1. Types of U.S. Patents
The United States Patent and Trademark Office (USPTO) issues three types of patents: utility, design, and plant patents. Developments in technology nearly always are protected by utility patent, the most common type.
Utility patent protection is often synonymous with progress. A utility patent protects an idea that is reduced to practice. If not reduced to practice, an idea cannot be patented. Most patents in the United States are utility patents, although the percentage of design patents that issue each year is increasing. A utility patent typically has a term that expires twenty years after its filing. By and large, utility patents usually provide the greatest scope of protection of a development as compared to other types of patents, as well as to other types of intellectual property.
A design patent protects the ornamental design – that is, appearance – of an article of commerce. A design patent should be pursued if the "look" of an article of commerce has commercial value. A design patent does not provide protection for a new use or benefit, or other utilitarian feature of that article (patent protection of utilitarian features requires a utility patent). Design patents have a term of fourteen years from issuance. Design patents are considered to provide quite narrow protection, limited to the exact product shown in the drawings of the patent and perhaps minor variations thereof. However, in some industries, such as the athletic shoe industry, design patents are a principal method of protection from knock-offs.
Plant patents relate to the protection of asexually reproduced new varieties of plants. Plant patents represent only about 0.5% of all issued U.S. patents and are not discussed in this newsletter.
2. Patent Application
To fully appreciate the potential scope of protection that can be provided by a utility patent, the application, as well as the examination process, should be understood. A patent application, technically called a non-provisional patent application, is a formal document examined by the USPTO and, upon allowance, issues as a patent. A provisional patent application, which came into existence in 1995, is an informal application that serves to establish a filing date but which must be replaced by a non-provisional application within one year of filing. A non-provisional patent application must include a specification and one or more claims.
The specification sets forth a detailed description of the invention, and usually includes drawings and a discussion of currently existing devices and processes, and the problems associated with those existing devices and processes. The specification must satisfy two requirements: (1) it must sufficiently describe the invention in such a manner so that it enables (that is, teaches) a person of ordinary skill in the pertinent field to make and use the invention (known as the "enabling" requirement); and (2) it must set forth the "best mode" (that is, best way) contemplated by the inventor for carrying out the invention.
The claims are a necessary and critical component of the patent application since they define the metes and bounds of the scope of protection being sought. To understand a patent claim, consideration of patent infringement is useful. As discussed below, a patent is infringed if one or more claims of that patent are infringed. A claim of a patent is infringed by a device or process that includes or carries out every element and feature set forth in that claim. Logically, the fewer elements, features, or steps within a claim, the fewer requirements exist for that claim to be infringed. Hence, a claim with fewer requirements (that is, fewer elements, features, or steps) has greater scope (that is, is broader) than a claim with more requirements. These requirements are referred to as "limitations" in the patent field.
A patent application optimally should include a claim with as few limitations as possible, to maximize its scope of protection. However, an overly broad claim may encompass the "prior art." To be patentable, an invention as set forth in a claim (called the "claimed invention") must be novel and non-obvious in view of existing devices and technology (that is, the "prior art"), and thus an overly broad claim will not be patentable. During the examination process, the USPTO Patent Examiner seeks to ensure that claims are not too broad. The patent lawyer seeks to ensure that claims of properly broad scope are eventually allowed and included within an issued patent. Generally, claims of medium and narrow scope are also included in case the broadest claims are held un-patentable during the examination stage or are invalidated in court. All claims, from the broadest to the narrowest, must be investigated by an accused patent infringer, often making such investigation costly. A patent with forty claims is more intimidating to an inexperienced party than a patent with three claims, although ultimately the number of claims in a patent application should be based on more technical and legal criteria.
3. Patentability Opinions
There is no requirement that an opinion of patentability be obtained before a patent application is filed, nor is there any requirement that a formal or informal patentability search be conducted. However, an applicant must satisfy a duty of candor (that is, disclosure of prior art pertinent to patentability). There are several advantages for conducting a patentability search and obtaining an opinion before filing an application. First, a search provides a baseline of existing technology pertinent to the invention. With knowledge of existing technology, both the inventor and patent attorney are able to more easily grasp whether an invention is entitled to a patent and worth the cost of preparing an application. Second, a search may prove fruitful in providing the inventor with additional ideas and variations that can be applied to the invention. Since patent protection should contemplate and cover variations and modifications of an invention and, if properly obtained, minimize a competitor's ability to "design around" a patent, the additional ideas supplied by search results may prove invaluable. Third, a review of the prior art provides the patent attorney with insight as to exactly what scope of protection should be sought. Claims of appropriate scope can then be drafted, which may prevent needless USPTO rejections of overly broad claims. Such rejections delay patent issuance and establish an undesirable file history that may adversely impact claim breadth. Sophisticated developments within R&D departments, however, may not require such searching. Scientists, engineers, and others involved may be so well aware of the prior art as to make further investigation unnecessary.
4. Requirements for Pursuing Patent Protection
The following sections summarize the various requirements for pursuing patent protection.
A U.S. patent application must be filed in the name of all of the inventors of the claimed invention. An inventor is a natural person (that is, not a legal entity such as corporation) who has contributed to the conception of the invention. Thus, a manager merely overseeing a development is not an inventor, nor is a technician who simply carries out the direction of an inventor. If there are multiple inventors, each inventor must have contributed to the conception of the invention, but their contributions need not be equal.
