PATENTS AND
INVENTIONS
What Can Be
Patented
In the language of 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. The word
“process is defined by law as a process, act or
method, and primarily includes industrial or technical
processes. The term “machine” used in the
statute needs no explanation. The term
“manufacture” refers to articles that are made,
and includes all manufactured articles. The term
“composition of matter” relates to chemical
compositions and may include mixtures of ingredients as
well as new chemical compounds. These classes of subject
matter taken together include practically everything that
is made by man and the processes for making the
products.
Interpretations of the
statute by the courts have defined the limits of the
subject matter that can be patented, thus it has been
held that the laws of nature, physical phenomena, and
abstract ideas are not patentable subject
matter.
A patent cannot be
obtained upon a mere idea or suggestion. A patent is
granted upon the new machine, manufacture, etc., not upon
the idea or suggestion of a new machine. A complete
description of the actual machine or other subject matter
for which a patent is sought is required.
Nature of Patent and
Patent Rights
The patent grant confers
“the right to exclude others from making, using,
offering for sale, or selling the invention throughout
the United States or importing the invention into the
United States” and its territories and possessions
for which the term of the patent shall be generally 20
years from the date on which the application for the
patent was filed in the United States or, if the
application contains a specific reference to an earlier
filed application, from the date of the earliest such
application was filed, and subject to the payment of
maintenance fees as provided by law.
The exact nature of the
right conferred must be carefully distinguished, and the
key is in the words “right to exclude” in the
phrase just quoted. The patent does not grant the right
to make, use, offer for sale or sell or import the
invention but only grants the exclusive nature of the
right. Any person is ordinarily free to make, use, offer
for sale or sell or import anything he/she pleases, and a
grant from the government is not necessary. The patent
only grants the right to exclude others from making,
using, offering for sale or selling or importing the
invention.
Neither may a patentee
make, use, offer for sale, or sell, or import his/her own
invention if doing so would infringe the prior rights of
others. A patentee may not violate the federal antitrust
laws, such as by resale price agreements or entering into
combination in restraints of trade, or the pure food and
drug laws, by virtue of having a patent. Ordinarily there
is nothing that prohibits a patentee from making, using,
offering for sale, or selling, or importing his/her own
invention, unless he/she thereby infringes another’s
patent which is still in force. For example, a patent for
an improvement of an original device already patented
would be subject to the patent on the device.
The term of the patent is
generally 20 years from the date on which the application
for the patent was filed in the United States.
Novelty and
Non-Obviousness, Conditions for Obtaining a
Patent
For an invention to be
patentable it must be new as defined in the patent law,
which provides that 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 or in public use
or on sale in this country more than one year prior to
the application for patent in the United States. . .
.”
If the invention has been
described in a printed publication anywhere in the world,
or if it was known or used by others in this country
before the date that the applicant made his/her
invention, a patent cannot be obtained. If the invention
has been described in a printed publication anywhere, or
has been in public use or on sale in this country more
than one year before the date on which an application for
patent is filed in this country, a patent cannot be
obtained. In this connection it is immaterial when the
invention was made, or whether the printed publication or
public use was by the inventor himself/herself or by
someone else. If the inventor describes the invention in
a printed publication or uses the invention publicly, or
places it on sale, he/she must apply for a patent before
one year has gone by, otherwise any right to a patent
will be lost. The inventor must file on the date of
public use or disclosure, however, in order to preserve
patent rights in many foreign countries.
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
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. For example, the substitution of one color for
another, or changes in size, are ordinarily not
patentable.
Disclosure Document
Program
A service provided by the
United States Patent and Trademark Office
(“USPTO”) is the acceptance and preservation
for two years of “Disclosure Documents” as
evidence of the date of conception of an
invention.
A paper disclosing an
invention (called a Disclosure Document) and signed by
the inventor or inventors may be forwarded to the USPTO
by the inventor (or by any one of the inventors when
there are joint ventures), by the owner of the invention,
or by the attorney or agent of the inventor(s) or owner.
The Disclosure Document will be retained for two years,
and then be destroyed unless it is referred to in a
separate letter in a related patent application filed
within those two years.
