Introduction to Patents

The rights of an inventor to use, manufacture, sell and license an invention is likely to be under constant interference from others copying the invention or idea unless legal protection has been obtained. The best way to legally protect an invention or idea is to “patent” it. A patent will prevent others replicating the invention or idea for a set period of time. In the United States, this period is for twenty years from the earliest claimed filing date. During this period, the patentee has the exclusive right to use, manufacture, sell and license the invention or idea. Obtaining a patent, however, is a complex process and although this book simplifies the process to a large extent, it is always recommended that a patent attorney or patent agent be retained to draft and prosecute the patent application. This book will provide the reader with a fair idea on how to conduct a patent search, draft a patent application, prosecute a patent application, file an appeal and to deal with patent infringement. The first chapter provides a basic overview of commonly used terms and expressions in this field and a brief foundation and growth of patent law in the United States.

• • Invention
    An invention refers to a discovery or creation of a new process or material or composition. However, in order to be granted a patent, an invention must also meet the criteria of being “useful”. According to the U.S. Patent and Trademark Office, (U.S. PTO) 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”. The U.S. PTO has clarified that the term “useful” in this connection refers to the condition that the subject matter has 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.”
  • First to Invent
    In the United States, the system of “first to invent” is followed. According to this system, the right to the grant of the patent lies with the inventor of the concept. A person is said to be the first inventor, if the person has discovered or created the concept and reduced the concept to practice. In almost all other countries, the system of “first to file” is followed, wherein the first applicant of the patent is considered to have the prima facie right to the grant of the patent. These countries do not require that the inventor be identified in the application as opposed to the United States that requires that the first inventor be identified in the application.
  • Patent: A patent is a set of exclusive property rights granted by the Patent Office in a country to an inventor or his assignee for a particular invention or concept for a set period of time. These rights include the right to make, use, sell and license the invention for the term of the patent. These rights are legally enforceable and give the inventor the opportunity to commercially exploit his invention or idea for the duration of the patent. A patent essentially is an exclusive license granted to the inventor to prevent others from making, using and selling the invention. The U.S. PTO defines a patent as the right given to the inventor to “exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States for a period of twenty years. Under US law, only an inventor can apply for a patent. Two or more persons may also apply for a patent as joint inventors at the U.S Patent Office. According to US patent law, officers and employees of the U.S. PTO are prohibited from applying for a patent or acquiring any right or interest in a patent, other than by gift or inheritance.
  • Term of the Patent: The term of a patent is usually for twenty years from the filing date of the earliest patent application in most countries. In the United States, this term can be adjusted for delays with the U.S. PTO for patent applications filed on or after June 8, 1995. Continuation, divisional and continuation in part applications filed or after June 8, 1995, has a term which ends “twenty years from the filing date of earliest application for which a benefit is claimed”.
  • Patentable Invention: For an invention to be patentable, it is important that the invention be new, non obvious and useful. This means that “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.” And “even if the subject matter 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 laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. Also, a mere idea or suggestion cannot be patented. According to the U.S. PTO, “the patent is granted upon the new machine, manufacture, etc., as has been said, and not upon 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.Further, an invention cannot be patented 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.

    Under the Atomic Energy Act (1954) the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon is prohibited

  • Prior Art: Before a patent application is filed, it is recommended that a prior art search be conducted in order to determine the novelty of the invention. Prior Art, also known as “state of the art” includes information that is “publicly available which might be relevant to the applicant’s claim of originality”. The examiner of a patent application will search the prior art as disclosed in patents and other published documents. The novelty and non obviousness of the invention are judged based upon the prior art related to the invention.
  • Prior Art Reference: A “prior art reference” may include existing patents, utility models or literature. The patent applicant has a duty to submit as many prior art references that they know of to the U.S. PTO. The examiner will in turn determine if the references submitted meet the criteria as prior art.
  • Patentee: The party that has been granted the exclusive right to a patent is known as the patentee.
  • Patent Applicant: The party applying for a patent at its respective patent office is known as the patent applicant.
  • Assignee: When the rights in a patent or patent application is assigned to another, the person or company receiving these rights is known as the assignee and the person or company assigning these rights is known as the assignor. Often, the person listed as inventor of a patent or patent application assigns his entire interest in the patent to another, usually the company of his employment. Such inventor is known as the assignee and the company or party benefitting from such assignment is known as the assignor.
  • Patent Infringement: Using of another’s patented invention or part thereof without permission from the owner of the patent during the term of the patent is known as patent infringement. This use must be commercial or have a commercial purpose. Patent infringement refers to the infringement of one or more of the claims in the patent. Patent Infringement can occur only in the country where the patent has been granted and patent rights are territorial in nature. Patent Infringement is explained in detail in Chapter 8.
  • Statutory Subject Matter: The term “statutory subject matter” is often used to refer to the subject matter that is patentable by law. According to 35 U.S.C 101, statutory subject matter is “Whoever 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 therefore, subject to the conditions and requirements of this title.”
  • Types of Patents

• • Utility Patent Application: A utility patent application may be filed for any “new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof”. Utility patent applications are of two kinds – provisional and non provisional. A provisional patent application (PPA) may be filed at the U.S. PTO for a lower cost. A provisional patent application provides a means to receive an earlier filing date (priority date) in the non provisional patent application filed later. A provisional patent application is not examined and has a validity period of 12 months. Before the expiry of the 12 month period, the counterpart non provisional patent application (NPA) must be filed with the U.S. PTO in order to claim the benefit of the provisional application. “The later-filed non-provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention”.
  • Design Patent: A design patent is granted for an ornamental design on a functional item. The U.S. PTO will grant a design patent for a new and non obvious ornamental design. This patent will not protect the functional features of the product. It will only protect the design of the product. The term of a design patent is 14 years from the date of the grant of the patent.
  • Plant Patent “Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.” The term of a plant patent is 20 years from the date of the earliest filed application.
  • International (PCT) Patent Application: Under the Patent Co-operation Treaty (PCT), applicants belonging to the member countries are allowed to file an international application prior to the expiry of 12 months from the date of the first filed application. A PCT application will grant the applicant an additional period of 30 months (31 months in some countries) from the earliest filed application to file his patent application in the countries of his choice. This is known as “national phase entry”.
  • Patent Pending: The term “Patent Pending” is used by the patent applicant for an invention before the patent issues. It acts as a warning to the public that a patent will issue shortly and thereby seeks to prevent patent infringement. The term is generally used on the manufactured product or on the advertising for such product. Usage of this term when no patent has been applied for is illegal and such usage will be fined.