Patentable Subject Matter
There are four categories of subject matter that can be patented: (1) process; (2) machine; (3) article of manufacture; and (4) composition of matter. Subject matter that does not fall within one of these categories cannot be patented. However, in light of recent case law, nearly all types of developments today may constitute proper subject matter. Specifically, recent decisions in State Street Bank and Trust Co. v. Signature Financial Group Inc. and AT&T v. Excel have established that business methods, software algorithms, and software processes are proper subject matter for patent so long as the claimed invention carries out a practical application. With relatively little effort, nearly every development can be set forth in terms that recite proper subject matter.
Novelty, Utility, and Nonobviousness
A U.S. patent may be obtained for an invention if it is (1) new; (2) useful; and (3) not obvious in view of the prior art. The "useful" requirement is nearly always satisfied by most developments, except in certain chemical and biotechnology fields, where utility may need to be demonstrated. For convenience, the "new" and "nonobvious" requirements may be perceived as a single requirement that the invention is sufficiently (or patentably) different from that which is already known, or for the most part publicly available. That which is already known or publicly available is called the prior art, and what constitutes prior art is defined in the U.S. Patent Act.
Whether an invention is nonobvious in view of the prior art often is a difficult question to answer. Courts look to the following considerations to determine whether the nonobviousness requirement is satisfied: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed subject matter; (3) the level of ordinary skill in the art at the time the invention was made; and (4) secondary considerations. Secondary considerations include whether the invention solved a long standing problem, had surprising results, was commercially successful, was copied by others, solved a problem contrary to accepted wisdom, etc., all of which support nonobviousness.
Prior art pertains to prior events, such as the publishing of publicly available materials, issuance of patents, offers for sale, and sales of products that are potentially pertinent to the patentability of an invention. Prior art is always invention-specific and thus prior art to one invention (that is, claimed in a patent application) often is different from prior art to another.
Many things may constitute prior art. First, prior art includes that which is in use, known, published, or patented before the date of invention. Second, prior art further includes that which is publicly known, offered for sale, published, or patented more than one year before the priority filing date of the patent application. This second part of prior art includes actions and efforts carried out by third parties, but it also includes actions and efforts by the inventor(s) and by the employer of the inventor(s).
In addition to the temporal nature of prior art, certain types of prior art are geographic in nature. For example, knowledge, use and offers for sale occurring outside the United States do not constitute prior art and thus cannot be the basis for rejecting an application. However, there are no geographic restrictions for publications and patents. For example, a publication, including a printed advertisement, published outside of the United States can be prior art, as can foreign patents. Other, more technical forms of prior art exist but are not addressed in this chapter.
5. Examination before the USPTO
A patent application typically is pending between eight months and two years before it is examined. A petition to expedite may be examined under limited circumstances. During examination, the USPTO conducts a search for relevant prior art, reviews the prior art and all prior art submitted by the applicant, and compares the claims in the application to that prior art to determine if the novelty and nonobvious requirements for patentability are satisfied. The application is rejected if any claim is rejected or if any other part of the application is rejected. The USPTO issues an "office action" that sets forth each rejection and its basis. If the application is allowed, the USPTO issues a notice of allowance and, thereafter, a patent generally issues about three months after payment of issue and publication fees.
If the application is rejected, the applicant may amend the application, submit arguments that the rejection is improper, or do both. The USPTO reviews the submitted response and issues either another office action or a notice of allowance. The second office action may be deemed "final" under certain circumstances. If deemed final, amendments and arguments may still be submitted, but the examiner is no longer required to consider them, but often does. In response to a final office action, the applicant may file a request for continued examination, appeal the rejection to the Board of Patent Appeals and Interferences (Patent Appeal Board), a three-person internal USPTO review board, or abandon the application. As an alternative (or in addition) to requesting continued examination, one or more continuation, divisional, and/or continuation-in-part applications may be filed.
If an appeal is filed, the applicant and the examiner submit appeal briefs, an oral hearing may be held, and the Patent Appeal Board renders its decision. If the applicant is dissatisfied with the decision, a civil action may be commenced in the U.S. District Court for the District of Columbia or an appeal may be filed directly to the Federal Circuit.
6. Expediting Examination in the United States
Expedited examination of a patent application may be petitioned for in the following circumstances:
- A manufacturer refuses to commit to manufacturing or increasing manufacturing without an indication that a patent will issue;
- There is current (believed) actual infringement;
- The applicant is elderly (65 or over) or infirm;
- The subject matter of the application is directed to certain technologies important to the United States, including environmental quality, energy, recombinant DNA, superconductivity, HIV, AIDS, cancer, and countering terrorism;
- The subject matter relates to biotechnology and the following conditions apply: the owner is a small entity (that is, less than 500 employees), the subject matter of the patent application is a major asset of the company, and the development of the subject matter will be significantly impaired if examination of the patent application is delayed; or
- The applicant takes the various pre-petitioning steps of limiting the application to a single invention, conducting a pre-examination search, preparing a detailed discussion of each pertinent reference, and paying a petition fee. If the application is for a design patent, a discussion of the references is not required but properly prepared drawings must be submitted.
Expedited design patent applications can issue within as early as three months from filing.