THE DISCLOSURE DOCUMENT
IS NOT A PATENT APPLICATION. THE DATE OF ITS RECEIPT IN
THE USPTO WILL NOT BECOME THE EFFECTIVE FILING DATE OF
ANY PATENT APPLICATION SUBSEQUENTLY FILED. Thus, the
two-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. It must be recognized that, in establishing
priority of invention, an affidavit or testimony
referring to a Disclosure Document must usually also
establish diligence in completing the invention or in
filing the patent application after the filing of the
Disclosure Document.
These documents will be
kept in confidence without publication in accordance with
35 U.S.C. 122.
This program does not
diminish the value of the conventional, witnessed,
permanently bound, and page-numbered laboratory notebook
or notarized records as evidence of conception of an
invention, but it provides a more credible form of
evidence than that provided by the mailing of a
disclosure to oneself or another person by registered
mail.
Who May Apply for a
Patent
According to the law,
only the inventor may apply for a patent, with certain
exceptions. If a person who is not the inventor should
apply for a patent, the patent, if it were obtained,
would be invalid. The person applying in such a case who
falsely states that he/she is the inventor would also be
subject to criminal penalties. If the inventor is dead,
the application may be made by legal representatives,
that is, the administrator or executor of the estate. If
the inventor is insane, the application for patent may be
made by a guardian. If an inventor refuses to apply for a
patent or cannot be found, a join inventor or, if there
is no joint inventor available, a person having a
proprietary interest in the invention may apply on behalf
of the non-signing inventor.
If two or more persons
make an invention jointly, they must apply for a patent
as joint inventors. A person who makes only a financial
contribution is not a joint inventor and cannot be joined
in the application as an inventor. It is possible to
correct an innocent mistake in erroneously omitting an
inventor or in erroneously naming a person as an
inventor.
Provisional
Application for a Patent
Since 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.
Claims and oath or declaration are NOT required for a
provisional application. Provisional application provides
a means to establish an early effective filing date in a
patent application and permits the term “Patent
Pending” to be applied in connection with the
invention. Provisional applications may not be filed for
design inventions.
Provisional applications
are NOT examined on their merits. A provisional
application will become abandoned by the operation of law
12 months from its filing date. The 12-month pendency for
a provisional application is not counted toward the
20-year term of a patent granted on a subsequently filed
non-provisional application which claims benefit of the
filing date of the provisional application.
Non-Provisional
Application for a Patent
A non-provisional, also
known as a regular utility application, for a patent is
made to the Director of the United States Patent and
Trademark Office and includes:
A written document which
comprises a specification (description and claims), and
an oath or declaration;
A drawing in cases in
which a drawing is necessary; and
Filing, search, and
examination fees
The filing date of an
application for patent is the date on which a
specification (including at lease one claim) and any
drawings necessary to understand the subject matter
sought to be patented are received in the USPTO; or the
date on which the last part completing the application is
received in the case of a previously incomplete or
defective application.
Publication of Patent
Applications
Publication of patent
applications is required for most plant and
non-provisional utility patent applications. On filing of
a plant or utility application on or after November 29,
2000, an applicant may request that the application not
be published, but only if the invention has not been and
will not be the subject of an application filed in a
foreign country that requires publication 18 months after
filing (or earlier claimed priority date) or under the
Patent Cooperation Treaty. Publication occurs after the
expiration of an 18-month period following the earlier
effective filing date or priority date claimed by an
application. Following publication, the application for
patent is no longer held in confidence by the Office and
any member of the public may request access to the entire
file history of the application.
As a result of
publication, an applicant may assert provisional rights.
These rights provide a patentee with the opportunity to
obtain a reasonable royalty from a third party that
infringes a published application claim provided actual
notice is given to the third party by applicant, and a
patent issues from the application with a substantially
identical claim. Thus, damages for pre-patent grant
infringement by another are now available.
Specification
(Description and Claims)
The patent specification
must include a written description of the invention and
of the manner and process of making and using it, and it
required to be in such full, clear, concise, and exact
terms as to enable any person skilled in the
technological area to which the invention pertains, or
with which it is most nearly connected, to make and use
the same.
The specification must
set forth the precise invention for which a patent is
solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe
completely a specific embodiment of the process, machine,
manufacture, composition of matter, or improvement
invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated
by the inventor for carrying out the invention must be
set forth.
In the case of an
improvement, the specification must particularly point
out the part or parts of the process, machine,
manufacture, or composition of matter to which the
improvement relates, and the description should be
confined to the specific improvement and to such parts as
necessary cooperate with it or as may be necessary to a
complete understanding or description of it.
