A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, selling and importing an invention for a limited period of years, in exchange for publishing an enabling public disclosure of the invention. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce his or her rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.[1]:17
The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness.[2][3]
Under the World Trade Organization's (WTO) TRIPS Agreement, patents should be available in WTO member states for any invention, in all fields of technology, provided they are new, involve an inventive step, and are capable of industrial application.[4] Nevertheless, there are variations on what is patentable subject matter from country to country, also among WTO member states. TRIPS also provides that the term of protection available should be a minimum of twenty years.[5]
Contents
Definition[edit]
The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection). It is a shortened version of the term letters patent, which was an open document or instrument issued by a monarch or government granting exclusive rights to a person, predating the modern patent system. Similar grants included land patents, which were land grants by early state governments in the USA, and printing patents, a precursor of modern copyright.
In modern usage, the term patent usually refers to the right granted to anyone who invents something new, useful and non-obvious. Some other types of intellectual property rights are also called patents in some jurisdictions: industrial design rights are called design patents in the US,[6] plant breeders' rights are sometimes called plant patents,[7] and utility models and Gebrauchsmuster are sometimes called petty patents or innovation patents.
The additional qualification utility patent is sometimes used (primarily in the US) to distinguish the primary meaning from these other types of patents. Particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents.
History[edit]
Although there is some evidence that some form of patent rights was recognized in Ancient Greece in the Greek city of Sybaris,[8][9] the first statutory patent system is generally regarded to be the Venetian Patent Statute of 1474. Patents were systematically granted in Venice as of 1474, where they issued a decree by which new and inventive devices had to be communicated to the Republic in order to obtain legal protection against potential infringers. The period of protection was 10 years.[10] As Venetians emigrated, they sought similar patent protection in their new homes. This led to the diffusion of patent systems to other countries.[11]
The English patent system evolved from its early medieval origins into the first modern patent system that recognised intellectual property in order to stimulate invention; this was the crucial legal foundation upon which the Industrial Revolution could emerge and flourish.[12] By the 16th century, the English Crown would habitually abuse the granting of letters patent for monopolies.[13] After public outcry, King James I of England (VI of Scotland) was forced to revoke all existing monopolies and declare that they were only to be used for "projects of new invention". This was incorporated into the Statute of Monopolies (1624) in which Parliament restricted the Crown's power explicitly so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years. The Statute became the foundation for later developments in patent law in England and elsewhere.
Important developments in patent law emerged during the 18th century through a slow process of judicial interpretation of the law. During the reign of Queen Anne, patent applications were required to supply a complete specification of the principles of operation of the invention for public access.[14]Legal battles around the 1796 patent taken out by James Watt for his steam engine, established the principles that patents could be issued for improvements of an already existing machine and that ideas or principles without specific practical application could also legally be patented.[15] Influenced by the philosophy of John Locke, the granting of patents began to be viewed as a form of intellectual property right, rather than simply the obtaining of economic privilege.
The English legal system became the foundation for patent law in countries with a common law heritage, including the United States, New Zealand and Australia. In the Thirteen Colonies, inventors could obtain patents through petition to a given colony's legislature. In 1641, Samuel Winslow was granted the first patent in North America by the Massachusetts General Court for a new process for making salt.[16]
The modern French patent system was created during the Revolution in 1791.[18] Patents were granted without examination since inventor's right was considered as a natural one. Patent costs were very high (from 500 to 1,500 francs). Importation patents protected new devices coming from foreign countries. The patent law was revised in 1844 - patent cost was lowered and importation patents were abolished.
The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to promote the progress of useful Arts".[19] The first patent under the Act was granted on July 31, 1790 to Samuel Hopkins for a method of producing potash (potassium carbonate). A revised patent law was passed in 1793, and in 1836 a major revision to the patent law was passed. The 1836 law instituted a significantly more rigorous application process, including the establishment of an examination system. Between 1790 and 1836 about ten thousand patents were granted. By the American Civil War about 80,000 patents had been granted.[20]
Law[edit]
Effects[edit]
A patent does not give a right to make or use or sell an invention.[21] Rather, a patent provides, from a legal standpoint, the right to exclude others[21] from making, using, selling, offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from the filing date[5] subject to the payment of maintenance fees. From an economic and practical standpoint however, a patent is better and perhaps more precisely regarded as conferring upon its proprietor "a right to try to exclude by asserting the patent in court", for many granted patents turn out to be invalid once their proprietors attempt to assert them in court.[3] A patent is a limited property right the government gives inventors in exchange for their agreement to share details of their inventions with the public. Like any other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away, or simply abandoned.
A patent, being an exclusionary right, does not necessarily give the patent owner the right to exploit the invention subject to the patent. For example, many inventions are improvements of prior inventions that may still be covered by someone else's patent.[21] If an inventor obtains a patent on improvements to an existing invention which is still under patent, they can only legally use the improved invention if the patent holder of the original invention gives permission, which they may refuse.
Some countries have "working provisions" that require the invention be exploited in the jurisdiction it covers. Consequences of not working an invention vary from one country to another, ranging from revocation of the patent rights to the awarding of a compulsory license awarded by the courts to a party wishing to exploit a patented invention. The patentee has the opportunity to challenge the revocation or license, but is usually required to provide evidence that the reasonable requirements of the public have been met by the working of invention.
Challenges[edit]
In most jurisdictions, there are ways for third parties to challenge the validity of an allowed or issued patent at the national patent office; these are called opposition proceedings. It is also possible to challenge the validity of a patent in court. In either case, the challenging party tries to prove that the patent should never have been granted. There are several grounds for challenges: the claimed subject matter is not patentable subject matter at all; the claimed subject matter was actually not new, or was obvious to the person skilled in the art, at the time the application was filed; or that some kind of fraud was committed during prosecution with regard to listing of inventors, representations about when discoveries were made, etc. Patents can be found to be invalid in whole or in part for any of these reasons.[22][23]
Infringement[edit]
Patent infringement occurs when a third party, without authorization from the patentee, makes, uses, or sells a patented invention. Patents, however, are enforced on a nation by nation basis. The making of an item in China, for example, that would infringe a U.S. patent, would not constitute infringement under US patent law unless the item were imported into the U.S.[24]
Enforcement[edit]
Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent, by an action for patent infringement in a United States federal court), although some countries (such as France and Austria) have criminal penalties for wanton infringement.[25] Typically, the patent owner seeks monetary compensation for past infringement, and seeks an injunction that prohibits the defendant from engaging in future acts of infringement. To prove infringement, the patent owner must establish that the accused infringer practises all the requirements of at least one of the claims of the patent. (In many jurisdictions the scope of the patent may not be limited to what is literally stated in the claims, for example due to the doctrine of equivalents).
An accused infringer has the right to challenge the validity of the patent allegedly being infringed in a counterclaim. A patent can be found invalid on grounds described in the relevant patent laws, which vary between countries. Often, the grounds are a subset of requirements for patentability in the relevant country. Although an infringer is generally free to rely on any available ground of invalidity (such as a prior publication, for example), some countries have sanctions to prevent the same validity questions being relitigated. An example is the UK Certificate of contested validity.
Patent licensing agreements are contracts in which the patent owner (the licensor) agrees to grant the licensee the right to make, use, sell, and/or import the claimed invention, usually in return for a royalty or other compensation. It is common for companies engaged in complex technical fields to enter into multiple license agreements associated with the production of a single product. Moreover, it is equally common for competitors in such fields to license patents to each other under cross-licensing agreements in order to share the benefits of using each other's patented inventions.
