Lesson 1: Patent Concepts

1.1 Patent Protection, in Brief

According to the World Intellectual Property Organization (WIPO):

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.

This micro-course explores all concepts mentioned here, including how exclusive rights function in national and international contexts, the technical information needed in the application process, and how you can find and comprehend this technical information once it’s disclosed.

But what qualifies as a “product or process,” and what is meant by “a new way of doing something” or “a new technical solution to a problem”? These ideas vary slightly internationally, but, in the U.S., this effectively includes:

  • processes (intangible series of steps or acts to be performed to produce a given result);
  • machines (tangible things, consisting of parts, that perform functions);
  • manufactures (tangible things “given a new form, quality, property, or combination through man-made or artificial means”); and
  • compositions of matter (tangible combinations of two or more substances, including gases, fluids, solids, powders and extending to genetically modified microorganisms).
  • (as specified in Title 35 of the U.S. Code and detailed in the U.S. Patent & Trademark Office Manual of Patent Examining Procedure)

“Processes” also refers to innovative uses of existing inventions, which some patent experts consider an additional, distinct category. Taken individually or in combination with each other, these categories function as a general, but comprehensive, list of patent-protectable matter. Patent applicants do not need to specify a category, however, as overlap is expected.

In the U.S., patents can also protect asexually reproducing plants (protectable with plant patents) and non-functional, ornamental designs (protectable with design patents). Most other countries and regions protect these forms of intellectual property by means other than patents.

Non-patentable innovations

Based on the description above, it may seem that you can patent just about anything, but many creative works are categorically unpatentable.

Some are protectable through other forms of intellectual property. For instance, creative works expressed through writing, music, or art are protectable by copyright, and words and symbols that indicate a good or service in the marketplace are protectable by trademark. To learn more about these types of intellectual property, refer to the Introduction to Intellectual Property micro-course.

In addition, many patent offices deem some specific inventions and discoveries patent ineligible. For instance, the U.S. Patent & Trademark Office (USPTO) will not grant patents to:

  • Inventions used specifically in the development of nuclear weapons;
  • Human organisms;
  • Mere ideas or suggestions (i.e., to be patentable, the patent application must include a full description of how an innovation would work); and
  • Laws of nature, physical phenomena, and abstract ideas.

Some of these exceptions have proven controversial among intellectual property experts. For instance, based on rulings in several Supreme Court cases since 2010, notably Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), software patents are now scrutinized to identify patent-ineligible abstract ideas and to assess whether the software includes an adequate number of other patent-eligible elements. This has led to hundreds of challenges to existing patents and court decisions that some experts have criticized as unpredictable.

Patent examiners also thoroughly review applications for additional qualities, including utility, novelty, and non-obviousness, explained in the Specific Criteria section below.

1.2 Patent Protection in Practice

A common misunderstanding about patents is that they provide patent owners the right to produce and market their inventions. There is, in fact, no legal requirement that a product be patented for it to be marketed. Many inventors and entrepreneurs do not or cannot protect their intellectual property for various reasons, including:

  • the cost of the patenting process,
  • a commitment to open source technology,
  • or failure to meet the patentability requirements explained in the Specific Criteria section below.

Patents are effectively an exchange between an individual or business and a patent-granting body.

  • The patent applicant provides full details of the invention to the patent-granting body, which will make these details public.
  • If the patent-granting body grants the patent for the invention, the patent owner gains a limited-time “exclusive right”--the legal ability to exclude others from producing and marketing inventions that infringe on their patent.

This exchange encourages innovation in both the short-term—by providing inventors and entrepreneurs of today with a period of time in which they can commercialize their inventions without fear of being copied—and the long-term—by providing inventors and entrepreneurs of tomorrow with detailed information they can use to improve upon past innovations. There are also limitations to the protection offered:

  • Patent protection is territory-specific. A patent granted by the USPTO is valid only in the United States, a patent granted by the European Patent Office (EPO) is valid only in participating member states, a patent granted by the Japanese Patent Office (JPO) is valid only in Japan, etc.
  • Once they have granted patent rights to an applicant, patent offices do not monitor the marketplace for infringement. Patent owners are responsible for identifying potential infringers and bringing suit in hopes that a judge will issue an injunction and award damages.
  • Patents are granted only for specific terms, the lengths of which are based on the type of patent granted. The next section discusses the types of patents granted by the USPTO.