Before the first federal enactment on patents in 1790, most states had their own patent laws. In order to make patent law a federal matter, the provision, “Congress shall have power … to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” was drafted into the U.S. Constitution. The first Patent Act titled, “An Act to Promote the Progress of Useful Arts” was enacted in 1790. Under this Act, patents were granted for a term of 14 years. The main requirement for an application under this Act was a specification that described the invention. The first U.S patent number X000001 was granted in 1790.

In the time of Thomas Jefferson, this Act was repealed and replaced by the Patent Act of 1973. Unlike the previous Act, a description was required to be filed along with a specification of the invention. Only citizens of the United States could have granted patents according to this Act. In 1800, the Act was further amended to include foreigners, resident in the United States for two years to apply for patents. They were required however, to take an oath that to the best of their knowledge the invention was not used in the United States or abroad.

• Pennock v. Dialogue: In 1829, it was in the case of Pennock v. Dialogue that for the first time the Court held that patents could not be granted to inventions that were already in use. The Court stated, “the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent.”
• Grant v. Raymond: In the case of Grant v. Raymond in 1832, the Court ruled that an “insufficient description of a patent was grounds for defense” in a case of patent infringement. The Court stated, “If the party is content with defending himself…..shows that the patentee has failed in any of those prerequisites on which the authority to issue the patent is made to depend, his defense is complete”In 1832, a new Act was created which permitted all resident aliens who wished to become US citizens to file patent applications in the United States provided that they work the invention publicly in the United States within one year of the grant. In 1842, the existing patent law was amended to include “any new and original design for a manufacture or for printing on a fabric.” The Patent Office was transferred from the Department of State to the Department of the Interior in 1849.
• Hotchkiss v. Greenwood: The Supreme Court case of Hotchkiss v. Greenwood, was the first to lay down the principle that a patentable invention was required to be non obvious, in addition to being new and useful. However, it was not until 1952 that the standard of “non obviousness” was set in an enactment.From 1836 to 1864, the applicant was given the right to amend the specification if there were any objections, however, no new matter could be added during the prosecution stage. In 1861, the term of the patent was changed from 14 years to 17 years from the date of the grant of the patent. The United States joined the Paris Convention for the Protection of Industrial Property in 1887. The Convention allowed one applicant from a contracting state to file an application in another contracting state and claim the filing date as the date of the first application provided the applicant files the second application within 12 months from the date of the first filing.In 1925, the Patent Office was transferred to the Department of Commerce and Labor. The Plant Patent Act provided for patent protection for asexually reproduced plants in 1930.
• Electric Storage Battery v. Shimadzu: The Shimadzu case in 1939 established the principle of “first to invent” followed in present U.S. patent law
• Cuno Engineering v. Automatic Devices Corp: In 1941, the case of Cuno Engineering v. Automatic Devices Corp established the “Flash of Genius Doctrine” a test of patentability of the invention. According to this test, the invention must be created by a flash of genius on the part of the inventor. “The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling”. However, his test was rejected in 1952 by the §103 enactment that established the standard of “non obviousness”.The basic structure of U.S. patent law was laid out in 1952 where an inventor had to describe not only his invention but the basis for its infringement. The Patent Co-operation Treaty (PCT) was signed 1968. It was in 1975 that the Patent Office was renamed the “The Patent and Trademark Office”. In 1982, the Court of Appeals for the Federal Circuit was established and the Court of Customs and Patent Appeals were abolished. In 1995, the Uruguay Round Table Agreement Act was adopted where the patent term was changed from 17 years from date of the grant to 20 years from date of the application.
• State Street Bank v. Signature Financial: In 1998, in the case of State Street Bank v. Signature Financial , it was held that business methods could be patented. In this case, the Court held that an invention was patentable if it involved some practical application. The Signature Financial Group, Inc. was granted U.S. Patent #5,193,056. The patent claim comprised of a “means for performing steps that are the requirements specified in an Internal Revenue Service regulation for avoiding taxes on a partnership.
• More easily allows registrant to issue a cease and desist letter A registered trademark makes it easier for the registrant to negotiate with, or stop a third party from infringing the registered trademark.
• Re Bilski: Ten years later in 2008, the Bilski ruling restricted the scope of business methods. In Re Bilski , the court laid down its test for patent eligible subject matter, and stated that the test in State Street Bank v. Signature Financial should no longer be relied upon. The Court ruled, “those portions of our opinions in State Street, relying on a “useful, concrete and tangible result analysis should not longer be relied on”. The deciding test to be applied if an invention is patent eligible according to the Bilski case is “if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing”. The Court went as far as to state that, “Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.”Currently, the United States Patent and Trademark Office (U.S. PTO) is the authority with regard to patents in the United States. The U.S. PTO publishes patents 18 months from the date of filing of the application. The Manual of Patent Examining Procedure (MPEP) provides the definitions and establishes the procedure with regard to the patentability of inventions. The current term of the patent is 20 years from the earliest claimed date of filing and this term may also be extended