PUBP 4640: Patents - Part 1

Patent

A legal document granting exclusive rights to an invention for a limited time

Patentability Requirements

Criteria including subject matter, usefulness, novelty, and non-obviousness

Subject Matter

The area of technology to which an invention pertains

Useful

Having a useful purpose and operativeness

New

Not previously known or used

Non-obvious

Not readily apparent to a person having ordinary skill in the art

Defenses

Legal arguments against patent infringement

Patent Application Requirements

Conditions and process for filing a patent application

Term of a Patent

The duration for which a patent remains in force

USPTO

United States Patent and Trademark Office responsible for patent administration

Utility Patents

Granted for new and useful processes, machines, articles of manufacture, or compositions of matter

Design Patents

Granted for new, original, and ornamental designs for articles of manufacture

Plant Patents

Granted for distinct and new varieties of asexually reproduced plants

Infringement

Unauthorized use of a patented invention

Commercializing

Making, using, offering for sale, selling, and/or importing the patented invention

US Constitution Article I, Section 8

Gives Congress the power to enact patent laws to promote progress of science and useful arts

35 U.S.C. Section

Title 35 of the United States Code containing patent laws

Leahy-Smith America Invents Act (AIA)

Significant change in patent law in 2011 impacting patent procurement and enforcement

Patentable Subject Matter

Includes new and useful processes, machines, articles of manufacture, or compositions of matter

35 U.S.C. §101

Defines patentable subject matter and useful requirement

Diamond v. Chakrabarty (1980)

Supreme Court case establishing patent protection for artificially constructed micro-organisms

35 U.S.C. §100-103 and 171

Conditions for patentability including definitions, subject matter, novelty, non-obviousness, and application requirements

35 U.S.C. §112

Requirement in patent application for written description, enablement, and best mode

35 U.S.C. §102

Defines novelty and prior art anticipation

35 U.S.C. §103

Defines non-obviousness and obviousness in light of prior art

35 U.S.C. §171

Defines patentable subject matter for design patents

Subject Matter Requirement

Necessity for a complete description of the actual machine or subject matter for patent

Process

Includes a new use of a known process, machine, manufacture, composition of matter, or material

Patentable Processes

Processes limited by Courts over the last decade

Legislation

Expected changes in laws or regulations

Patent Eligibility

Controversy and complaint since Supreme Court's rulings in Mayo v. Prometheus and Alice v. CLS Bank Int'l

Mayo v. Prometheus

Case holding claims directed to a method of giving a drug to a patient, measuring metabolites, and deciding dosage, were not patent-eligible

Alice v. CLS Bank International

Case holding certain claims about a computer-implemented, electronic escrow service for financial transactions as invalid

Inventive Concept

Requirement for an invention to transcend mere computer implementation

Non-Patentable Subject Matter

Examples include printed matter, naturally occurring articles, and scientific principles

Atomic Energy Act of 1954

Excludes patenting of inventions solely for the utilization of special nuclear material or atomic energy in an atomic weapon

Novelty Requirement

Conditions for when a patent should not be granted based on the concept of novelty

Prior Art

Information made available to the public before a given date relevant to a patent's claims of originality

Grace Period

Exceptions for inventor disclosures made 1 year or less before the effective filing date of the claimed invention

Non-Obvious

Condition of patentability referred to as non-obviousness

KSR v. Teleflex

Supreme Court case moving away from reliance on the previous "TSM test" for obviousness

Defense Against Patentability

Anticipating prior art and lack of novelty

Obviousness

Under 35 U.S.C. §103, if decision-maker goes beyond a single prior art reference.

Enablement

Requires sufficient disclosure to guide art worker without undue experimentation.

Provisional Patent Application

Allows lower-cost first patent filing, provides 'Patent Pending' status, and establishes early effective filing date.

Drawings

Required to show every feature specified in the Claims, following specific Office rules.

Applicant

The inventor or a person to whom the inventor has assigned or is under an obligation to assign the invention.

Inventorship

The person(s) contributing to the claims of a patentable invention, with joint inventorship possible.

AI Inventorship

AI systems cannot be named as inventors, leaving legal protections for AI-created inventions in question.

Limited Monopoly

Term of a new utility patent is generally 20 years from the filing date, subject to maintenance fees and extensions.

Patent Term Adjustment

Extendable term for US Utility Patents beyond the standard 20 years.

Terminal Disclaimer

Can limit the term of a US Utility Patent beyond the standard 20 years.

Patent Agents

Registered to prepare patent applications and conduct prosecution in the USPTO, but cannot conduct patent litigation in courts.

Patent Attorneys

Registered to prepare patent applications and conduct prosecution in the USPTO, and can conduct patent litigation in courts.

Patentability

Involves patentable subject matter, novelty, non-obviousness, and requirements in patent application.