Ownership[edit]
In most countries, both natural persons and corporate entities may apply for a patent. In the United States, however, only the inventor(s) may apply for a patent although it may be assigned to a corporate entity subsequently[26] and inventors may be required to assign inventions to their employers under an employment contract. In most European countries, ownership of an invention may pass from the inventor to their employer by rule of law if the invention was made in the course of the inventor's normal or specifically assigned employment duties, where an invention might reasonably be expected to result from carrying out those duties, or if the inventor had a special obligation to further the interests of the employer's company.[27]
The inventors, their successors or their assignees become the proprietors of the patent when and if it is granted. If a patent is granted to more than one proprietor, the laws of the country in question and any agreement between the proprietors may affect the extent to which each proprietor can exploit the patent. For example, in some countries, each proprietor may freely license or assign their rights in the patent to another person while the law in other countries prohibits such actions without the permission of the other proprietor(s).
The ability to assign ownership rights increases the liquidity of a patent as property. Inventors can obtain patents and then sell them to third parties.[28] The third parties then own the patents and have the same rights to prevent others from exploiting the claimed inventions, as if they had originally made the inventions themselves.
Governing laws[edit]
The grant and enforcement of patents are governed by national laws, and also by international treaties, where those treaties have been given effect in national laws. Patents are granted by national or regional patent offices.[29] A given patent is therefore only useful for protecting an invention in the country in which that patent is granted. In other words, patent law is territorial in nature. When a patent application is published, the invention disclosed in the application becomes prior art and enters the public domain (if not protected by other patents) in countries where a patent applicant does not seek protection, the application thus generally becoming prior art against anyone (including the applicant) who might seek patent protection for the invention in those countries.
Commonly, a nation or a group of nations forms a patent office with responsibility for operating that nation's patent system, within the relevant patent laws. The patent office generally has responsibility for the grant of patents, with infringement being the remit of national courts.
The authority for patent statutes in different countries varies. In the UK, substantive patent law is contained in the Patents Act 1977 as amended.[30] In the United States, the Constitution empowers Congress to make laws to "promote the Progress of Science and useful Arts..." The laws Congress passed are codified in Title 35 of the United States Code and created the United States Patent and Trademark Office.
There is a trend towards global harmonization of patent laws, with the World Trade Organization (WTO) being particularly active in this area.[citation needed] The TRIPS Agreement has been largely successful in providing a forum for nations to agree on an aligned set of patent laws. Conformity with the TRIPS agreement is a requirement of admission to the WTO and so compliance is seen by many nations as important. This has also led to many developing nations, which may historically have developed different laws to aid their development, enforcing patents laws in line with global practice.
Internationally, there are international treaty procedures, such as the procedures under the European Patent Convention (EPC) [constituting the European Patent Organisation(EPOrg)], that centralize some portion of the filing and examination procedure. Similar arrangements exist among the member states of ARIPO and OAPI, the analogous treaties among African countries, and the nine CIS member states that have formed the Eurasian Patent Organization. A key international convention relating to patents is the Paris Convention for the Protection of Industrial Property, initially signed in 1883. The Paris Convention sets out a range of basic rules relating to patents, and although the convention does not have direct legal effect in all national jurisdictions, the principles of the convention are incorporated into all notable current patent systems. The most significant aspect of the convention is the provision of the right to claim priority: filing an application in any one member state of the Paris Convention preserves the right for one year to file in any other member state, and receive the benefit of the original filing date. Another key treaty is the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) and covering more than 150 countries. The Patent Cooperation Treaty provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.
Application and prosecution[edit]
A patent is requested by filing a written application at the relevant patent office. The person or company filing the application is referred to as "the applicant". The applicant may be the inventor or its assignee. The application contains a description of how to make and use the invention that must provide sufficient detail for a person skilled in the art (i.e., the relevant area of technology) to make and use the invention. In some countries there are requirements for providing specific information such as the usefulness of the invention, the best mode of performing the invention known to the inventor, or the technical problem or problems solved by the invention. Drawings illustrating the invention may also be provided.
The application also includes one or more claims that define what a patent covers or the "scope of protection".
After filing, an application is often referred to as "patent pending". While this term does not confer legal protection, and a patent cannot be enforced until granted, it serves to provide warning to potential infringers that if the patent is issued, they may be liable for damages.[31][32][33]
Once filed, a patent application is "prosecuted". A patent examiner reviews the patent application to determine if it meets the patentability requirements of that country. If the application does not comply, objections are communicated to the applicant or their patent agent or attorney through an Office action, to which the applicant may respond. The number of Office actions and responses that may occur vary from country to country, but eventually a final rejection is sent by the patent office, or the patent application is granted, which after the payment of additional fees, leads to an issued, enforceable patent. In some jurisdictions, there are opportunities for third parties to bring an opposition proceeding between grant and issuance, or post-issuance.
Once granted the patent is subject in most countries to renewal fees to keep the patent in force. These fees are generally payable on a yearly basis. Some countries or regional patent offices (e.g. the European Patent Office) also require annual renewal fees to be paid for a patent application before it is granted.
Costs[edit]
The costs of preparing and filing a patent application, prosecuting it until grant and maintaining the patent vary from one jurisdiction to another, and may also be dependent upon the type and complexity of the invention, and on the type of patent.
The European Patent Office estimated in 2005 that the average cost of obtaining a European patent (via a Euro-direct application, i.e. not based on a PCT application) and maintaining the patent for a 10-year term was around €32,000.[34] Since the London Agreement entered into force on May 1, 2008, this estimation is however no longer up-to-date, since fewer translations are required.
In the United States, in 2000 the cost of obtaining a patent (patent prosecution) was estimated to be from $10,000 to $30,000 per patent.[35] When patent litigation is involved (which in year 1999 happened in about 1,600 cases compared to 153,000 patents issued in the same year[35]), costs increase significantly: although 95% of patent litigation cases are settled out of court,[36] those that reach the courts have legal costs on the order of a million dollars per case, not including associated business costs.[37]
Alternatives[edit]
A defensive publication is the act of publishing a detailed description of a new invention without patenting it, so as to establish prior art and public identification as the creator/originator of an invention, although a defensive publication can also be anonymous. A defensive publication prevents others from later being able to patent the invention.