The specification
concludes with a claim or claims particularly pointing
out and distinctly claiming the subject matter that the
applicant regards as the invention. The portion of the
application in which the applicant sets forth the claim
or claims is an important part of the application, as it
is the claims that define the scope of the protection
afforded by the patent and which questions of
infringement are judged by the courts.
Office
Action
The applicant is notified
in writing of the examiner’s decision by an
“Office Action” which is normally mailed to the
attorney or agent of record. The reasons for any adverse
action or any objection or requirement are stated in the
Office action and such information or references are
given as may be useful in aiding the applicant to judge
the propriety of continuing the prosecution of his/her
application.
If the claimed invention
is not directed to patentable subject matter, the claims
will be rejected. If the examiner finds that the claimed
invention lacks novelty or differs only in an obvious
manner from what is found in the prior art, the claims
may also be rejected. It is not uncommon for some or all
of the claims to be rejected on the first Office Action
by the examiner; relatively few applications are allowed
as filed.
Applicant’s
Reply
The applicant must
request reconsideration in writing, and must distinctly
and specifically point out the supposed errors in the
examiner’s Office Action. The applicant’s reply
must appear throughout to be a bona fide attempt to
advance the case to final action or allowance. The mere
allegation that the examiner has erred will not be
received as a proper reason for such
reconsideration.
In amending an
application in reply to a rejection, the applicant must
clearly point out why he/she thinks the amended claims
are patentable in view of the state of the art disclosed
by the prior references cited or the objections made.
He/she must also show how the claims as amended avoid
such references or objections. After reply by the
applicant, the application will be reconsidered, and the
applicant will be notified as to the status of the
claims, that is, whether the claims are rejected, or
objected to, or whether the claims are allowed, in the
same manner as after the first examination. The second
Office Action usually will be made final.
Interviews with examiners
may be arranged, but an interview does not remove the
necessity of replying to Office Actions within the
required time.
Appeal to the Board of
Patent Appeals and Interferences and to the
Courts
If the examiner persists
in the rejection of any of the claims in an application,
or if the rejection has been made final, the applicant
may appeal to the Board of Patent Appeals and
Interferences in the United States Patent and Trademark
Office.
As an alternative to
appeal, in situations where an applicant desires
consideration of different claims or further evidence, a
request for continued examination (RCE) or a continuation
application is often filed. For the requirements for
filing an RCE, see 37 CFR 1.114. An RCE is not available
in an application for a design patent, but a continuation
of a design application may be filed as a Continued
Prosecution Application (CPA) under 37 CFR
1.53(d).
Joint
Ownership
Patents may be owned
jointly by two or more persons as in the case of a patent
granted to joint inventors, or in the case of the
assignment of a part interest in a patent. Any joint
owner of a patent, no matter how small the part interest,
may make, use, offer for sale and sell and import the
invention for his or her own profit provided they do not
infringe another’s patent rights, without regard to
the other owners, and may sell the interest or any part
of it, or grant licenses to others, without regard to the
other joint owner, unless the joint owners have made a
contract governing their relation to each other. It is
accordingly dangerous to assign a part interest without a
definite agreement between the parties as to the extent
of their respective rights and their obligations to each
other, and highly desirable for joint inventors to have a
written agreement between them to govern their respective
rights.
The drawing up of all
related patent agreements is within the field of an
attorney at law.
Infringement of
Patents
Infringement of a patent
consists of the unauthorized making, using, offering for
sale, or selling any patented invention within the United
States or territories, or importing into the United
States of any patented invention during the term of the
patent. If a patent is infringed, the patentee may sue
for relief in the appropriate federal court. The patentee
may ask the court for an injunction to prevent the
continuation of the infringement and may also ask the
court for an award of damages because of the
infringement. In such an infringement suit, the defendant
may raise the question of the validity of the patent,
which is then decided by the court. The defendant may
also aver that what is being done does not constitute
infringement. Infringement is determined primarily by the
language of the claims of the patent and, if what the
defendant is making does not fall within the language of
any of the claims of the patent, there is no literal
infringement.
Patent Marking and
Patent Pending
A patentee who makes or
sells patented articles, or a person who does so for or
under a patent is required to mark the articles with the
word “Patent” and the number of the patent. The
penalty for failure to mark is that the patentee may not
recover damages from an infringer unless the infringer
was duly notified of the infringement and continued to
infringe after the notice.
