Patent Technical Page
WHAT ARE PATENTS?
Patents generally can be characterized as intellectual personal property, which is vested by a grant from the government in return for a full disclosure of the invention. The metes and bounds of the patent rights are contained in the numbered claims appearing at the end of the patents specification. In the United States.- utility patent rights are granted for a duration of 20 years from the date of the patent application.
The patent specification, to which the claims are appended, must be "enabling" so that one skilled in the art can practice the invention and, in addition, must describe the best mode contemplated by the inventor at the time the application is filed. Further, since the specification gives body and meaning to the claimed right, each term within the claims must find an antecedent basis within the body of the specification.
Although countries from Afghanistan to Zanzibar grant patents, the United States patent system is of greatest importance to most companies. When foreign filings are justified, the prosecution is usually handled through an "associate" attorney in the specific country. An associate is utilized because of their familiarity with the patent laws of a particular country and their proximity to the foreign patent office.
U.S. patent rights spring solely from a formal grant by the United States Government and cannot vest in any other manner. The "invention" which is embodied in the claims must meet the requisites of utility, novelty and unobviousness, as determined by well-defined concepts during the course of prosecution in the United States Patent and Trademark Office.
GENERAL RULES AND DEFINITIONS
A patent is a government sponsored monopoly on an invention and its exploitation for a fixed period. In the United States patents are only issued by the federal government, the Patent and Trademark Office, within the Department of Commerce. There are no state patent statutes or common law rights to patents. However, common law protection for inventions exist to some extent by virtue of the tort of unfair competition and trade secrets. The duration of most patents is twenty years from their date of application. See 35 U.S.C. 154. However, certain drug and medical device patents can be extended for a period equal to that portion of the regulatory review period which takes place after the patent is issued. See 35 U.S.C. 156. Design patents have a term of fourteen years from their date of issuance. See 35 U.S.C. 173. Upon the expiration of a patent the invention covered thereby becomes public property. See, e.g. Brulotte v. Thys Co., 379 U.S. 29 (1964), rehearing denied, 379 U.S. 985; Sears, Roebuck & Co. v. Stiffel Co. 376 U.S. 225 (1964).
WHAT IS A PATENTABLE INVENTION?
The determination of patentability of an idea should be made solely by an experienced, licensed patent attorney. MEYER & ASSOCIATES, LLC can help you make a patentability assessment. The term "invention" is a well-defined legal concept consisting of two independent but related parts: the conception and the reduction to practice. Conception of the invention is a legal concept concerned with the instant the total concept of the invention is complete in the mind of the inventors. Thus, conception is not concerned with the preliminary thoughts of the inventors or with general ideas or preliminary expressions but only relates to that specific time when the inventors is in total possession of all the information relating to the invention, including an appreciation of the invention to such an extent that a person skilled in the art could actually construct the invention. That is, "conception" is that instant when the inventor is in possession of all the necessary requisites, concepts, and information in sufficient detail for the invention to be carried out in actual practice by himself or another skilled in the art at the inventor's direction without further independent inventive ingenuity being required to effect the reduction.
If such further independent inventive ingenuity is required in reducing the invention to practice, then the original conception will fall as inadequate.
Actual reduction to practice of the invention is the physical carrying out of the completed conception, including demonstration of the invention's usefulness for its intended purpose. "Reduction to practice" can be accomplished by the inventor himself or on behalf of the inventor at his behest.
In addition to actual reduction to practice, U.S. law recognizes a constructive reduction to practice which involves filing a patent application on the operable device without actually physically building or constructing the device, or practicing the process.
In addition, the invention must be novel, unobvious and useful.
Novelty is a statutory requisite which, in general, encompasses the idea that an invention is patentable only if new, i.e. not known in the art prior to that time the inventor "conceived" the invention. If the invention has been published prior to that date anywhere in the world or has been used or sold or publicly demonstrated in the U.S. more than one year before the filing of the patent application, no patent on the invention can be issued. In common parlance, such prior publication or use of the exact invention is known as anticipation.
The invention must be unobvious to one having ordinary skill in the art. Thus, an invention, even though it is not directly anticipated, may be unpatentable if the inventive concept could have been accomplished by mere manipulation of previously known art by a skilled artisan, wherein the skilled artisan would not have had to exercise any "inventive ingenuity." This concept is extremely subjective but has been better defined by objective tests laid down by the U.S. Supreme Court over the years.
Beyond being novel and unobviousness, an invention must be useful for its intended purpose. As previously discussed, such usefulness must be demonstrated at the time of reduction to practice. However, some devices, processes and compositions, especially those which are improvements, have such a well-established utility that it need not be independently demonstrated.
