September 24, 2018

Patent Act

In order to be eligible for patent protection in the United States, an invention must fall within the class of patentable subject matter  In addition, the invention must also meet several requirements.  First, it must be useful.   (35 U.S.C section 101.)  This requirement is generally not difficult for the inventor to satisfy as long as it can meet one of the invention’s stated objective.  It does not have to be embodied in a commercial product although success in the marketplace is seen as establishing utility.

Second, the resulting product or process must be novel.  This means that the invention as compared to what has gone before must be new.  For the purposes of patent law, the universe of “what has gone before” is known as “prior art” and includes prior inventions, as well as patents, patent applications and publications that disclose prior inventions.  The date of invention is complete when it is both conceived and reduced to practice.  If the claimed invention is identical to subject matter disclosed or embodied in the prior art reference, the invention or a particular claim (the portion of the patent defining the invention) is “anticipated” and invalid for lack of novelty.

Third, the invention must be non-obvious.  Unlike novelty, obviousness does not require that the claimed invention be identical to the prior art, rather the test for obviousness focuses on the differences between the claim and the prior art, and asks whether a “a person of ordinary skill in the art” at the time the invention was made might have come up with the invention.  Further, while anticipation requires that all the elements of the claimed invention be found in a single prior art reference, obviousness can be based on the combination of more than one reference.

At present a patent is still awarded in the United States to the first to invent, not the first to file a claim as is true in almost all other countries.  A major exception to this rule allows a later inventor a patent when the first inventor has “suppressed” or concealed the invention.

In order to obtain a patent the inventor must file an application with the United States Patent and Trademark Office for “examination.”  The application must include a specification describing the invention in detail, drawings and claims.  The specification must enable the practice of the invention and must disclose the inventor’s best mode for practicing the invention and the claims must  be definite.  The standards for granting a patent are quite rigorous and many applications are “rejected,” or are approved only after significant narrowing of the patent claims.  The term of a patent is twenty years from the date the patent application was filed.

While the patent application process is ex parte and generally secret, upon issuance of the patent, the Patent Office publishes the invention so that the public may learn about the invention and can improve on it.    The patent owner has the right to exclude others from making, using, offering to sell, selling or importing the patented invention in the United States during the period of enforceability of the patent.  The patent owner gains no affirmative right — a patentee may infringe another patent by practicing the claimed invention.  Remedies for infringement include an injunction against the infringer and damages for past infringement including the possibility of treble damages for willful infringement.

There are no federal criminal laws that cover patent infringement, perhaps reflecting the difficulty of proving that a person infringed a patent with the requisite mens rea for a criminal violation, given the possibility of independent creation and the arcane nature of the patent approval process conducted by the Patent Office.

Finally, even though it may take four, five or even six years for a patent to issue, a patent applicant only has very limited remedies against infringement during the application process.