A trade secret is information that is intentionally kept confidential and that provides a competitive advantage to its possessor. Trade secrets are protected by non-disclosure agreement and labour law, each of which prevents information leaks such as breaches of confidentiality and industrial espionage. Compared to patents, the advantages of trade secrets are that the value of a trade secret continues until it is made public,[38] whereas a patent is only in force for a specified time, after which others may freely copy the invention; does not require payment of fees to governmental agencies or filing paperwork;[38] has an immediate effect;[38] and does not require any disclosure of information to the public.[38]The key disadvantage of a trade secret is its vulnerability to reverse engineering.[39]
Benefits[edit]
Primary incentives embodied in the patent system include incentives to invent in the first place; to disclose the invention once made; to invest the sums necessary to experiment, produce and market the invention; and to design around and improve upon earlier patents.[40]
- Patents provide incentives for economically efficient research and development (R&D).[41] A study conducted annually by the Institute for Prospective Technological Studies(IPTS) shows that the 2,000 largest global companies invested more than 430 billion euros in 2008[42] in their R&D departments. If the investments can be considered as inputs of R&D, real products and patents are the outputs. Based on these groups, a project named Corporate Invention Board, had measured and analyzed the patent portfolios to produce an original picture[43] of their technological profiles. Supporters of patents argue that without patent protection, R&D spending would be significantly less or eliminated altogether, limiting the possibility of technological advances or breakthroughs.[citation needed] Corporations would be much more conservative about the R&D investments they made, as third parties would be free to exploit any developments. This second justification is closely related to the basic ideas underlying traditional property rights.[40][specify] Specifically, "[t]he patent internalizes the externality by giving the [inventor] a property right over its invention."[44] A 2008 study by Yi Quan of Kellogg School of Management showed that countries instituting patent protection on pharmaceuticals did not necessarily have an increase in domestic pharmaceutical innovation. Only countries with "higher levels of economic development, educational attainment, and economic freedom" showed an increase. There also appeared to be an optimal level of patent protection that increased domestic innovation.[45]
- In accordance with the original definition of the term "patent", patents are intended to facilitate and encourage disclosure of innovations into the public domain for the common good. Thus patenting can be viewed as contributing to open hardware after an embargo period (usually of 20 years). If inventors did not have the legal protection of patents, in many cases, they might prefer or tend to keep their inventions secret (e.g. keep trade secrets).[46] Awarding patents generally makes the details of new technology publicly available, for exploitation by anyone after the patent expires, or for further improvement by other inventors. Furthermore, when a patent's term has expired, the public record ensures that the patentee's invention is not lost to humanity.[40][specify]
- In many industries (especially those with high fixed costs and either low marginal costs or low reverse engineering costs — computer processors, and pharmaceuticals for example), once an invention exists, the cost of commercialization (testing, tooling up a factory, developing a market, etc.) is far more than the initial conception cost. (For example, the internal rule of thumb at several computer companies in the 1980s was that post-R&D costs were 7-to-1.)[citation needed]
One effect of modern patent usage is that a small-time inventor, who can afford both the patenting process and the defense of the patent,[47] can use the exclusive right status to become a licensor. This allows the inventor to accumulate capital from licensing the invention and may allow innovation to occur because he or she may choose not to manage a manufacturing buildup for the invention. Thus the inventor's time and energy can be spent on pure innovation, allowing others to concentrate on manufacturability.[48]
Another effect of modern patent usage is to both enable and incentivize competitors to design around (or to "invent around" according to R S Praveen Raj) the patented invention.[49]This may promote healthy competition among manufacturers, resulting in gradual improvements of the technology base.[50] This may help augment national economies and confer better living standards to the citizens. The 1970 Indian Patent Act[51] allowed the Indian pharmaceutical industry to develop local technological capabilities in this industry. This act coincided with the transformation of India from a bulk importer of pharmaceutical drugs to a leading exporter.[citation needed] The rapid evolution of Indian pharmaceutical industry since the mid-1970s highlights the fact that the design of the patent act was instrumental in building local capabilities even in a developing country like India.[52] This was possible because for many years prior to its membership in the World Trade Organization (WTO), India did not recognize product patents for pharmaceuticals. Without product patents with which to contend, Indian pharmaceutical companies were able to churn out countless generic drugs, establishing India as one of the leading generic drug manufacturers in the world. Yet in 2005, because of its obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), India was compelled to amend its laws to provide product patent protection to pharmaceuticals. In an attempt to satisfy the competing demands for inexpensive drugs and effective intellectual property protection, the Indian government created a law that afforded protection to pharmaceuticals only if they constituted brand new chemical substances or enhanced the therapeutic “efficacy” of known substances. This law, which is codified under section 3(d) of the Patents (Amendment) Act of 2005,7 has not sat well with some MNCs, including the Swiss company Novartis. Following the denial of a patent for its leukemia drug, Glivec, Novartis challenged the validity of section 3(d) under TRIPS and the Indian Constitution. The Indian Supreme Court ruled against Novartis in a decision that has, and will continue to have, broad implications for MNCs, the Indian pharmaceutical industry, and people around the world in need of affordable drugs.[53]
Criticism[edit]
Legal scholars, economists, activists, policymakers, industries, and trade organizations have held differing views on patents and engaged in contentious debates on the subject. Critical perspectives emerged in the nineteenth century that were especially based on the principles of free trade.[54]:262–263 Contemporary criticisms have echoed those arguments, claiming that patents block innovation and waste resources (e.g. with patent-related overheads) that could otherwise be used productively to improve technology.[55][56][57] These and other research findings that patents decreased innovation because of the following mechanisms:
- Low quality, already known or obvious patents hamper innovation and commercialization.[58][59][60]
- Blocking the use of fundamental knowledge with patents creates a "tragedy of the anticommons, where future innovations can not take place outside of a single firm in an entire field.[61]
- Patents weaken the public domain and innovation that comes from it.[62]
- Patent thickets, or "an overlapping set of patent rights", in particular slow innovation.[63][64]
- Broad patents prevent companies from commercializing products and hurt innovation.[65] In the worst case, such broad patents are held by non-practicing entities (patent trolls), which do not contribute to innovation.[66][67] Enforcement by patent trolls of poor quality patents [68] has led to criticism of the patent office as well as the system itself.[69] For example, in 2011, United States business entities incurred $29 billion in direct costs because of patent trolls.[70] Lawsuits brought by "patent assertion companies" made up 61% of all patent cases in 2012, according to the Santa Clara University School of Law.[71]
- Patents apply a "one size fits all" model to industries with differing needs,[72] that is especially unproductive for the software industry.[73]
- Rent-seeking by owners of pharmaceutical patents have also been a particular focus of criticism, as the high prices they enable puts life-saving drugs out of reach of many people.[74]
Boldrin and Levine conclude "Our preferred policy solution is to abolish patents entirely and to find other legislative instruments, less open to lobbying and rent seeking, to foster innovation when there is clear evidence that laissez-faire undersupplies it."[75][76] Abolishing patents may be politically challenging in some countries[citation needed], however, as the primary economic theories supporting patent law hold that inventors and innovators need patents to recoup the costs associated with research, inventing, and commercializing;[41]this reasoning is weakened if the new technologies decrease these costs.[77] A 2016 paper argued for substantial weakening of patents because current technologies (e.g. 3D printing, cloud computing, synthetic biology, etc.) have reduced the cost of innovation.[77]
Debates over the usefulness of patents for their primary objective are part of a larger discourse on intellectual property protection, which also reflects differing perspectives on copyright.
Anti-patent initiatives[edit]
- The Patent Busting Project is an Electronic Frontier Foundation (EFF) initiative challenging patents that the organization claims are illegitimate and suppress innovation or limit online expression. The initiative launched in 2004 and involves two phases: documenting the damage caused by these patents[citation needed], and submitting challenges to the United States Patent and Trademark Office (USPTO).[78][79]
- Patent critic, Joseph Stiglitz has proposed Prizes as an alternative to patents in order to further advance solutions to global problems such as AIDS.[80][81]
- In 2012, Stack Exchange launched Ask Patents, a forum for crowdsourcing prior art to invalidate patents.[82]
- Several authors have argued for developing defensive prior art to prevent patenting based on obviousness using lists [83] or algorithms.[84] For example, a Professor of Law at the University of North Carolina School of Law, has demonstrated a method to protect DNA research.,[83] which could apply to other technology. Chin wrote an algorithm to generate 11 million "obvious" nucleotide sequences to count as prior art and his algorithmic approach has already[85] proven effective at anticipating prior art against oligonucleotide composition claims filed since his publication of the list and has been cited by the U.S. patent office a number of times.[86] More recently, Joshua Pearce developed an open-source algorithm for identifying prior art for 3D printing materials to make such materials obvious by patent standards.[84] As the 3-D printing community is already grappling with legal issues,[87] this development was hotly debated in the technical press.[88][89][90] Chin made the same algorithem-based obvious argument in DNA probes.[86]
- Google and other technology companies founded the LOT Network in 2014 to combat patent assertion entities by cross-licensing patents, thereby preventing legal action by such entities.[91]
In 2012, there were more than half a million patents filed in the United States. While there are at least six different types of patents issued by the United Stated Patent and Trademark Office (USPTO), the three most common types are utility patents, design patents, and plant patents.
Most patents fall into the first category, but it’s important to know how each type of patent operates, and which ones you need to secure the long-term success of your invention, whether you go it alone or use the services of a .
Utility Patents
According to the , 90 percent of all patents are utility patents, which protect the utility or functional aspects of an invention. Though the definitions are broad, utility patents cover machines, processes, methods, compositions and anything manufactured that has a useful and specific function.
For purposes of clarity, the USPTO defines “useful” as anything that has a recognizable benefit and use capability. A utility patent can also be issued as an improvement to any of the above inventions.
When the patent is being reviewed, reviewers look for inventions and functions that are novel, not obvious, and specific, though, the function of the patent does not have to be immediately obvious to the user.
How Long Do Utility Patents Last?
Utility patents are granted for 20 years from the date that the patent application was filed. In addition to the initial patent filing fees, inventors must submit maintenance fees throughout the life of the patent in order to keep the patent’s protection.
Term extensions are available for inventors who want to go beyond the 20-year mark, but they’re only available for certain situations and patents.
What Does a Utility Patent Protect?
A utility patent prevents others from manufacturing, selling, using or distributing your invention, and once you’ve been filed for a utility patent, your invention will have immediate “patent pending” status, which acts as a disclaimer until the patent has formally issued.
Though it doesn’t offer the same legal protection as an issued patent, it can be used to warn competitors that they may be responsible for damages if the invention is duplicated and sold or used.
Examples of utility patents: Because they’re so ubiquitous, most patents you may come across are utility patents. They could be anything from a new type of search engine that only searches government websites, to a type of trailer hitch that hasn’t been used before.
Design Patents
While a utility patent protects the utility or function of a product, a design patent protects its aesthetic appearance. Design patents can be issued for the appearance, design, shape or general ornamentation of an invention.
To qualify for a design patent, the patented product must be non-functional, otherwise, a utility patent would be necessary to protect it. Like the utility patent, design patents are granted for those appearances that are new, specific, and not obvious.
If a design patent is filed, the function or utility of the product is not protected, unless a utility patent is also filed in order to protect both the function and appearance of the invention. A design patent application usually includes a simple drawing and quick description of the product’s appearance.
How Long Do Design Patents Last?
A design patent is good for 14 years from the date the patent was granted. Unlike utility patents, there are no maintenance fees associated with a design patent, and the patent is sustained without question once it is issued.
What Does a Design Patent Protect?
A design patent prevents others from using, selling or manufacturing the appearance of your product. Again, the protection is only for its aesthetics and not its function. A design patent can’t be granted if a similar design exists, and it doesn’t not have to be an exact copy, but must be very similar.
Design patent examples: When Microsoft released the Xbox, it received a design patent for the “X” because it was deemed a unique appearance that, if copied, would have harmed Microsoft’s business. Google also received a design patent for its homepage, which is also distinct and associated primarily with the search engine. Apple also owns several design patents for its iPhone and other distinct consumer products.
Plant Patents
Each year, less than 1,200 plant patent applications are filed with the USPTO. It’s historically been an uncommon patent: in 1948, 18 years after plant patents had started, only 750 plant patents were issued, half of which were for different types of roses.
Plant patents are available for the discovery or invention of plants that are asexually reproduced. They must be, like the other patents, novel, distinct and not obvious. They have a 20-year lifespan that does not include maintenance fees.
Hybrids (though not first-generation), mutants, sports and other plan varieties can have plant patents, which prevents others from growing and selling the plants. This type of patent was created in order to protect the grower who found a new variety and would then be subsequently put out of business once competitors learned how to produce the plant as well, and usually, at a greater scale.
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At the beginning of the patent process, many of the hurdles inventors face are those of due diligence: ensuring that their invention is unique and patentable.
Part of this process involves patent opinions, which are legal forms of feedback that provide inventors insight into how likely it is that their invention will be able to receive a patent from the United States Patent and Trademark Office ().
There are various types of patent opinions, but the most common types are the:
- Patentability opinion
- Right-to-use opinion
- Non-infringement opinion
- Validity opinion
Each patent opinion serves a unique purpose. As an inventor, you may need to use one or more of these to ensure the commercial or legal success of your invention or your business potential.
Patentability Opinion
These are the most general types of opinions, and they exist to answer the question: is my invention eligible for patent protection? The patentability opinion often goes hand-in-hand with a patent search, because a significant part of patentability is based on prior patents.
A patentability opinion therefore searches prior art to find patents and inventions that are similar or that may present legal complexities.
The patentability opinion also takes a broader look at the invention to determine if it meets the USPTO’s requirements for a patent, which include being useful and nonobvious. This opinion, therefore, offers the inventor the most high-level overview of his or her invention.
This also allows the inventor to better evaluate the potential viability of the invention. Applying for a patent takes significant time and money is generally worthwhile only if there are clear indications that the invention is eligible for a patent.
Right-to-use Opinion
The right-to-use opinion looks specifically for other patents that the inventor’s product may infringe upon. This opinion is later down the invention pipeline, and essentially gives the inventor clearance to pursue production.
This opinion will identify any patents that are similar enough to bring up potential infringement issues, and will also include legal solutions to work around these infringement possibilities. This opinion can help inventors determine whether or not to continue with the invention.
Non-infringement Opinion
While the right-to-use opinion focuses on infringement issues in general, the non-infringement opinion looks at specific patents and inventions to determine exact infringement issues.
If, for example, one software provider found another software product that was very similar to its own, it could pursue a non-infringement opinion that would give the inventors an idea of which areas of the software were more likely to infringe on the existing patents.
This is different than the right-to-use opinion because it pinpoints specific claims rather than the invention on the whole. This way, the inventor can have a breakdown of the features, functions or characteristics that must be altered in order to receive patent protection.
This is often used for competing inventors or companies that have very similar products but want to avoid infringement conflicts.
Validity Opinion
A validity opinion acts to verify the validity and enforceable nature of a patent. This can be helpful for those who are purchasing patents or rights to patents, as well as for inventors who want to ensure that active patents are valid.
Like the other opinions, the validity opinion is a way to minimize the risk of infringement issues in the future. If an existing patent is found to be invalid or otherwise unenforceable, this may open up new patent possibilities for the inventor.
Getting Help with Patent Opinions
Because patents are such a significant intellectual property investment, performing due diligence at the beginning of the process can save time, money and headaches in the future.
