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. See 35 U.S.C. 271(a). It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter. Today there are few questions with respect to patentable subject matter. From time to time the United States Patent Office does attempt to breathe new life into rejections for want of patentable subject matter, but ultimately the legislative history and the guidance of the Supreme Court is clear and anything made as the result of human intervention is patentable.

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 metes and bounds of the final requirement for patentability, namely that the patent invention is adequately described, is within the province of Congress to determine.

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.

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

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, US patent law and patent practice before the United States Patent Office.

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• Best Mode Requirement
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• Maintenance Fees
• Patent Infringement
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• Patent Misuse
• Plant Patents
• Repair vs. Reconstruction
• Willful Patent Infringement
• Applying for a Patent in the US
• Business Method Patents
• Cost of Obtaining a Patent
• Design Patents
• Learning from the Animal Toy Patent
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• Nonprovisional Utility Patent Applications
• Overview of the US Patent Process
• Patent Attorneys Fees Explained
• Patent Drawings
• Patentability Requirements
• Adequate Description Requirement
• Patentable Subject Matter
• The Nonobviousness Requirement
• The Novelty Requirement
• The Utility Requirement
• Patent Searching 101
• Patent Search FAQs
• Provisional Patent Applications
• Patent Bar Exam