Understanding Patents: Types, Requirements, and Rights

Patent

A grant by the government of a right to exclude others from practicing (i.e., making, using, selling, and offering to sell) a particular invention for a set period of time.

Useless Patent Example

An apparatus comprising: a seat area configured to allow an individual to sit; three support legs to support the seat area off of ground; and a support beam between two of the three support legs.

Purpose of the Patent System

Incentive to help promote progress of the useful arts; Quid Pro Quo (between the inventor and the U.S. Government); a patent contributes something that the public did not previously have.

Utility Patents

Protect utilitarian inventions, both animate and inanimate.

Design Patents

Protect new, original and ornamental designs for manufactured goods.

Plant Patents

Protect new and distinct plant varieties that have been reproduced by asexual means.

What is Patentable?

Nearly anything under the sun that is made by man, provided it is useful, including processes, machines, articles of manufacture, compositions of matter, and improved versions of the foregoing.

What is Not Patentable?

Laws of nature, discoveries, natural phenomena, and abstract ideas.

The Ground Rules

Constitution, 35 U.S.C., 37 C.F.R., MPEP.

Term of a Utility Patent

Today: term is 20 years from the date of filing of the application for the utility patent.

Utility Patent Requirements

A written application including: enabling disclosure, at least one claim, and government filing fee.

Claim Requirements

Utility: Minimum amount of usefulness; Novelty: Must be new; Nonobviousness: If it would have been obvious to one of ordinary skill in the art to modify a prior device and arrive at the claimed invention, then the claim is unpatentable.

The Abstract

Designed to provide a general description of the invention for individuals performing a search.

Drawings

Designed to describe the features of the claims in the patent.

Detailed Description

Designed to provide adequate description and enablement of the invention; must describe reference elements of drawings and can provide additional information.

Detailed Description - Lexicographer

An inventor is his/her own lexicographer; should describe the past, present, and future.

Detailed Description - Audience

Know your audience; it should provide practical examples and be understood by those NOT skilled in the art too.

Enablement Requirement

One of ordinary skill in the art at the time of filing of application.

Written Description Requirement

Adequately describe terms and the invention to one of ordinary skill in the art at the time of filing of application.

Claims

THE most important part of a patent by far! (It's a lie. It's the second if not third most important.)

Claims Scope

Claims dictate the scope of the invention, i.e., what rights an inventor has and doesn't have in a patent.

Infringement Determination

Claims are what determines whether another person/entity is infringing a patent.

Defense to Invalidity

Anything else is a defense to invalidity or allowed infringement.

Independent Claims

Claims are either independent, i.e., they stand and fall on their own.

Dependent Claims

Dependent claims include all the features of the other claims they refer to in their preamble.

Inventorship Definition

Under U.S. law, for any type of patent, inventorship is defined by the claim(s) of the patent.

Inventor Criteria

An inventor is one who 1) conceives of at least a portion of at least one claim and 2) reduces that claim to practice.

Conception

Conception is the formulation in the mind of the inventor of the definite and permanent idea for solving a problem.

Reduction to Practice

To complete invention, there must be a reduction to practice, which may be actual or constructive.

Actual Reduction to Practice

This is when the invention is made and tested to determine that it works.

Constructive Reduction to Practice

An invention can be 'constructively' reduced to practice by filing a patent application claiming the invention.

Single Inventor

There may be only one inventor, which occurs when one person has conceived of the entire invention.

Joint Inventors

When more than one person contributes to the conception of an invention, each is considered to be a joint inventor.

Collaboration Requirement

Joint inventors do not have to have physically worked together on the invention, but there must have been some collaboration.

Assigning Rights

Any inventor may assign one or more rights, in any capacity, to another individual(s) and/or entity.

First Owner of Patent

Under US law, an inventor is the first owner of a patent.

Assigned Rights

Assigned rights dictate ownership, e.g., inventors may license instead of assigning in whole.

Duty to Assign Document

A Duty to Assign document states that any invention made by that employee is owned by the entity.

Non-Compete Agreement

A non-compete agreement is an acknowledgement by a signing individual that he/she will not competitively compete in the same field for a limited period of time.