Patent opinions are an important part of the diligence process, and can provide you with a certain amount of legal assurance before pursuing an invention.
To learn more about patent opinions, contact the intellectual property team at JacksonWhite today. Our team can help you preserve and protect your most valuable assets.
What is a patent?
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
In principle, the patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner's consent.
Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
The protection is granted for a limited period, generally 20 years from the filing date of the application.
What cannot be patented?
There is a lot that can be patented. So, here are some examples of what cannot be patented.
According to the Patents Act, an invention cannot only constitute:
- a discovery, scientific theory or mathematical method,
- an aesthetic creation,
- a scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program,
- a presentation of information,
- a procedure for surgical or therapeutic treatment, or diagnosis, to be practised on humans or animals.
Software and business methods
An idea that only constitutes a computer program or a scheme, rule or method for doing business, is not of a technical nature and cannot therefore be patented. However, inventions that are of a technical nature which include a business method, or which are carried out or can be carried out by a computer program, can be patentable.
Biotechnology
In biotechnology it is possible, for example, to patent genetically modified products, whereas methods of human cloning are regarded as unethical and are therefore not patentable.
Medical methods
Devices and products for practising medical methods can be patentable, but the methods themselves are not patentable. This is partly because a patent must not prevent doctors from curing and preventing illnesses and partly because the methods can have different effects on different patients. Therefore, they are not reproducible.
Perpetual motion machines
It is not possible to prove that a perpetual motion machine will work for all eternity, therefore it is not patentable.
Morality
It is not possible to get patents for inventions which are contrary to public order or morality.
Example
Imagine that you have invented a bicycle generator. Can you get a patent for your invention? Yes, if your bicycle generator is completely new, meaning not known anywhere in the world.
It must also differ significantly from the generators that are known, and generate electricity every time it is used. Which aspects of your invention can be patentable?
| Patentable | Non-patentable |
|---|---|
| A new generator (the technical solution) |
The mathematical formula for how the generator produces electricity
|
| Use of the generator on a bicycle | A scheme for how to sell the generator |
| A method of manufacturing the generator |
Why apply for a patent?
A patent can get you a better market position. You can avoid price competition in those markets where you have patent protection.
You also force other actors to develop their own technical solutions to the problem that your invention solved.
A patent is an intangible asset. The rights to a patent can be bought, sold or licensed. A patent can also make it easier to attract investors or sell your company. A business partner who gains access to protected technology can be prepared to pay more for what you have to offer.
You can get information about how an invention can be turned into a finished product, or used as a competitive advantage, from the same innovation actors who can help you with company formation and entrepreneurship.
Patent databases
Search for patents in databases.
Swedish Patent Database
PRV's online service Swedish Patent Database is a completely free search service. No login is required. The Swedish Patent Database covers:
- Swedish patents
- Swedish public patent applications
- European patents (EP patents) validated in Sweden
- EP applications published under §88 of the Patents Act
- Granted EP patents where Sweden is designated, meaning the applicant has clearly requested that the patent be made valid in Sweden. (Searchable in the database for six months from EPO’s grant date.)
- Supplementary Protection Certificates (SPCs) and extensions to SPCs for patents
The patent database includes all the information and documents which are in PRV's archives, spanning from 1885 until the present day. For older patent material, the information may be limited.
BiblioteksSök
Discover the contents of the library. BiblioteksȘk provides access to scientific publications Рjournals, books and articles both printed and electronic Рwhich describe technical innovations in various fields of research. Visit the library in person to read the full text.
Epoline
Using EPO's web-based service, you can, for example, search in the European patent register, access public information in patent files and read documents online. Login is required.
Espacenet
With the help of espacenet, you can, for example, carry out your own preliminary investigation before filing a patent application. The database contains over 60 million national and international patents/patent applications. All bibliographic data can be searched and by combining this data you can do relatively advanced searches.
File Inspection
File Inspection is PRV's public archive for patent applications. Here you can view original documents and certain bibliographic data in all the public patent applications from 2004 onwards. The documents can be opened directly in the archive or downloaded as PDF files.
INNOVA
Innova is an intellectual property bibliography produced by our library. Innova contains references to literature in the areas of patents, trademarks, designs and personal names, as well as copyright. Innova is freely accessible online.
PatentScope
PatentScope is WIPO's web portal for patent information. Using PatentScope, you can search through over 73 million patent documents, PCT and almost 60 national collections, access public information from the files and study the documents online. PatentScope also contains general information about patents, statistics, news items, translation tools and much more.
Patent web publications
Here you find web publications about patents.
Swedish Patent Gazette
Svensk Patenttidning in Swedish.
The Swedish Patent Gazette is the newspaper for public notification about patent applications and patents relating to Sweden, including European ones. The online edition can be read in PDF format and is also searchable with the help of bibliographic data or words in titles. Here you can monitor your competitors' Swedish patent activities, familiarize yourself with patent applications in a particular technical area, read Swedish patent specifications in PDF format and much more. The Swedish Patent Gazette is also available in paper form in PRV's library.
Publications from EPO
Publications from EPO that provide information about European patents.
Alternatives to patents
There is one alternative to patenting an idea. Namely, to keep it secret.
That can be a good solution if you think your invention will be short-lived on the market. In that case, it can be worth investing straight away in production and marketing instead of in a patent. A toy is a good example of a product that can be popular for a short time. On the other hand, if you are dealing with a medicinal product, which can be profitable for a very long time, it is usually worth investing in a patent.
Keeping something secret can protect better than a patent in those cases where the invention is difficult to copy. The recipe for Coca-Cola is a closely-guarded company secret, so no one else can make exactly the same drink. But keeping something secret is, of course, more risky. Partly because someone could experiment their way forward to your product, and partly because it is so crucial that you can trust those you confide in about it.
If it would be difficult to prove that someone has plagiarized your product, there is probably no point in patenting it. For example, if you have invented a method for manufacturing spoons, it might not be possible to see from the spoon how it was produced. And you cannot sue all spoon manufacturers and accuse them of using your method.
You might also want to consider not applying for a patent if the scope of your protection would be so narrow that your competitors would easily get around it. Unfortunately that can be difficult to judge in advance.
Finally, if you are not interested in an exclusive right, but simply want to prevent others from getting a patent for your technical solution, you can destroy the patentability of the invention by publicly disclosing it in some way. Then your competitors have free access to your invention, but no one, not even yourself, can get the exclusive right to the idea.
What can be patented?
Under U.S. patent law, 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." In general, this means you must satisfy the following four requirements to qualify for a patent:
Patentable subject matter
A patent cannot protect an idea. Instead, the idea must be embodied in one or more of the following:
Even if the invention falls into one of the four above categories, there are certain subject matters that cannot be patented. These include mathematical formulas, naturally-occurring substances, laws of nature and processes done entirely with the human body (such as a technique for shooting a free throw in basketball).
Novelty Requirement
Novelty simply means the invention must be new. That is, it must differ from knowledge already existing in the public domain, prior patents, published applications, publications available to the public and items on sale (all together referred to as "prior art"). Patent law defines prior art in several ways, including:
Anything disclosed as described above:
One must proceed with caution: the one-year rule applies to everyone, including the original inventor. For example, if you publish your invention in a magazine or begin selling it, you must file a patent application within one year from the date it was published or first sold. Otherwise, no one (not even the inventor) will be able to obtain a patent for the invention. On the other hand, if you disclose the invention and someone else tries to patent it within one year of your disclosure, your disclosure will stop that applicant from receiving a patent, since your disclosure acts as prior art.
