Patent Specifics

Who issues patents?

Patents are issued by the federal government, specifically by the USPTO under the authority granted by the U.S. Constitution to Congress to enact laws relating to patents. The patent laws can be found in Title 35 of the United States Code.

What can be patented?

Under the patent statute, 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.

This seemingly simple definition of what may be patented is much more complicated in its application. Let us look at the individual components.

When is a process, machine, manufacture or composition of matter or improvement of these considered to be "new"?

A process, machine, manufacture or composition of matter or improvement of one of these is considered to be a "new" invention or discovery when it is novel and nonobvious.

What is "nonobvious"?

Nonobvious means that if the invention or discovery sought to be patented is not exactly shown by the "prior art" and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be "obvious." The invention or discovery sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention.

Example: The substitution of one color for another or changes in size are ordinarily not patentable.

When is a process, machine, manufacture or composition of matter or improvement of these considered to be "useful"?

The term "useful," as used in the patent law, means that the invention or discovery must have a useful 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.

When will a patent not be granted?

A patent cannot be granted under the patent law if: "(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," or "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States."

What cannot be patented?

In addition to inventions or discoveries that do not meet the standards for patentability mentioned above, interpretations of the statute by the courts have defined other limits of the subject matter that can be patented. These court decisions have held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.

Also, a patent cannot be obtained on a mere idea or suggestion. The patent is granted on the new machine, manufacture, etc. and not on the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

How does a design patent differ from a design copyright?

There is a fine line between copyright and patent protection when it comes to "useful articles." Some designs of useful articles may qualify for protection under the federal patent law. A design copyright does not protect the mechanical or utilitarian aspects of works of craftsmanship. It may, however, protect any pictorial, graphic or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus, a useful article may have both copyrightable and uncopyrightable features and patentable and nonpatentable features.

Example: A carving on the back of a chair or a floral relief design on silver flatware could be protected by copyright, but the actual design of the chair or flatware itself could not.

What is the "Disclosure Document Program"?

The Disclosure Document Program is a service provided by the USPTO for the acceptance and preservation for 2 years of "Disclosure Documents" as evidence of the date of conception of an invention.

A paper disclosing an invention, a "Disclosure Document," signed by the inventor or inventors may be forwarded to the USPTO by an inventor, by the owner of the invention, or by the attorney or agent of the inventor or owner. The Disclosure Document is retained for 2 years and then is destroyed unless it is referred to in a separate letter in a related patent application filed within the 2-year period.

Sidebar: It is very important to note that the Disclosure Document is not a patent application. The date it is received in the USPTO will not become the effective filing date of any later filed patent application. It is also important to note that the 2-year retention period is not a "grace period" during which the inventor can wait to file his or her patent application without possible loss of benefits.

What do I need to know about business method patents?

E-commerce has spurred creative minds to develop business processes that leverage the power of the Internet. Inventors of these new methods sought and secured patents, called "business method patents."

There are four main requirements for a business method patent:

  • Patentable subject matter-meaning anything that humans (versus nature, for example) create.
  • Usefulness-that is, it has a measurable, observable result.
  • Novelty-a component that is different from any prior knowledge or invention.
  • Nonobvious-a quality that a person with ordinary skills would not come up with.

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