1.3 Types of U.S. Patents


Utility Patents

The most commonly-granted patents in the U.S. are utility patents, which cover "new, useful, and nonobvious process[es], machine[s], article[s] of manufacture, or composition[s] of matter, or any new and useful improvement thereof."

In the U.S., utility patents protect inventions for a maximum of 20 years from filing date, pending maintenance fees due at 3.5, 7.5, and 11.5 years after the patent is granted.

In many countries, patent protection is available only for inventions that would fall under the category of utility patent in the U.S.--in these countries, a “utility patent” would simply be a “patent.” In the U.S., however, “utility” distinguishes these patents from plant patents and design patents.

Types of utility patents include:

Select an image to view it full screen or select the caption to read the patent.


Plant Patents

Plant patents protect asexually reproducing plants, excluding edible tubers and plants found in an uncultivated state. Some plants or aspects of plants not covered by plant patents are protectable by utility patents, and through the Plant Variety Protection Act (PVPA), which protects seeds and tubers.

Plant patents are unique to the U.S., with other countries offering intellectual property protection for plants through other legal means. Plant patents provide 20 years of protection from the filing date, with no maintenance fees required.

Types of patentable plants include:

Select an image to view it full screen or select the caption to read the patent.


Design Patents

Design patents protect ornamental designs. This includes non-functional elements of an invention for which the functional elements are protected by utility patents (e.g., an attractive outer casing for a new model of phone) or non-functional designs for which there is no related utility patent (e.g., a distinctive-looking pair of normally-functioning shoes).

Design patents function as an industrial design right in the U.S. In most countries, industrial design rights are not protected under patent law, but through other legal means. Effective May 13, 2015, U.S. design patents provide 15 years of protection from filing date, with no maintenance fees required (design patents granted prior to that date provide 14 years of protection from filing date).

Types of patentable designs include:
Select an image to view it full screen or select the caption to read the patent.

This micro-course focuses primarily on utility patents, but highlights important differences for plant patents and design patents where applicable.

1.4 Specific Criteria Required for Patenting an Invention

As mentioned above, patent examiners review patent applications to confirm that the inventions fit in the broad categories of processes, machines, manufactures, and articles of matter. They also check for three additional requirements specified in U.S. Code 35, which governs U.S. patent law:

  • usefulness (or “utility”),
  • novelty, and
  • non-obviousness.

Usefulness

Usefulness is often the easiest criterion for patent applicants to satisfy. Basically, for an invention to be patentable, it needs to work. Patent examiners do not assess patent applications for level of helpfulness; inventors have successfully patented inventions as seemingly non-useful as a finger-mounted flyswatter, a method and equipment for making a light-up snow person, and a “self-congratulatory” back-patting device.

Usefulness is a requirement in the U.S. for both utility and plant patents, but not for design patents, which are issued for ornamental, non-functional innovations only.

35 U.S.C. § 101 mentions usefulness as a general criterion for patent protection:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. [emphasis added]

Section 2107 of the Manual of Patent Examining Procedure (MPEP) elaborates on what ‘usefulness’ means, indicating that ‘useful’ inventions must possess:

  • Specific utility (e.g., a medical treatment must be specified as being for leukemia, not for “diseases”);
  • Substantial utility (i.e., the invention must work now and not pending additional research; and also cannot be strictly for “throw away” use, such as designing an elaborate invention to be used as a landfill); and
  • Credible utility (i.e., no time machines, perpetual motion machines, or other inventions that cannot be demonstrated to function).


