In feudal England, land was transferred from seller to buyer by the “livery of seisin” ceremony where the seller would transfer a clod of dirt to the buyer symbolizing the transfer of the property. After learning about this ceremony in law school, I was very disappointed when I discovered the reality of purchasing property — sitting around a table signing lots of documents.
Intellectual property is distinguished from “real property” because the property itself exists in our heads and needs to be “created” through a process of description and examination. If approved and granted, your property is described in a proxy form such as a patent, copyright registration, or trademark registration. There is no livery of seisin ceremony. You cannot walk the property line of your patent or plant a garden in your copyright registration. To get a patent, you have to create.
How to Create a Patent
Patent rights are created through invention by an inventor. The inventor conceives an invention and reduces the invention to practice by making or using the invention (think Edison turning on the light bulb) or by “construction” (e.g., filing a patent application). For a utility patent, the invention must fall into certain categories?—?“a new and useful process, machine, manufacture, or composition of matter or any new useful improvement thereof.”
In the U.S., the initial owner of the patent application is the inventor. Inventors are often obligated by contract to assign their patent rights to their employer. But there are others who have potential ownership rights, depending upon their role in the invention process, including funding agencies, contractors, and creditors.
c. The Patent Application
Once our inventor has conceived an invention and reduced it to practice, the invention must be described, enabled, and claimed. Patent rights are granted as part of a bargain — the inventor must disclose a new and useful invention well enough to (1) show she had possession of the invention and (2) the public can make and use the invention.
After describing the invention, the inventor must now claim it in sentences that draw a boundary around the invention and separate it from what has come before, also known as “the prior art.” Together with drawings which may illustrate the invention, the description and claims form a “patent application” which is submitted (in the U.S.) to the United States Patent & Trademark Office (USPTO) for examination by a Patent Examiner.
The Patent Examiner reviews the patent application to make sure (1) it meets the description and enablement requirements, and (2) the claimed invention is “novel” and “nonobvious.” In order to earn your patent ribbon, the Patent Examiner conducts a search of the “prior art” and issues an Office Action detailing whether or not the Examiner believes the invention is new and “non-obvious” to people “skilled in the art” of the invention. Importantly, the inventor, the attorney and others involved in the process all have a “duty of disclosure” to tell the USPTO about relevant prior art.
By way of example, if the prior art discloses a three-legged stool and you claim a four-legged chair, the Examiner may issue an “office action” explaining that an ordinary chair maker would think of adding a leg and therefore the four-legged chair claim is “obvious.” The inventor may respond with arguments and evidence as to why the claim would not be obvious. The exchange between the applicant and the Examiner, known as the prosecution history, results in either claims being allowed or rejected in view of the prior art.
There are other requirements to obtain a patent, including having claim language that is clear and unambiguous, drawings made in a particular way, having certain headings etc. Once allowed claims are found and all other requirements are met, the Examiner allows the application, you pay your issue fee, and the USPTO will issue your patent in due course.
What Can You Do With Your Patent?
Inventors sometimes believe that once the patent is issued, many wonderful things will happen. While that sometimes may be true, more often than not a patent grant requires more work on part of the patent owner to obtain value. Like all property rights, patent rights are a right to exclude. A land owner can keep others from trespassing on real property. A patent owner can exclude others from infringing a patent claim. In both cases, the owner can go to a court and ask the court to enforce their rights against the trespasser/infringer.
Inventors also may believe that having a patent gives them the right to do something with the patent. This is incorrect. Instead, patent rights, like other property rights, include the right to exclude?—?you can enforce your patent rights and prevent others from practicing your claimed invention.
In addition, practicing your invention may infringe the patent rights of others. In other words, having a patent does not immunize you from liability for infringing the patents of others. You may have a patent on using aspirin to prevent a heart attack. However, using aspirin to treat a patient may infringe a patent claiming the aspiring itself.
Patent rights, like other property rights, are a bundle of rights. You can sell or license your patent rights, subject to other laws (e.g., antitrust, contract law). You can license your patent rights to a particular “field of use.” For example, you can license rights to a drug to treat cancer to one party and to treat kidney disease to another party.
While you may not have the satisfaction of transferring a clod of dirt, creating and intellectual property can be more satisfying and have a wider impact on the technological landscape.