Because a Provisional Patent Application is not published, it does not compromise the confidentiality of the invention and does not start the one-year rule by itself. For example, although you would not get the benefit of the earlier filing date, there is no restriction against filing a full patent application two years after filing a Provisional Application. Again, the invention must not have been disclosed in a publication or sold one year or more before a Non-Provisional Application is filed.
Utility Requirement
Utility means an invention must physically accomplish something. If an invention works, or if it produces a result, then it has utility. In practice, very few inventions fail the utility test. Only when the underlying logic is seriously flawed (for example, a perpetual motion machine), could a patent be challenged on utility. In addition, illegal or highly dangerous products may also be rejected by the USPTO under this requirement.
Design patents do not need to satisfy the utility requirement.
Non-Obviousness Requirement
Non-obviousness means that people skilled in the invention's field (as opposed to the average person) would not consider the invention obvious. For example, an invention made by substituting one color for another or by combining two existing inventions in a logical manner, would typically not be patentable. Put another way, some inventive step is required beyond prior art and existing common knowledge in the field.
LegalZoom can help you patent your invention. Answer questions about your invention using our online questionnaire and we’ll help you assemble and file your patent application. LegalZoom can get you in touch with patent artists that can draw technical illustrations, patent agents to review your application, and our legal plans allow you to consult with an independent attorney about your patent.
Inventions Not Patentable in India
For an invention to be patentable in India, the invention must be a new product or process, involving an inventive step and capable of being made or used in an industry. Further, the invention must also meet certain criteria pertaining to novelty, inventive step and industrial applicability to be patentable. In this article, we look at inventions that are not patentable in India.
Frivolous or Misleading Inventions
An invention which is frivolous or which claims an inventions obviously contrary to well established laws cannot be patented.
Example: An invention which claims to tele-transport; Or an alleged invention which produces 100% efficiency.
Inventions Contrary to Public Order or Morality
Any invention having a primary or intended use which would be contrary to public order or morality or which would cause harm to human, animal or plant life or health or to the environment is not a patentable invention.
Example: Any machine or method for counterfeiting of currency notes. An invention for adulteration of food products.
Mere Discovery of a Scientific Principle or Abstract Theory
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature is not a patentable invention. A mere claim for discovery of scientific principle is not considered to be an invention, but such a principle when used with a process of manufacturing a substance or an article may be considered to be an invention.
Also, a scientific theory is a statement about the natural world. These theories themselves are not considered to be inventions, no matter how radical or revolutionary an insight they may provide, since they do not result in a product or process. However, if the theory leads to practical application in the process of manufacture of an article or substance, it may be patentable.
Example: The fact that a known material or article is found to have a hitherto unknown property is a discovery and not an invention. But if the discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process could be considered to be an invention. Also, finding of a new substance or micro-organism occurring freely in nature is a discovery and not a patentable invention.
Mere Discovery of a New Form of a Known Substance
The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant is not an invention.
Example: The mere discovery of any new property of a known substance. Or, the mere discovery of new use for a known substance.
Substance Obtained by a Mere Admixture
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not an invention. However, an admixture resulting in synergistic properties is not considered as mere admixture, e.g., a soap, detergent, lubricant and polymer composition etc, and hence maybe patentable.
Arrangement or Re-arrangement or Duplication of Known Devices
The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not an invention.
In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’. To be patentable, the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. A combination of old known integers may be so combined that by their working inter-relation, they produce a new process or an improved result. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.
Method of Agriculture or Horticulture
Any method of agriculture or horticulture is not an invention.
Example: A method of producing a plant or a method of producing improved soil or a method of producing mangoes cannot be patented.
Process for Medicine, Curative or Treatment of Human Being
Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products is not a patentable invention. However, patent maybe obtained for surgical, therapeutic or diagnostic instrument or apparatus. Also the manufacture of prostheses or artificial limbs are patentable.
Example: An operation on the body, which requires the skill and knowledge of a surgeon like embryo transplants or any therapy or diagnosis is not patentable.
Plants and Animals
Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals are not patentable inventions. Only, a genetically modified microorganisms may be patentable subject to other requirements of patentability.
Example: Discovery of a new plant or animal or seed in whole or in part is not patentable.
Mathematical or Business Model or a Computer Programs
A mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable. Click here to know more about patenting of business ideas or computer programs.
Example: A business idea or business model or computer software cannot be patented, irrespective of its innovativeness.
Literary, Dramatic, Musical or Artistic Work
A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions is not an invention. All writings, music works of fine arts, paintings, sculptures, computer programmes, electronic databases, books, pamphlets, lectures, addresses, sermons, dramatic-musical works, choreographic works, cinematographic works, drawings, architecture, engravings, lithography, photographic works, applied art, illustrations, maps, plans, sketches, three-dimensional works relating to geography, topography, translations, adaptations, arrangements of music, multimedia productions, etc. are not patentable. However, literary, dramatic, musical or artistic work can be copyrighted.
Example: A computer software code can be copyrighted but not patented.
Scheme or Rule of Performing Mental Act
A mere scheme or rule or method of performing mental act or method of playing game, are excluded from patentability, because they are considered as outcome of mere mental process.
Example: A method of playing chess or a method of teaching.
Method of Presentation of Information
Any manner, means or method of expressing information whether visual, audible or tangible by words, codes, signals, symbols, diagrams or any other mode of representation is not patentable.
Example: A speech instruction in the form of printed text is not patentable.
Topography of Integrated Circuits
Protection of layout designs of integrated circuits is governed separately under the Semiconductor Integrated Circuit Lay-out Designs Act, 2000. Hence, three-dimensional configuration of the electronic circuits used in microchips and semiconductor chips is not patentable.
Traditional Knowledge or Aggregation of Known Properties
An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components is not patentable.
What types of inventions are not eligible for patent protection?
Many types of inventions are innovative and perhaps lucrative. You may seek to patent such inventions to prevent competitors from making and selling the sale product. Some types of inventions will not qualify for a patent, however, no matter how interesting or important they are.
For example, mathematical formulas, laws of nature, newly discovered substances that occur naturally in the world, and purely theoretical phenomena—such as a scientific principle like superconductivity—are considered unpatentable.
In addition, the following categories of inventions do not qualify for patents:
- processes done entirely by human motor coordination, such as choreographed dance routines or a method for meditation
- most protocols and methods used to perform surgery on humans
- printed matter that has no unique physical shape or structure associated with it
- unsafe new drugs
- inventions useful only for illegal purposes, and
- non-operable inventions, including "perpetual motion" machines (which are presumed to be non-operable because to operate they would have to violate certain bedrock scientific principles), and
- creative content such as poetry, books, or music, which would be potentially subject to copyright protection rather than patent protection.
Can computer software qualify for patent protection?
Yes. Even though you can't get a patent on a mathematical formula per se, you may be able to get protection for a specific application of a formula. Thus, software may qualify for a patent if the patent application produces a useful, concrete, and tangible result. For example, the U.S. Patent and Trademark Office (the federal agency that approves patents) will not issue a patent on the complex mathematical formulas used in space navigation, but will grant a patent for the software and machines that translate those equations and make the space shuttle go where it's supposed to.
