A patent is the grant of the right to invoke the power of the federal legislature to exclude others from utilizing the inventor's discovery without his consent. Thus, a patent confers the right to exclude all others from making, using or selling the invention that is patented. Since patents are recognized as property, they may be mortgaged or assigned by the inventor just like any piece of real estate.
Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may be eligible for patent protection. Concepts and ideas are not patentable, but methods employing those concepts and ideas may well be. Mathematical algorithms are not eligible subject matter for patents. Processes that use specially programmed digital computers and mathematical techniques as essential steps are patentable. A product found in the identical state in nature is quite clearly unpatentable because it is not a manufacture. Living organisms are clearly patentable as manufactures where the inventor had a hand in their production and they possess characteristics different from those found in nature. Business methods that involve some variable reaction of a human participant are typically not eligible for patent protection. A new use of a known process, machine, manufacture, composition of matter, or material is eligible for protection. Thus, even if a composition is old, a process using it in a new and unobvious way may be patentable..
In order to secure a utility patent, an inventor must show that the claimed invention is (1) within one of the four statutory classes (i.e., process, machine, manufacture, and composition of matter), (2) new (i.e., the invention is novel), (3) useful (i.e., the invention has utility – it serves its intended objectives or function), and (4) unobvious over the prior art (i.e., the previously known subject matter).
When an invention is made by two or more persons jointly, they shall apply for a patent jointly. They may apply jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution or (3) each did not make a contribution to the subject matter of every claim of the patent.
Utility Patents are granted to anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. "Process" means a process or method; new industrial or technical processes may be patented. "Manufacture" refers to articles which are made. "Composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
Design Patents are granted to any person who has invented a new, original and ornamental design for an article of manufacture. The appearance of the article is protected.
Plant Patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.
Patents are granted for a term of 14 years for design patents, measured from the date of issue, and 20 years for utility patents (non-provisional type), measured from the date the patent application is filed with the United States Patent and Trademark Office (USPTO). Periodic maintenance fees are required for utility patents.
U.S.C. Section 102 - Conditions for patentability; novelty and loss of right to patent: “A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents. A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership Under Joint Research Agreements. Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art. For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if 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 such subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The most difficult, and subsequently the most contested issue in determining patentability is the question of "obviousness" under U.S.C. Section 103. The examiner must determine if your invention is beyond the ordinary skill of someone trained in the field of the invention with respect to the pertinent art existing at the time of your invention. Would any "mechanic" skilled in the art of your invention have done the same thing, thus making it an "obvious" invention or improvement to an invention? The Patent Office uses several factors to make their determination. This is a primary group consisting of 1) the scope and content of the prior art; 2) the differences between the prior art and the claims at issue; 3) the level of ordinary skill in the pertinent art. If a determination cannot be made using those three, then they look to 1) the commercial success of your invention, if any; 2) the long felt but unsolved needs which you addressed; 3) the failure of others in solving the needs. The first factor in the secondary considerations demonstrates the inadvisability of waiting until a patent issues before marketing your product. You may have to demonstrate commercial value in order to receive your patent.
Throughout the first sixty years of the United States patent system, the principal conditions for patentability were novelty and utility. Any eligible subject matter could be patented provided it was new and useful and not antagonistic to the public policy of the time.
In the middle of the 19th century a new condition for patentability was born. It arrived in the context of a case involving a patent on clay doorknobs. The Supreme Court was confronted with a jury instruction to the effect that the patent was void if no other ingenuity or skill was necessary to construct the knob than that of an ordinary mechanic acquainted with the business. The high Court affirmed, holding that "unless more ingenuity and skill ... were required ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." In other words, the improvement is the work of the skillful mechanic, not that of the inventor. These simple words ushered in a century of confusion and conflicting precedent that any patent lawyer practicing near the end of the period would quickly, even somewhat proudly, confirm to be unsurpassed by that generated in respect of any other issue in American law.
The test of "inventive novelty" or "invention" or even, in the approach of more thoughtful courts, "nonobviousness," that emerged from this period, was amorphous and subjective, with as many faces as names. Objective indicia of patentability, such as commercial success, long felt need and prior failure, were wholeheartedly embraced by some courts and quickly rejected by others. During the final two decades of the period, however, the tide seemed to swing permanently against the patentee, particularly in the Supreme Court. A patent owner unlucky enough to get to that Court had about one chance in five of walking away with a valid patent. The court went so far as to suggest that only those inventions involving a "flash of creative genius" would be patentable. Finally, in its last look at patentability prior to the Patent Act of 1952, The Court cautioned that "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements."
This was quite enough for the patent bar and, ultimately, Congress. The keystone provision of the sweeping revision to the patent laws embodied in the Patent Act of 1952 was 35 U.S.C. section 103, which was directed toward "moderating the extreme degrees of strictness exhibited by a number of judicial opinions over the past dozen or more years," and intended to have a "stabilizing effect and minimize great departures which have appeared in some cases."
Since June 8, 1995, the USPTO 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 under the GATT Uruguay Round Agreements. A provisional application for patent is a U.S. national application for patent filed in the USPTO under 35 U.S.C. Section 111 (b). It allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term "Patent Pending" to be applied.
The Section 111(a) non-provisional application for patent must be filed within 12 months of the provisional application for patent filing date in order to claim the benefit of the provisional application filing date. The period of up to one year of pendency for the provisional application is excluded from the term calculation of a granted patent that relies upon the provisional application for patent, thus providing a term endpoint that is 21 years from the provisional application filing date.
