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.
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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.
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Software Patents and Murphy’s Law: Uncertainty is Where Patentability Resides
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- When should you do a Patent Search?
- The Top 5 Mistakes Inventors make with their Invention
- Patent Searching 101: A Patent Search Tutorial
- Patent Drawings and Invention Illustrations, What do you Need?
- The Key to Drafting an Excellent Patent – Alternatives
- Patent Strategy: Building a patent portfolio with meaningful rights
- Patent Strategy: Laying the Foundation for Business Success
- The Cost of Obtaining a Patent in the US
- An Inventor’s Guide to Being Taken Seriously by Patent Attorneys
- Provisional patents are like chicken soup, good for everybody
- The Business Responsible Approach to Patents and Inventing
- A beginner’s guide to patents and the patent process
- Every invention starts with an idea
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- How to Know When You’re Ready to File a Nonprovisional Patent Application
- Are you Ready to File a Provisional Patent Application?
- The Importance of Keeping an Expansive View of the Invention
- Why Inventors Should Not Rely On Their Own Search
- Patent Drafting: Ambiguity and Assumptions are the Enemy
- Patent Drafting: Appropriately Disclosing Your Invention
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications
- Understanding Patent Claims
- Different Types of U.S. Patent Applications
- Utility Patent Applications – Content and Substance
- Moving from Idea to Patent – When Do You Have an Invention?
- The Patent Process on a Tight But Realistic Budget
- The Risk of Not Immediately Filing a Patent Application
- Patent Drafting: Not as Easy as You Think
- The Story of How Patents Promote Innovation
- Completely Describe Your Invention in a Patent Application
- Why Do You Want a Patent?
- When is an Invention Obvious?
- A Better Mouse Trap: Patents and the Road to Riches
- Keep Your Money In Your Wallet Until Proof of Concept
- The Benefits of a Provisional Patent Application
- Turn Your Idea into an Invention with a Good Description
- Patent Drafting: What is the Patentable Feature?
- Should I File a Patent Before Licensing the Invention?
- Strong Design Patents: The Power of The Broken Line
- What is a Patent? Understanding Patents and Patent Law 101
- Patent Claim Drafting 101: The Basics
- A Brave New Patent World – First to File Becomes Law
- Applying for a Patent in the U.S.
- Patent Searches: A Great Opportunity to Focus on What is Unique