The marking of an article
as patented when it is not in fact patented is against
the law and subjects the offender to a penalty. Some
persons mark articles sold with the terms “Patent
Applied For” or “Patent Pending.” These
phrases have no legal effect, but only give information
that an application for patent has been filed in the
USPTO. The protection afforded by a patent does not start
until the actual grant of the patent. False use of these
phrases or their equivalent is prohibited.
Design
Patents
The patent laws provide
for the granting of design patents to any person who has
invented any new and non-obvious ornamental design for an
article of manufacture. The design patent protects only
the appearance of an article, but not its structural or
functional features. The proceedings relating to granting
of design patents are the same as those relating to other
patents with a few differences. See current fee schedule
for the filing fee for a design application. A design
patent has a term of 14 years from grant, and no fees are
necessary to maintain a design patent in force. If on
examination it is determined that an applicant is
entitled to a design patent under the law, a notice of
allowance will be sent to the applicant or
applicant’s attorney, or agent, calling for the
payment of an issue fee. The drawing of the design patent
conforms to the same rules as other drawings, but no
reference characters are allowed and the drawing should
clearly depict the appearance, since the drawing defines
the scope of patent protection. The specification of a
design application is short and ordinarily follows a set
form. Only one claim is permitted, following a set form
that refers to the drawing(s). See Design.
Plant
Patents
The law also provides for
the granting of a patent to anyone who has invented or
discovered and asexually reproduced any distinct and new
variety of plant, including cultivated sports, mutants,
hybrids, and newly found seedlings, other than a
tuber-propagated plant or a plant found in an
uncultivated state.
Treaties and Foreign
Patents
Since the rights granted
by a U.S. patent extend only throughout the territory of
the United States and have no effect in a foreign
country, an inventor who wishes patent protection in
other countries must apply for a patent in each of the
other countries or in regional patent offices. Almost
every country has its own patent law, and a person
desiring a patent in a particular country must make an
application for patent in that country, in accordance
with the requirements of that country.
The laws of many
countries differ in various respects from the patent law
of the United States. In most foreign countries,
publication of the invention before the date of the
application will bar the right to a patent. In most
foreign countries maintenance fees are required. Most
foreign countries require that the patented invention
must be manufactured in that country after a certain
period, usually three years. If there is no manufacture
within this period, the patent may be void in some
countries.
A treaty known as the
Patent Cooperation Treaty was negotiated at a diplomatic
conference in Washington, D.C., in 1970. The treaty came
into force in 1978, and is now adhered to by over 100
countries, including the United States. The treaty
facilitates the filing of applications for patent on the
same invention in member countries by providing, among
other things, centralized filing procedures and a
standardized application format.
The timely filing of an
international application affords applicants an
international filing date in each country which is
designated in the international application and provides
(1) a search of the invention and (2) a later time period
within which the national applications for patent must be
filed. A number of patent attorneys specialize in
obtaining patents in foreign countries, including this
Firm.
Under U.S. law it is
necessary, in the case of inventions made in the United
States, to obtain a license from the Director of the
USPTO before applying for a patent in a foreign country.
Such a license is required if the foreign application is
to be filed before an application is filed in the United
States or before the expiration of six months from the
filing of an application in the United States.
Foreign Applicants for
U.S. Patents
The patent laws of the
United States make no discrimination with respect to the
citizenship of the inventor. Any inventor, regardless of
his/her citizenship, may apply for a patent on the same
basis as a U.S. citizen. There are, however, a number of
particular points of special interest to applicants
located in foreign countries.
The application for
patent in the United States must be made by the inventor
and the inventor must sign the oath or declaration (with
certain exceptions), differing from the law in many
countries where the signature of the inventor and an oath
of inventorship are not necessary. If the inventor is
dead, the application may be made by his/her executor or
administrator, or equivalent, and in the case of mental
disability it may be made by his/her legal representative
(guardian).
No U.S. patent can be
obtained if the invention was patented abroad before
applying in the United States by the inventor or his/her
legal representatives if the foreign application was
filed more than 12 months before filing in the United
States. Six months are allowed in the case of designs. 35
U.S.C. 172.
For further information,
contact our Patent Department at : patents@mkspc.com
