Patent Law Basics
July 26th, 2011 by Jacob
A patent is a property right granted by the government to the inventor for the rights to exclude others from making, using or selling the invention in the United States for 20 years from the filing date of the patent application. The implicit exchange is that the inventor must disclose how the invention works thereby contributing to everyone’s knowledge and promote invention. The authority to issue patents come straight from the constitution Article I, Section 8. The primary rules and regulations are Title 35 U.S. Code, Patent and Trademark Office rules at 37 Code of Federal Regulations and the Manual of Patent Examining Procedure (MPEP).
Section 101 of the Patent Act defines four categories for patent protection as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The term “new and useful” is the standard needed to obtain protection. This is called the “novelty” standard. An application for patent protection must qualify within one of the categories and be ‘new and useful’. If it is machine that doesn’t do anything useful it cannot receive a patent. If it is a new object, but not in one of the categories, likewise, it will not receive patent protection.
A process patent includes patents for the method for doing anything. A person cannot just do something in a different manner an claim a patent. If, however, a completely different process is discovered that yields useful benefits, such as lower costs, or higher quality or some completely new benefit, then it may receive a patent. Often drug makers will apply for a process patent for the process of making a new drug apart from a application on the drug itself.
A machine can be a conventional machine or a computer system also. Articles of manufacture are items manufactured. The item must be non-natural and have a man-made structure. This can be anything from a television screen to a pen. Compositions of matter include chemical compositions and any nonnatural living organism such as bacteria, plants and animals. The last three categories manifest themselves in physical products. As such, you can think of patentable subjects being either new and useful products or processes. Finally, patents are possible for “new and useful improvements” on previously patented items.
Courts have interpreted patent law to completely exclude certain subjects from patent protection. However, these categories are not as clear now because of recent court decisions. Still is seems clear that “laws of nature, natural phenomena, and abstract ideas” cannot receive patent protection. The ‘invention’ must be man-made. The discovery of a law of nature or a new plant species cannot be patented. An artificially created chemical or plant species might be patented, although the line between natural and man-made can be blurry and subjective.
Software Patents
Software was a new technology that courts were not sure could be patented. Software relies heavily on mathematics and formulas which may be disqualified as law of nature. An “algorithm” alone clearly will not qualify for a patent although the use of a algorithm is not a prohibition to patent protection. Courts were concerned protection of an algorithm would give someone a monopoly of a law of nature and would be like protecting the formula 2+2=4. It seems as software became more sophisticated courts realized the software could be more than a mere algorithm. Patents are now often granted to computer systems and software code as long is it is new and useful.
Designer Plant Protection
Plant patents protect new varieties of asexual reproducible plants (reproduced without seeds). Section 161 of the Patent Act states,
“Whoever invents or discovers and asexually reproduces 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, may obtain a patent therefor, subject to the conditions and requirements of this title.”
The plant must be artificially created, not newly discovered in nature. The PTO explains the term ‘plant’ as follows:
This protection is limited to a plant in its ordinary meaning:
Designs
Under section 171, whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The standard here does not include ‘useful’. This category seems at odds with the rest of the patent categories. It can be very subject to determine what is a new and original. It also seems to be conflicting with an area of law normally covered by copyright law. This category really stretched patent law which is really intended for inventors rather than designers.
A future post will cover the patent application process step-by-step.
Resources:
U.S. Patent and Trademark Office Patent Classification Overview
Text of the Patent Act as enacted in Title 35
University of Washington School of Law Patent Resources Page
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