What makes an invention "novel"?
In the context of a patent application, an invention is considered novel when it is different from all previous inventions (called "prior art") in one or more of its constituent elements. When deciding whether an invention is novel, the USPTO will consider all prior art that existed as of the date the inventor files a patent application on the invention.
An invention will fail the novelty test if it was described in a published document or put to public use prior to the date the patent application was filed. The only exception is if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However, it is still unwise for an inventor to publish before filing since the inventor will lose foreign filing rights and another person may see the publication and file a separate application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding.
When is an invention considered "nonobvious"?
To qualify for a patent, an invention must be nonobvious as well as novel. An invention is considered nonobvious if someone who is skilled in the particular field of the invention would view it as an unexpected or surprising development.
For example, let's say that in August 2018, Future Enterprises invents a portable, high-quality, virtual reality system that can be manufactured for under $100. A virtual reality engineer would most likely find this invention to be truly surprising and unexpected. Even though increased portability of a computer-based technology is always expected in the broad sense, the specific way in which the portability is accomplished by this invention would be a breakthrough in the field, and thus unobvious. Contrast this with a bicycle developer who uses a new, light-but-strong metal alloy to build his bicycles. Most people skilled in the art of bicycle manufacturing would consider the use of the new alloy in the bicycle to be obvious, given that lightness of weight is a desirable aspect of high-quality bicycles.
Knowing whether an invention will be considered nonobvious by the patent examiner is difficult because it is such a subjective exercise—what one patent examiner considers surprising, another may not. In addition, the examiner will usually be asked to make the nonobviousness determination well after the date of the invention, because of delays inherent in the patent process. The danger of this type of retroactive assessment is that the examiner may unconsciously be affected by the intervening technical improvements. To avoid this, the examiner generally relies only on the prior art references (documents describing previous inventions) that existed as of the date of invention.
As an example, assume that in 2020, Future Enterprises' application for a patent on the 2018 invention is being examined in the Patent and Trademark Office. Assume further that by 2020, you can find a portable virtual reality unit in any consumer electronics store for under $100. The patent examiner will have to go back to the time of the invention to fully appreciate how surprising and unexpected it was when it was first conceived, and ignore the fact that in 2020 the technology of the invention is already common.
What makes an invention "useful"?
An invention is useful if it provides some practical benefit, or helps people complete real world tasks. However, patents may be granted for inventions even if their use is merely humorous, such as a musical condom or a motorized spaghetti fork. An invention does not need to be "world changing" in order to clear the usefulness hurdle.
To fulfill this requirement, the invention must work, at least in theory. Thus, a new approach to manufacturing superconducting materials may qualify for a patent if it has a sound theoretical basis, even if it hasn't yet been shown to work in practice. But a new drug that has no theoretical basis and which has not yet been tested will not qualify for a patent.
Only a utility patent requires an invention to be useful: To qualify for a design or plant patent—the other two types of patents obtained in the U.S.—the inventor need not show utility.
To learn more about qualifying for a patent, see Nolo's Patents for Beginners, by David Pressman and Richard Stim (Nolo).
What types of inventions can be patented?
The USPTO issues three different kinds of patents: utility patents, design patents, and plant patents.
To qualify for a utility patent, by far the most common type of patent, an invention must be:
- a process or method for producing a useful, concrete, and tangible result (such as a genetic engineering procedure, an investment strategy, computer software, or a process for conducting e-commerce on the Internet)
- a machine (usually something with moving parts or circuitry, such as a cigarette lighter, a sewage treatment system, a laser, or a photocopier)
- an article of manufacture (such as an eraser, a tire, a transistor, or a hand tool)
- a composition of matter (such as a chemical composition, a drug, a soap, or a genetically altered lifeform), or
- an improvement of an invention that fits within one of the first four categories.
If an invention fits into one of the categories described above, it is known as "statutory subject matter" and has passed the first test in qualifying for a patent. But an inventor's creation must overcome several additional hurdles before the USPTO will issue a patent. The invention must also:
- have some usefulness (utility), no matter how trivial
- be novel (that is, be different from all previous inventions in some important way)
- be nonobvious (a surprising and significant development) to somebody who understands the technical field of the invention.
For design patents, the law requires that the design be novel, nonobvious, and nonfunctional. For example, a new shape for a car fender, a bottle, or a flashlight that doesn't improve its functionality would qualify.
Finally, plants may qualify for a patent if they are both novel and nonobvious. Plant patents are issued less frequently than any other type of patent, since they generally are finales by large agricultural or pharmaceutical companies.
The following items are just some of the things that might qualify for patent protection:
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Patent Requirements
Before applying for a patent, you research your invention's patentability and whether the invention meets the patent eligibility requirements of the U.S. Patent and Trademark Office (USPTO). This article covers the basics patent eligibility requirements. See FindLaw's Patents section to learn more.
What are the Basic Requirements for a Patent?
In the United States, there are five elements of patent eligibility. The USPTO states the following:
- In order for your invention to qualify for patent eligibility, it must cover subject matter that Congress has defined as patentable. The USPTO defines patentable subject matter as any "new and useful" process, machine, manufacture or composition of matter. Machines or processes are patentable subject matter, but the laws of nature are not. So, you can patent a machine for sorting packages, but you can't get a patent for sunlight.
- The invention must have a "utility," or in other words, be useful. Note that this requirement is only for utility patents (see next question, below).
- The invention must be "novel," or new.
- The invention must be "non-obvious," meaning its use or function can't be something that is simply the next logical step of an already patented invention. Much of the argument between the USPTO and patent applicants revolves around the issue of non-obviousness.
- The invention must not have been "disclosed" to the public prior to the application for the patent. For example, if you've written an article describing the invention before you apply for the patent, the USPTO may deny the application because you've already disclosed the patent and therefore it's public knowledge.
What are the Different Types of Patents?
There are three general categories of patents. They are:
Utility patents are what most people associated with patents and are the type most frequently granted. Utility patents cover:
- Processes - business processes, computer software, engineering methods, etc.
- Machines - anything that performs a function
- Articles of manufacture - a catchall category that covers anything manufactured
- Composition of matter - pharmaceuticals, chemical compounds, artificial genetic creations
A utility patent is the most powerful form of protection, but also the most difficult to attain (see requirements below), and last 20 years from the date of filing.
Design patents protect non-functional, purely ornamental designs. For design patents, applicants don't have to prove "utility," step 3 above. In fact, the design is required to be non-functional. Design patents are more easily issued, last only 14 years, and offer more limited protection than a utility patent. For example, another design has to have a virtually identical design to infringe upon a patented design.
Plant patents protect asexually reproduced plants and sexually reproduced plant seeds. These typically arise from scientific experiments combining different plant species to create new plants and plant seeds and are the least frequently granted patents. Plant patents last 17 years.
What is the Basic Process of Receiving a Patent?
Think of the patent process as stepping through three doors. The first is the largest door and the easiest to step through, the second is a smaller door that's more difficult, and the third is a tiny door that is extremely difficult to squeeze through.
In this analogy, door #1 is having patentable subject matter; door #2 is novelty (or "newness" of the invention); and door #3 is "non-obviousness" (whether the invention is enough of a departure from previously awarded patents). If your invention can fit through each door, the patent will be granted.
What is Patentable Subject Matter?