Novelty

The “novelty” and "non-obviousness" requirements both, hinge on the existence of “prior art.”

“Prior art” is one of the most important concepts in patent law. It refers to all publicly available information that anticipates, in part or full, the invention. What is considered “prior art” varies slightly based on country or region; however, “prior art” generally includes:

  • Inventions disclosed in patents and patent applications internationally;
  • Inventions disclosed in other types of publications (scholarly journals, conference proceedings, trade journals, newspaper articles, etc.); and
  • Inventions currently for sale or in public use.

Patent examiners use all available prior art to determine an invention’s novelty. An invention’s novelty may manifest in its physical differences (such as the addition, modification, or subtraction of a component), new combinations of existing parts, or new use.

Most successful patent applicants search for and reference prior art in their applications so that they can adequately explain why their inventions are distinct from that prior art. During the examination process, patent examiners then search for additional prior art. They then determine whether the invention is distinct from all prior art discovered by both applicant and examiner.

Examiners evaluate not just on whether the prior art anticipates the invention in its entirety, but whether it anticipates any of the patent’s individual claims (the enumerated list in every patent that defines the scope of protection; claims are covered in Lesson 3).

35 U.S.C. § 102 lists the following reasons why an invention might not be patented on the grounds of novelty:

  • “the invention was known or used by others, in this country, or patented or described in a printed publication in this or a foreign country...”
  • “the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...”
  • The applicant applied for or was granted a patent for the invention in a foreign country more than 12 months prior to filing in the U.S.
  • The applicant “has abandoned the invention”
  • The applicant did not “invent the subject matter sought to be patented”


Non-obviousness

“Non-obviousness” is the most challenging requirement to meet for many patent applicants. In short, the patent office may deem the invention obvious if a person with “ordinary skill” in the subject/discipline/field would conclude that the invention:

  • combines prior art elements using known methods for predictable results;
  • substitutes a known element or technique for predictable results; and/or
  • is a minor variation on known work in one field used in a predictable way (in the same field or in another).

For instance, if you were trying to patent a small modification to a bicycle component, you might easily fulfill the novelty requirement by demonstrating that it is technically distinct from all similar components on the market, but unless you can credibly specify an unexpected difference this modification brings to a bike’s functionality, your patent application might be rejected for obviousness. Thus, successful patent applicants must demonstrate knowledge of prior art and also clearly explain an invention’s novelty and non-obviousness in relation to that prior art.

35 U.S.C. § 103 specifies the following as a reason why an invention might not be patented on the grounds of obviousness:

the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

The section also includes conditions and exceptions relating to the non-obviousness requirement for certain biotechnological processes and inventions created under joint research agreements.


Specification

Usefulness, novelty, and non-obviousness form the basis of evaluating the invention, itself for patentability; however, patent examiners review many other elements of the applications, including descriptive detail.

Examiners assess whether the applicant has adequately explained the invention with enough detail that someone in the same field or discipline as the inventor would be able to recreate and use it. This supports one half of the exchange at the heart of the patent process mentioned in 1.2 of Lesson 1: the exclusive right conferred to the patent holder comes at the cost of revealing how the invention works. This level of detail makes patent documentation not just useful for those performing prior art searches for patentability, but a powerful information resource for everything from product design to historical research on technology.

Inventions must be explained “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention” (35 U.S.C. § 112). This, along with the 35 U.S.C. § 113 requirement that drawings be provided as needed, support one half of the fundamental exchange at the heart of the patent process mentioned in 1.2 of this lesson.


1.5 Activity


Check Your Understanding

You have designed an innovative new tool for home gardening purposes. What would be the most likely means of protecting your intellectual property?


C) Utility patent

As this is a machine that offers new functionality, the most likely means of protection would be a utility patent. Despite the fact that we design new tools, design patents can be used to protect only non-functional, ornamental innovations. Plant patents can be used to protect asexually reproducing plants, but not the tools we use to garden or harvest those plants. Copyright is typically used to protect creative works, not functional items.