovra 70 Studded Leather and Pvc Slingback Pumps, Guerilla Studded Open-Toe Booties, Gortik bootie, Body Strass crystal-embellished mesh and leather pumps, and Tassilo Flat Black Patent Loafers With Spikes, among other styles. CÉLINE’s Case bag and Diamond bag designs are also protected, as is Alexander Wang’s Rocco bag design.
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What is NOT Protected by Patent Law?

In addition to inventions that do not meet the aforementioned factors, patent law does not protect a number of categories, as protection would violate public policy. Interpretations of the Patent Act by the courts have defined the limits of the field of subject matter that can be patented. Accordingly, “the laws of nature, physical phenomena, and abstract ideas” are not patentable subject matter. (USPTO). Similarly, a patent cannot be obtained upon a mere idea or suggestion; patents rights are granted upon the specific, new machine, manufacture, or process etc., and not upon the idea of the new invention.

How to you Receive Patent Protection?

In order to be eligible for patent protection, an inventor must file a patent application with the U.S. Patent and Trademark Office.  The key elements of a patent application include:

  1. the specification, which consists of a summary of the invention usually accompanied by drawings of the invention;
  2. one or more claims that identify and distinctly claim the subject matter that the applicant regards as the invention;
  3. an oath or declaration establishing that the inventor was, in fact, the first to invent the subject matter described in the specification; and
  4. filing, search, and examination fees.

A fundamental aspect of a patent application is the disclosure of sufficient information to enable others to practice the claimed invention. This means that the patent applicant is required to disclose the “best mode” of practicing the invention. (35 U.S.C. 112(a)). The USPTO has asserted that the best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. Moreover, In re: Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960) established that the “best mode” requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.

Per Cornell University Law School’s Legal Information Institute: Each patent application received by the USPTO is examined by a patent examiner in the order it is received.  The patent examiner is required to thoroughly study the patent application and investigate the available prior art. (See 37 C.F.R. § 1.104). Once the examination is complete, the examiner may accept the application and issue a patent; issue a rejection of some or all of the claims made in the application; or issue an objection if a problem with the form of the application is detected.  If a claim is rejected as unpatentable, or an objection to the form of the application is issued, the examiner must notify the applicant, stating the reasons for each rejection or objection and providing information and references to assist the applicant in judging the propriety of continuing the prosecution. (See 37 C.F.R. § 1.104; 35 U.S.C. § 132).

In general, it takes an average of about 18-22 months from the date of filing a patent application for the USPTO to complete the examination process, and the process in total, including attorney fees, can cost between $5,000 to $15,000 or more, depending on the intricacies of the invention.

What Rights Does Patent Protection Entail?

Most inventors seek patent protection in order to obtain actual or potential commercial advantages that go along with the right to exclude others from making, using, selling, or importing their invention. Such advantages include having the exclusive marketplace advantage over the invention and receiving income from the sale or licensing of the patent. Moreover, given the high cost of research and development associated with most patented inventions, the opportunity to recoup these costs through commercial exploitation of the invention may be the primary justification for undertaking research in the first place. (AIPLA).

A patent holder is granted the exclusive right to prevent others from making, using, offering for sale, or selling the patented invention. (See 35 U.S.C. § 154). As such, a patent holder is the only one who may make, use, or sell the invention embodied in his patent. Others may do so only with the authorization of the patent holder; such authorization is usually given through a patent license agreement.

What Constitutes Patent Infringement?

Infringement of a patent is the unauthorized making, using, selling, or importing of the patented invention during the term of the patent – 14 years from the date of filing for design patents, for instance. The scope of this right is governed by the claims associated with the issued patent. In most cases, a patent will issue with multiple claims, which are thereby protected. However, only one claim needs to be infringed in order for the entire patent to be infringed.

If a patent is infringed, the patent holder may sue for infringement in federal court for equitable (injunction to prevent further infringement) and legal (monetary damages) remedies. There are two primary defenses to patent infringement:  the patent is invalid; and even if the patent is valid, the products being made or sold do not infringe the patent. (LII).  The Patent Act provides that an issued patent is presumed valid, and the burden of establishing that a patent is invalid rests with the person asserting its invalidity.  (35 U.S.C. § 282). Unlike in copyright law, independent invention is not a defense to patent infringement.