Patentable subject matter is any new and useful process, machine, article of manufacture or composition of matter. Following is a non-exhaustive sample of patentable subject matter:
- Business processes
- Machines and electronics
- Fabrics and fabric designs
- Sporting equipment
- Medicines
- Computer hardware
- Computer software programs that have a "useful, concrete and tangible" result
- Man-made bacteria (by contrast, naturally occurring organisms are not patentable)
- Human genes that are identified and isolated are patentable because they are not naturally occurring when isolated.
- Business methods (e.g., FedEx's method of delivering packages overnight)
What Does it Mean for an Invention to be "Novel?"
To be novel, an invention must not be known or used by anyone else in the U.S. and must not be patented or described in a printed publication in this or a foreign country before the date of the patent application. Basically, if there's another invention out there before your patent application that incorporates all the same elements as your invention, then your invention is not novel and the patent will be denied.
Additionally, the USPTO has a rule that states that if the invention of described in a printed publication in the U.S. or a foreign country, or in public use or on sale in the U.S. more than one year prior to the date of the patent application, the patent will be denied. So, if any of these three things happen—1) on sale, 2) public use, or 3) printed publication one year prior to the application date, you can't apply for a patent.
As a result of the "one-year rule," there is a possibility that you could destroy the novelty of your own invention by delaying the application. For example, if you have someone manufacture or use your invention to determine if it's patent worthy and end up applying for after a year has gone by, the application may be denied as not being novel. If you believe this could be a problem you should consult a patent attorney because there are different rules regarding "experimental" uses of inventions that could get you around the one year rule.
How is Something Determined to be "Non-Obvious?"
The non-obviousness test is the most difficult obstacle in the patent review process. The question the USPTO asks is: knowing what's out there, is the invention an obvious step? If the invention is simply a combination of several different prior patents, it may be deemed an obvious next step, and therefore denied.
The USPTO will look at "prior art" (a term meaning the state of technological knowledge before the patent application to determine whether the invention is "obvious to a person having ordinary skill in the art." There must be an inventive leap. In other words, the invention must have a distance between it and the prior art.
In addition to examining prior art, the USPTO also looks to secondary considerations to shed light on the level of obviousness at the time of the invention. For example, if your invention is a commercial success, that may indicate that there was nothing else in the market like your invention and that others failed to achieve the same result. Or if there was a long period of time between the relevant prior art and the patent at issue, it may indicate that the patent is not obvious, otherwise there would have been other similar products that tried to fill the void.
Non-obviousness is the most hotly contested portion of the patent review process because it's the most subjective. One patent examiner may look at an invention and think it's merely the next logical step up from prior art whereas another examiner may look at the same prior art and think that the invention shows an inventive leap and is therefore not obvious.
What Qualifies an Invention as Having "Utility" or Being Useful?
All utility patents must demonstrate that they are useful now, not just potentially useful, or at least have a sound theoretical basis for being useful. For example, you may be issued a patent for a process that speeds a manufacturing line based on past processes that have proven successful, but may not be awarded a patent for a drug the effectiveness of which has no scientific backing. Remember that only utility patent applicants are required to prove the usefulness of the invention.
Discuss Patent Eligibility Requirements with an Attorney
Entrepreneurs are expected to take on various tasks across a wide range of disciplines in order to realize their dreams. But legal matters -- particularly those related to patents and intellectual property in general -- are best left to trained professionals. If you have questions about whether your invention is eligible for a patent, you should speak with an intellectual property lawyer near you.
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PROTECTION OF PATENTS
A patent is a right granted to an inventor by the federal government that permits the inventor to exclude others from making, selling or using the invention for a period of time. The patent system is designed to encourage inventions that are unique and useful to society. Congress was given the power to grant patents in the Constitution, and federal statutes and rules govern patents.
The U.S. Patent and Trademark Office (USPTO) grants patents for inventions that meet statutory criteria. The following provides a general overview of what a patent is.
Patent Categories
There are three different kinds of patents: utility patents, design patents and plant patents.
Determining What is Patentable: The Basics
For an invention to qualify for a patent, it must be both "novel" and "non-obvious." An invention is novel if it is different from other similar inventions in one or more of its parts. It also must not have been publicly used, sold, or patented by another inventor within a year of the date the patent application was filed. This rule reflects the public policy favoring quick disclosure of technological progress. An invention is non-obvious if someone who is skilled in the field of the invention would consider the invention an unexpected or surprising development.
Naturally occurring substances and laws of nature, even if they are newly discovered, cannot be patented. Abstract principles, fundamental truths, calculation methods, and mathematical formulas also are not patentable. A process that uses such a formula or method can be patented, however. For example, a patent has been granted for an industrial process for molding rubber articles that depends upon a mathematical equation and involves the use of a computer program.
A patent cannot be obtained for a mere idea or suggestion. The inventor must have figured out the concrete means of implementing his or her ideas in order to get a patent. A patent also will not be granted for an invention with no legal purpose or for an unsafe drug.
Usefulness
An inventor applying for a utility patent must prove that the invention is useful. The invention must have some beneficial use and must be operable. A machine that will not operate to perform its intended purpose would not be called useful, and therefore would not be granted a patent. A useful invention may qualify for a utility patent only if it falls into one of five categories: a process, a machine, a manufacture, a composition of matter, or an improvement of one of these.
A process is a method of treating material to produce a specific physical change in the character or quality of the material, generally an industrial or technical process. A machine is a device that uses energy to get work done. The term manufacturerefers to a process in which an article is made by the art or industry of people. A composition of matter may include a mixture of ingredients or a new chemical compound. An improvement is any addition to or alteration of a known process, machine, manufacture, or composition.
Examples of Patentable Items
These categories include practically everything made by humans and the processes for making the products. Examples of things that are patentable include:
Applying for Patent Protection
Unlike a copyright, a patent does not arise automatically; an inventor must apply for a patent. The inventor must apply within one year of publicly disclosing the invention, such as by publishing a description of the invention or offering it for sale. An inventor, or his or her attorney, generally makes a preliminary patent search before applying for a patent to determine if it is feasible to proceed with the application. The application and a fee are submitted to the U.S. Patent and Trademark Office, where it is reviewed by a patent examiner.
If a patent is granted, the inventor must pay another fee, and the government publishes a description of the invention and its use. Only a patent attorney or patent agent may prosecute patents before the PTO. Before a person may be licensed as a patent attorney or patent agent, she must have a degree in certain technical or scientific fields.
Utility and plant patents last for 20 years from the application date; design patents last for fourteen years. If the owner of a utility patent does not pay maintenance fees, the patent will expire earlier. After a patent expires, the invention becomes public property and can be used or sold by anyone. For example, after the patent on Tylenol expired, other pharmaceutical companies began producing a generic version of the drug.
Patent Infringement
If an inventor thinks someone has used his or her patented invention without permission, he or she may bring a lawsuit against the infringer. If the court agrees, it may award the patent holder costs, attorney's fees, damages in an amount equal to a reasonable royalty, and an injunction (an order prohibiting another person from infringing the patent). An action for infringement can be time-consuming and costly, so infringement cases often are settled.
Patent Law is Complicated: Contact an Attorney
If you have an invention that you would like to have protected, it's a good idea to get acquainted with patent law and intellectual property law in general. With a patent, you can license to other companies or go into business yourself; but failure to properly register your patent can end your dreams. Make sure you contact a patent law attorney if you need legal assistance patenting your novel invention.
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