The subject matter of a patent is set by statute. Patents may be issued on new and useful compositions of matter, machines, devices, systems, processes, and methods and articles of manufacture or improvements thereof, including a new use of a known process.
The word "process" means a process or method of primarily an industrial or technical nature. The term "machine" refers to types of apparatus, commonly with moving or movable parts, which serve to transmit and modify force and motion to do work. Familiar examples are watches, engines, transmissions, typewriters, guns and the like. The term "article of manufacture" refers to manmade articles having a definite configuration which are usually static or inert in the performance of their intended function. Such articles include ash trays, chairs, boxes, light bulbs, and the like. Processes are sometimes called arts, methods, procedures, steps and conditions for accomplishing a desirable physical or chemical change. The following are illustrative of processes: extrusion of plastics or metals; cleaning a heat exchanger; conversion of monomers to polymers; synthesis of chemicals; and separation of products from reaction streams. The term composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
Generally, inventions and discoveries are patentable (35 U.S.C. 100 and 101). Inventions and discoveries include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" (35 U.S.C. 101). Patent protection is also specifically afforded for asexual reproduction of plants (35 U.S.C. 161-164) and certain engineering cultivation and inventions therefor and for designs (35 U.S.C. 171-173) for an article of manufacture that are new, original and ornamental. Protection for plant improvements created from seed is provided under the Plant Variety Protection Act (7 U.S.C. 2401 et. seq.) but is not patentable.
The statute provides the keys to patentability. In order to obtain a patent there must be invention, novelty, utility, and non-obviousness. It is on these issues that patent infringement actions and patent prosecution actions are grounded.
WHO IS AN INVENTOR?
The conception of the invention is integrally tied to the individual inventor. The patent is granted to the inventor. In cases where two or more persons are intimately involved in a conception, or in some instances where further ingenuity is required in reducing the invention to practice, there is joint inventorship, i.e. the persons are co-inventors. A patent application must be filed in the name of the true inventor or inventors.
An invention of a single person is that of a "sole" inventor while that of two or more persons is referred to as "joint". Determining when an invention is that of a "sole" inventor and when it is that of "joint" inventors is sometimes a difficult task. Although the determination of inventorship may be complex, the answer is vital to the validity of the issued patent. An inventor is one who makes a positive contribution to the "conception" of the inventive idea. If two people work together and one merely carries out the ideas and direction of the other, a joint invention does not result. Each person has to add something creative to the invention beyond mere skilled expedience if he is to be a true inventor. Only those who have actually made an inventive contribution may properly be included as inventors.
If a patent issues in the names of those who are not the true inventors or omits naming one or more of the true inventors, it is invalid.
WHEN IS PATENT PROTECTION SOUGHT?
Patents are sought when sufficiently useful ends can be served by them which justify the time, effort and money necessary to seek protection. The filings of patent applications are made with the following objectives in mind:
a. Inventions, which are intended for use by your company with respect to processes, products and equipment developed by it.
b. Patents which can forestall others from later obtaining similar patents or patents on similar inventions which might restrict your company's business freedom.
c. Patents which might be used for licensing to others to provide either royalty income or to exchange for rights belonging to others, which fit your company's business objectives.
d. Patents on apparatus and machines, which could assist your company in marketing its services, such as testing equipment, safety devices, and the like.
e. To give prestige to the company, serving notice to the industry and its customers of your company's pioneering interests in all its areas of business.
THE PATENT APPLICATION PROCESS
The patent process commences with the filing of an application together with the fee therefor with the Commissioner of the Patent and Trademark Office. The application must contain a written specification of the invention and of the manner and process of making and using it (35 U.S.C. 112) as well as the claim for invention. The application must also include drawings where appropriate (35 U.S.C. 113) and, if requested by the commissioner, a model (35 U.S.C. 114). The application must be under oath and must state the country of the applicant's citizenship (See 37 CFR 1.68).
The patent application is examined and either a patent is issued, a rejection is issued or the applicant is notified that the application interferes with an existing patent or patent application, in which event a board of patent interferences determines who is the prior inventor.
HOW IS A U.S. PATENT OBTAINED?
In order to obtain the grant of patent rights, the invention must be embodied in an "application" which is submitted to the Patent Office and prosecuted to determine if the statutory requisites granting the rights have been met. The application consists of four parts:
1. A specification describing the invention in terms understandable to one skilled in the art and including a description of the best embodiment of the invention known to the inventor at the time of filing the application;
2. One or more claims defining the particular novel features, or combination of features, that are considered to be patentable and for which the right to exclude others is requested;
3. Drawings, when necessary or desirable; and
4. An oath or declaration of inventorship.
The specification comprises the bulk of the application and is generally broken into four parts comprising:
a. an abstract of the disclosure,
b. a background of the invention including the field to which the invention is related and prior art known to the inventor,
c. a summary of the invention, andd. a detailed description of preferred embodiments or drawings.
