By Karsyn Koon
A U.S. patent gives an inventor the right to “exclude others from making, using, offering for sale, or selling” an invention or “importing” the invention into the U.S. A plant patent provides additional rights on the “parts” of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety). What is granted is not the right to make, use, offer for sale, sell or import the invention, but the right to stop others from doing so. If someone infringes on your patent, you may initiate legal action. U.S. patents are effective only within the U.S. and its territories and possessions.
- Validation: Utility and plant patents are valid for up to 20 years from the date of the first non-provisional application for the patent was filed
- What can be patented:
- Look at each type of patent definition
- All inventions must meet four conditions:
- Able to be used (the invention must work and cannot just be a theory)
- A clear description of how to make and use the invention
- New, or “novel” (something not done before)
- “Not obvious,” as related to a change to something(s) already invented
- Patent law defines the limits of what can be patented:
- For example, laws of nature, physical phenomena, and abstract ideas cannot be patented, nor can only an idea or suggestion
- Other restrictions include the patenting of inventions exclusively related to nuclear material or atomic energy in an atomic weapon (see MPEP 2104.01)
- However, the subject matter that can be protected by patents is vast and varied
- For example, even some methods of doing business may be patented if there is a technological innovation involved
- What cannot be patented: what is not eligible for protection
- Laws of nature, abstract ideas, naturally occurring phenomena, so-called naked business methods (i.e., not tethered to any kind of machine or apparatus), inventions only capable of an illegal purpose, atomic weapons, tax strategies, and human organisms (which the statute does not define but likely relates to embryos and fetuses)
- Notwithstanding, for the most part, chances are that whatever you have invented can be characterized so that eligibility will not be a significant impediment to exclusive rights.
Who can apply:
- You (the inventor) or your legal representative may apply for a patent
- Exceptions to the strict USPTO rules:
- If the inventor has died, is legally incapacitated, refuses to apply, or cannot be found. The applicant must have a personal connection to the inventor, such as being listed in their estate
- Two or more people inventing something together may apply for a patent as joint inventors; A person (e.g., a company) to whom an inventor has assigned an invention, or to whom the inventor is obligated (e.g., contractually required) to assign an invention
- Who cannot apply:
- If you only contribute money but are not the inventor or co-inventor, you cannot be named as an inventor or co-inventor in the patent application
- If you are not the inventor, and the inventor(s) did not assign the invention to you or does not have an obligation to assign the invention to you, you may not apply for a patent
- USPTO employees cannot apply for or own a patent unless they inherit it
- You may apply for a U.S. patent whether you’re a U.S. citizen or not. No U.S. patent can be issued if, before you apply in the United States, the invention was patented abroad by you or your legal representative and if the foreign application was filed more than 12 months before the U.S. filing. Six months are allowed in the case of designs. Foreign inventors should pay attention to other special requirements
- Only applies to the U.S.
Foreign patents and treaties:
- Applicants wishing patent protection in other countries must apply for a patent in each of the other countries or patent offices
- Most patent laws vary by country or territory, and it is up to the applicant to handle the differences
- Paris Convention for the Protection of Intellectual Property:
- A treaty relating to patents (adhered to by 176 countries at last count, including the United States) that provides that each country guarantees to citizens of the other countries the same patent and trademark rights given to its own citizens
- Also provides for the right of priority with patents, trademarks, and industrial designs (design patents)
- This right means that based on a regular first application filed in one member country, you may (within a certain time period) apply for protection in all other member countries
- These later applications will then be regarded as if filed on the same day as the first application
- Thus, these later applicants will have priority over applications for the same invention that may have been filed by others during the same time period
- Lasts for 12 months
- Patent Cooperation Treaty
- Presently adhered to by more than 150 countries, including the United States
- It facilitates the filing of patent applications on the same invention in member countries by providing, among other things, centralized filing procedures and a standardized application format
- Lasts 30 months from earliest claim for priority
- The Hague Agreement
- An international registration system offering the possibility of protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (called Contracting Parties)
- It involves filing a single international application in a single language, either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of your Contracting Party
- “It is important to note, however, that patents do not protect ideas, but rather protect inventions that exhibit subject matter deemed allowable. In other words, any exclusive rights you obtain can only protect something that is considered patent eligible
- Generally speaking, in the United States the view of what is eligible for protection has historically been quite broad. Machines, compounds and processes are all eligible, for example.”
- The U.S. Constitution:
- Patent rights were primarily advocated for by James Madison – argued that there would be issues or a lack of motivation for innovation without strong rights/legal protection
- Power of protection given to Congress by Article I, Section 8, Clause 8; “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”
- The Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in at least some ways
- For example, Congress may not simply create an exclusive right with a term of unlimited duration given that the express language of the Constitution says the rights may only be given for “limited times.”
- “Exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including lifesaving treatments and cures. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).” (Quinn, 2016).
- “The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.” (USPTO, n/a).
- “Gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same.”
- Basically, gives ownership of the idea to the inventor for a limited time under a limited scope, as well as protection against certain definitions of infringement
Types of Patents:
- Utility patentsAlso known as nonprovisional applications: This may be issued as a patent if all patentability requirements are met. A nonprovisional utility application includes:
- A specification (description and claims)
- Drawings (when necessary)
- An oath or declaration
- Filing, search, and examination fees
- All application documents must be in English, or a translation into English will be required, along with a fee set in 37 CFR 1.17(i).
- Utility patents may be granted to anyone who invents or discovers a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements of these.
- The elements of a nonprovisional utility application:
- Application transmittal form
- Fee transmittal form
- Application data sheet
- Executed oath or declaration
Also known as provisional applications:
- This quick, inexpensive way for you to establish a U.S. filing date for your invention can be claimed in a later-filed nonprovisional application. A provisional application is automatically abandoned 12 months after its filing date and is not examined.
- If you decide to initially file a provisional application, you must file a corresponding nonprovisional application during the 12-month pendency period of the provisional in order to benefit from the earlier provisional filing. Provisionals have fewer requirements than non-provisionals — for example, claims and an oath/declaration are not required.
- Patent laws provide for the granting of design patents to anyone who has invented a new, original ornamental design for an article of manufacture. The ornamental characteristics must be embodied in or applied to such an article. The subject matter may relate to the configuration or shape of an article, surface ornamentation applied to it, or the combination of both. A surface ornamentation design is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern applied to an article of manufacture. The design patent protects only the appearance of an article, not its functional features. The proceedings relating to the granting of design patents are similar to those for other patents, with a few differences.
- The elements of the design application:
- Design application transmittal form
- Fee transmittal form
- Application data sheet (see § 1.76)
- Drawings or photographs
- The inventor’s oath or declaration
- Plant patents
- The law also provides for the granting of a patent to anyone inventing or discovering and asexually reproducing any distinct and new variety of plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
- Also known as provisional applications.