The provisional application for patent must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (Note: These pre filing disclosures, although protected in the United States, may preclude patenting in foreign countries.) A filing date will be accorded to a provisional application for patent only when it contains: (1) a written description of the invention, complying with all requirements of 35 U.S.C. Section 112; (2) any drawings necessary to understand the invention, complying with 35 U.S.C. Section 113; and (3) the names of all inventors. If any of these three items are missing or incomplete, no filing date will be granted. To be complete, a provisional application for patent must also include: the filing fee as set forth in 37 CFR 1 .1 6(k) and a cover sheet identifying the application as a provisional application for patent.
The provisional patent application provides simplified filing with a lower initial investment with one full year to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a non provisional application for patent; establishes an official United States patent application filing date for the invention; permits one year's authorization to use "Patent Pending" notice in connection with the invention; enables immediate commercial promotion of the invention with greater security against having the invention stolen; and provides the same confidentiality and access as regular, non-provisional patent applications.
Under our economic and patent systems, valuation of the worth of an inventor's product is left to the public. A patent in itself does not lend value to an invention. It merely allows an inventor to exclude others from using or selling it without his consent. If the public perceives value in the "Invention", they may be willing to pay the inventor for its use.
The terms "Patent Pending" and "Patent Applied For" are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file with and pending before the USPTO. The law imposes a fine on those who use the terms falsely.
The answer is "yes,” but the important question is whether you should handle the work yourself? Since the Patent Office cannot assist an inventor in the preparation of the application papers, the prosecution of the application, amendments, etc., it strongly advises prospective patent applicants to retain the services of an experienced patent practitioner.
According to the Patent Office publication General Information Concerning Patents:
“The preparation of an application for patent and the conducting of the proceedings in the Patent and Trademark Office to obtain the patent is an undertaking requiring knowledge of patent law and Patent and Trademark Office practice as well as knowledge of the scientific or technical matters involved in the particular invention.”
“The inventor may prepare his own application and file it in the Patent and Trademark Office and conduct proceedings himself, but unless he is familiar with these matters or studies them in detail, he may get into considerable difficulty. While a patent may be obtained in many cases by a person not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.”
A patent in itself will not sell your idea to a manufacturer. However, unless an invention is patentable, it will be extremely difficult, if not impossible, to convince a manufacturer that you own the idea. The patent allows the manufacturer to exclude others from making or selling the same product. For this right, the manufacturer may be willing to compensate the inventor for his/her idea.
Generally patents are issued approximately 18 to 24 months after filing the non-provisional patent application. During this period, the patent is pending. A first office action is usually received in approximately 10-14 months after the application is filed with the US Patent Office. After either amendment or other consultation, the patent process proceeds until conclusion. In some instances, it may be necessary or wise to continue prosecution of the application to gain desirable coverage of the invention or appeal unsubstantiated or unreasonable actions taken on the application by the Patent Examiner before the US Patent Trial and Appeal Board (PTAB).
We recommend that you wait until your invention is characterized as “patent pending" before disclosing the invention to prospective manufacturers and other third parties.
- Client undertakes confidential disclosure of the invention to the firm.
- Firm assesses the prospects for prototype development of the invention for thorough and greater understanding of the operating principles of the invention to support adequate disclosure of the invention in the patent application.
- Client exercises an option to conduct a patent novelty search to assess and determine the extent the invention meets US patentability requirements.
- Firm conducts a patent novelty search of domestic and foreign databases in accord with client's election.
- Firm prepares a patent novelty opinion that outlines the firm's findings and recommendations for further action.
- Approximately 2 weeks to conduct a comprehensive patent search and prepare the patent novelty opinion for discussion with the client.
- Firm prepares a provisional or a non-provisional patent application based on the needs of the client.
- Client conducts review of the first draft copy of the patent application.
- Firm incorporates client's comments and finalizes second draft copy of the patent application for supplemental review by the client.
- Firm prepares for client's execution a select number of transmittal documents to accompany filing of the patent application with the US Patent Office.
- Firm amends and conducts final review of the patent application for client's final review and approval.
- Firm electronically files the patent application and accompanying transmittal documents with the US Patent Office, upon which establishes patent pending status.
- Firm prepares and files with the US Patent Office an Information Disclosure Statement that sets forth disclosure of any and all prior art material to patentability of the invention in accord with applicant's duty of disclosure under 37 C.F.R. § 1.56.
- US Patent Office issues a First Office Action on the merits approximately 12-24 months after filing of the non-provisional patent application.
- A non-contested Office Action generally includes a Notice of Allowance of the patent application and a Fee Request for issuance of a US Patent certificate.
- Firm may request and conduct an interview with the Patent Examiner to clarify and possibly set grounds for overturning noted rejections/objections set forth in a contested Office Action.
- If the patent application is rejected, applicant has an opportunity to amend the patent application to conform with the Patent Examiner's requirements and/or present narrative that refuts the Patent Examiner's decision and offers grounds to support patentability of the invention.
- Firm prepares an Office Action Response for filing with the US Patent Office, generally within 3 months of receiving the First Office Action to avoid payment of supplemental fees.
- US Patent Office issues a Second, Final Office Action generally within 3-5 months from the First Office Action Response submitted to the US Patent Office.
- An accepted First Office Action Response allows the patent application to proceed for issuance of a US Patent certificate, which necessiates payment of an issue fee as set forth above.
- A nonaccepted Office Action Response generally limits the applicant to appealing the Patent Examiner's decision or refiling the patent application for further consideration by the US Patent Office, generally and unfortunately with the same Patent Examiner.