After the application has been filed in the Patent Office it will be assigned to a specific art group to which the invention most closely relates. There it will be examined. The examination, conducted by a Patent Office examiner, consists of a search of prior art and a general inspection of the application to determine whether the statutory requisites are met. If they are not, the examiner informs the inventor or the inventor's attorney by a so-called "office action" citing those statutory provisions not met and also citing art which the examiner believes either anticipates or renders the subject matter of the application obvious. The inventor or the inventor's attorney is then allowed to amend the claims in order to distinguish the invention from the prior art. Generally, the body of the specification cannot be amended to include new matter not present in the original application to support the claimed invention. When the amended claims are received in the Patent office, the examiner considered the amendment in light of the cited art and either allows the application or finally rejects it. If the application is allowed, a Notice of Allowance will be sent, and upon payment of an issuance fee, the patent will be issued.
If the examiner issues a "final rejection" of the application after one or more office actions, the inventor may appeal the examiner's decision to the Board of Appeals in the Patent Office. From an adverse decision of the Board, an appeal to the Court of Appeals for the Federal Circuit or a U.S. District Court is available. The inventor's attorney, in lieu of appealing, may file a continuation application which is afforded the original filing date of the parent application. This is done in order to receive further examination and make further arguments to the examiner. Additionally, a so-called continuation-in-part may be filed wherein new matter is introduced into the specification. The filing date as to that matter disclosed in the original application will be the original filing date. The new matter introduced will receive a filing date coincident with the date the continuation-in-part is filed. The prosecution of continuation and continuation-in-part applications proceeds in the same manner as the original application.
HOW IS A FOREIGN PATENT OBTAINED?
As previously mentioned, other countries offer protection to inventions by granting patent rights. The requisite for obtaining patent rights in various countries is very diverse and will not be generally covered in this document. Of note are so-called convention countries.- where the invention is given a priority date coincident with the U.S. filing date.
On June 1, 1978, the U.S. became an active member of the Patent Cooperation Treaty (PCT). The PCT has been ratified by numerous other industrialized countries including Germany, France the United Kingdom, Japan and the countries of the former Soviet Union. The purpose of the PCT is to further facilitate filing procedures and reduce the costs of foreign patent applications.
The requirement for so-called "working" a patented invention is different in different countries. Many foreign countries require that the claimed invention actually be practiced in commerce or the patent rights will be lost. The United States has no such requirement and so-called paper patents, or those which have not been worked or practiced, retain the same validity for most purposes as do those that are actually worked.
WHAT IF AN IDEA IS NOT PATENTED?
Even if an invention does not finally become an issued patent, for whatever reason, it still constitutes valuable intellectual property. There may be many reasons an idea does not finally become a patent:
1. The idea disclosed may not prove to be feasible or may give rise to a much improved invention, by the same inventor or another, which is deemed more worthy of patent protection;
2. Management may not feel that the very great expense of filing an application is warranted because very adequate protection can be afforded by maintaining the invention as a trade secret;
3. It may be determined that the invention is not patentable or that no meaningful commercial coverage could be obtained;
4. because the patent laws require a full disclosure of the invention, management may feel it is more advantageous not to obtain patent coverage but rather retain the idea as a trade secret.
Whatever the reason patent protection is not obtained, the invention should be retained in secret through a confidential disclosure and information management system. Unpatented inventions, ideas and the like are recognized by management, can be used in the company and constitute company assets.
PATENT ASSIGNMENT
Upon issuance of a patent it is recorded in the Patent and Trademark Office. The ownership and assignment rights of United States patents is provided for in Section 261 of Title 35 U.S.C., which provides in pertinent part as follows:
"Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage." It is important to note that the assignment need be recorded within three months of its execution date. Therefore, a subsequent assignment, even if recorded first, will be invalid if an earlier assignment is recorded within three months of its grant. Likewise, if an assignment is not recorded within three months but is recorded thereafter, such assignment will be subject to a later assignment made prior to the recordation of the first assignment, which later assignment is recorded within three months of the grant thereof. Consequently, a search of the Patent and Trademark Office will not protect an assignee against an assignor's prior assignment
GRANT AND PERFECTION OF LIEN
Since (1) the federal law on patents preempts state law, (2) the federal law provides for the recording of an assignment to have priority against; inter alia, a subsequent 'mortgagee' and (3) the Official Uniform Comment to Section 9-104 of the UCC provides that recording under federal patent law is required to perfect a security interest in patents under Section 9-302 of the UCC. This area of the law is quite complex and fact sensitive. MEYER & ASSOCIATES, LLC can help you with security interests whether you are a lender or a borrower.
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