Patent Basics

Table of Contents

1.1 What is the legal authority behind patents?

1.2 Which government agency is responsible for administering patents?

1.3 Why own a patent?

1.4 Factors to Consider Before Patenting:

1.4.1 Has the invention been commercialized?

1.4.2 Did you invent the invention?

1.4.3 Is the invention my property?

1.4.4 Does the invention have patentability?

1.4.5 Does the patent class fit it?

1.4.6 Is it novel?

1.4.7 Does it seem obvious?

1.1 What is the legal authority behind patents?

The Constitutional basis of the federal copyright and patent systems is the Constitution of the United States, Article 1, Section 8 clause 8. This states that “Congress shall be able to. . . Therefore, to promote science and the useful arts, author and inventors are granted limited access to their writings and discoveries to encourage scientific progress.

U.S. Patents grant the inventor the “right to prohibit others from making, using or offering for sale the invention in the United States” or “importing it into the United States.” It encourages creativity and facilitates innovation. Abraham Lincoln said, “The Patent System gave fuel to the fire of genius.”

1.2 What government agency is in charge of administering patents?

The U.S. Patent and Trademark Office, a Department of Commerce branch, oversees trademark and patent laws. It grants patents on utility inventions, designs, and plants. In addition, the USPTO examines patent applications to determine whether they are eligible for patents.

The USPTO publishes patents, approves trademark registrations and other publications about patents and marks; records assignations of patents and marks; and maintains search areas and a national network with Patent and Trademark Depositary Libraries. The public can use these libraries to review issued patents, trademarks registered, pending applications, and other records related to trademarks and patents. It also provides copies of records and other papers.

1.3 What are the advantages of owning a patent?

Many organizations recognize inventors annually as crucial to modern society. A patent protects your invention as well as the investment. Here are some benefits:

• You, the patent owner, can prevent others from using, making, or selling your invention in the United States.
• A key patent’s value can increase over time as an industry matures.
• Because banks value it, investors, venture capitalists, bankers, and other potential buyers, a patent can be a significant asset to any business, even start-ups.
• There are many ways you can monetize your patent invention. For example, you can either sell your patent or license it to others for royalties, or you could choose to be the sole manufacturer of your invention.

1.4 Factors to consider before Patenting:

1.4.1 Can the invention be made commercially?

Consider the cost of your invention, the price of competitors’ products, ease of use, and consumer demand.

1.4.2 Did I create the invention?

Patents can only be obtained if the invention is your own. Therefore, only the inventor can apply for a patent in the United States. However, co-inventors have contributed to at least one claim in the application.

1.4.3 Am I the inventor?

The invention may not be yours if your employer holds the rights to the invention (i.e., If you have given up the rights to the invention by contract or were hired to invent the invention, your employer is entitled to it.

1.4.4 Is the invention patentable?

A patentable invention must be:

• Novelty
• Patentable subject matter.
• Non-obviousness
• A description that is sufficiently described or enabled
• Claimed in clear, definite terms

Patents are only granted to valuable inventions. Although most inventions are practical, the USPTO determined that the following ineligible patents were not available:

• Ornamental, but without utility. If your invention is visually ornamental and applied to an article that is not functionally usable, you may consider applying for a design patent.
• Unsafe drugs
• Non-operable inventions
• Only inventions with illegal uses
• Theoretical phenomena

1.4.5 Does it fit in a patent “class?”

According to the U.S. Supreme Court, anything artificial will fall under these “classes.” But everything natural or abstract will not. Because these are so broad, an invention will likely fit in one or more. An invention must fit into at least one for a patent to be issued. These are the “classes.”

1.4.5.1 Methods and processes

These steps are for performing or making something. These steps can change the way you use a keyboard or something else. However, they cannot be limited to mental steps.

1.4.5.2 Machines

Machines are things or devices that interact with one another and accomplish something. Although it is related to processes, the emphasis here is on the machine itself and not the machines that employ them. Machines may include the traditional definition of what constitutes a machine, such as a sewing machine. Depending on how the patent application is written, it can also cover software.

1.4.5.3 Articles

This includes both what is made by humans and what comes out of manufacturing. It is an invention that achieves something without the interaction between moveable parts or objects having incidental moveable parts. Articles of manufacture include, for example, books, erasers, and knives. Most naturally occurring items do not fall under this category. However, there are exceptions to the rule, such as a novel and non-obvious application of a natural item. There may also be overlap between articles of manufacturing and machines or compositions.

1.4.5.4 Matter compositions

Compositions of matter are chemical or material combinations made by chemicals. This includes gasoline, glues, and plastics. Compositions of matter are not natural items, but their derivative chemicals and extracts in the purified form are. These compositions often overlap with articles made of the material. Compositions focus on the chemical building blocks and not the shape of an article.

1.4.5.5 Upgrades

Improvements are new uses of an existing invention. If the original patent owner is still protecting the invention, you might need a license.

1.4.6 Is it novel?

Patented inventions should be distinct from prior knowledge or inventions. This means that the invention must be different in some way from the prior art (prior art) at the time you file the patent application. For example, the invention may be novel if it incorporates a new feature or uses an existing feature differently. Or if it applies a combination of older features.

1.4.6.1 Prior art

Any evidence that can be used to establish if your invention was known before the filing date is prior art. This could be a video, product demo, or brochure that describes concepts similar to your invention. You can also include prior art, for example:

• Anything that was in use in the United States or sold within the last year of the filing date for a patent application;
• Publicly known information or use by others in this country is before the filing date.
• Anything built or made in this country before the invention date.
• Prior patents filed over a year before the patent’s filing date are not eligible for this patent.
• Publications published before the patent’s filing date or a year earlier than the date of the invention are not allowed.

Public use, description, or presentation of the invention could be considered prior art and used against the applicant’s patent application. The US has a grace period of one year from acts like these, but it is not recommended that an inventor publishes before filing. However, since ProvisionalBuilder® software reduces the cost for patenting so much, you should consider filing ASAP.

A patent application must be filed in the United States within one year of an inventor selling their invention, offering it for sale, publicly or commercially describing or using it. You should file your application before doing this and no later than one calendar year after doing so. You could be subject to a patent suspension if you sell or commercialize the invention.

1.4.7 is it Non-obvious?

This is an essential requirement for patent ownership. Patentability is not possible if something is obvious. However, it may be patentable if it is unexpected and unpredictable.

Several factors determine obviousness:

• The invention is a commercial success.
• The invention solves an unsolved problem.
• The invention removes hardware from the prior art.
• Invention alters the prior art in an entirely new way.
• The invention is vital for the industry.
• Other people have attempted to invent this invention, but they failed.
• Others inventors claimed that this invention was impossible.
• Others have copied this invention.
• Other experts in the field have also praised the invention.

You can read more about the USPTO’s process for determining obviousness at http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm.

When determining obviousness, the USPTO’s focus is on what an ordinary skilled person in the relevant art would know at the time of invention and what that person could reasonably expect to do given that knowledge. This standard applies regardless of whether that source of knowledge and ability is documented before art, general know-how in the art, common sense, or other sources.