A patent is a proprietary right granted by the Federal government to an inventor who files a patent application with the United States Patent Office. There are three types of patents available in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant. Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or importing the invention into the United States.
It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter. In other words, a patent can only protect something that is considered patent eligible. Generally speaking, in the United States the view of what is patent eligible is quite broad. Machines, compounds and processes are all patent eligible. Even living organisms that have been genetically engineered in a laboratory are patent eligible (see Diamond v. Chakrabarty). Business methods are also patent eligible in the United States (see Bilski v. Kappos; Patenting Business Methods in the U.S.; and Business Methods: Concrete and Tangible Description is a Must). Software is likewise patent eligible (see Ultramercial, LLC v.Hulu, LLC and Software Patents). Even modified DNA is patent eligible (see DNA patenting). Thus, it is typically more enlightening to discuss what is not patent eligible: 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 and atomic weapons. Chances are that whatever you have can be characterized so that patent eligibility is not a significant impediment to receiving a patent.
The Genesis of U.S. Patent Laws ~ The U.S. Constitution
The United States Constitution grants to the Congress the power to grant patents; this power residing in the Congress is found in Article I, Section 8, Clause 8. Unlike most of the enumerated powers granted to Congress in the Constitution, the Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in significant ways. In this regard, Congress may not simply create patent terms of unlimited duration, nor may Congress do away with the utility, novelty and non-obviousness requirements, nor may Congress authorize the issuance of a patent when the ramifications of such issuance are to remove an existing invention from the public domain, nor may Congress restrict in any way the free access to materials already available to the public. Rather, the Constitution permits Congress to award an inventor a patent if and only if an “invention” does indeed exist. In determining whether an invention worthy of patent protection does exist, the Constitution requires the invention proffered by the applicant to be new, useful and the embodiment of a scientific advance. This last requirement, the embodiment of a scientific advance, is what we have come to know as the non-obviousness requirement. Although this concept did not appear in the Patent Act itself until the 1952 revisions, it seems clear that it has always been considered a constitutional prerequisite to patentability.
The constitutional reward of a patent, together with the constitutional requirements of utility, novelty and non-obviousness, represent a delicate balance struck between the need to encourage innovation and the avoidance of exclusive rights that stifle competition without any concomitant advantage to society. In implementing the permissive Constitutional authority, Congress is free to place requirements upon the acquisition of a patent that further the goals of the clause, while at the same time not compromising the specific dictates of the grant of power.
Indeed, in so fashioning the patent laws to enhance the quid pro quo envisioned by the founding fathers, Congress has enacted certain description requirements that further the goals of the Patent Clause, but which are not constitutional requirements in and of themselves. This is true because while an adequate description is required, the Patent Clause itself does not discuss the particular requirements of the adequate description. For this reason, the so-called “metes and bounds requirement” that places the burden on the applicant to adequately, fully and fairly describe the invention is within the province of Congress to mandate.
The utility requirement for patentability does not have an analogous copyright counterpart. To the contrary, if creations are to be copyrightable they cannot only be useful, but must also have some design features that exist separately from the utilitarian features. Likewise, there is no endeavor to quantify or qualify artist merit prior to a copyright attaching to an original, copyrightable creation. Nevertheless, the remaining two constitutional requirements for patentability, namely the novelty and non-obviousness requirements, can be analogized with the single constitutional requirement for copyrights, namely originality. The purpose of the novelty and non-obviousness requirements is to ensure that an invention does indeed exist. Similarly, the purpose of the originality requirement is to ensure that something worthy of copyright protection has been created. The invention and creation requirements find commonality in that only creations of the mind that are fresh, unfamiliar and different are deserving of intellectual property protection.
Why Patents Matter
The patent system incentivizes innovation. This is accomplished by granting exclusive rights to inventors or the corporations who own rights by and through their inventor employees. This exclusive right dangles the prospect that if there is a market for the invention it can be exploited only by the patent owner.
This should intuitively makes sense to most. After all, who in their right mind would spend the required sums of money to invent and take innovations to market if the day they get to market they can be ripped off by those who did not invest any time, money or sweat in creating?
The basic laws of economics are a factual reality. If you spend money to create you must recoup that investment before you make any profit. If others are allowed to copy you starting day one they have bypassed the development costs and are able to make a profit at a lower, perhaps much lower, selling point. In fact, they can make money at a selling point so low that the original creator couldn’t make money and couldn’t compete. Thus, without patent protection it is quite possible if not likely that the actual innovator would be squeezed out of a market by those who merely copied the innovation.
Those who are not fond of the patent system like to pretend that innovation is free and will happen despite the existence of patents. If the above hasn’t convinced you that patents are necessary, consider that a Patent Survey conducted by the University of California Berkeley Law School found that a significant majority of investors place a premium on patents when making investment decisions. In fact, 67% of firms surveyed indicated that the existence of patents were an important factor in their investment decisions.
The fact that investors place a premium on the existence of patents makes all the sense in the world. The patent grant provides to the owner of the grant the right to exclude others from making, using, selling, offering for sale or importing in the United States anything that would infringe one or more of the claims contained in the patent. The patent provides no affirmative right to do anything, except exclude others. The patent right is an exclusionary right, which by its very nature means the owner of the patent has a competitive advantage. This is why Angel Investors and Venture Capital firms by a two-to-one majority look to invest in companies that have patent rights.
Finally, although no one likes to talk about it at the front end where dreams are real and excitement is high, if you pursue a business endeavor and it is not successful what is your exit strategy? If you have one or more patents you may be able to find a buyer for the patents to recoup some, or perhaps much, of what you have invested. This has famously been apparent over the past couple years with the high profile bankruptcy of Kodak. Kodak was able to sell a small portion of their patent portfolio to obtain much needed capital to emerge from bankruptcy. See Kodak Sells Patents. There are companies that actively seek to purchase patents from even independent inventors, such as Intellectual Ventures, Allied Security Trust and others. There are also patent brokers that can assist you with a sale as well. If you need help finding a patent broker feel free to contact me.
Filing a Patent Application
In order to obtain a patent in the United States it will be necessary to file a patent application. There are various types of patent applications that can be filed. These are:
- Provisional Patent Application
- Non-provisional Patent Application (typically called just a “patent application”)
- Design Patent Application
- Plant Patent Application
It is also possible to file an International Patent Application as well, which can be beneficial if you are interested in obtaining patent rights in multiple countries.
Further discussion of the various types of patent applications goes beyond the scope of this primer, but please do follow the above links to learn more about each. If you are interested in trying to file something on your own please see Do it Yourself Patents.
More Information About Patents
If you have additional questions about patent law or the invention process please take a look at the links below, which are to additional information regarding the invention process and patent law. The pages of IPWatchdog.com are full of information, tutorials and resources to learn more about patents and the patent process.
- How to Use the USPTO Patent Public Search Tool
- Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention