Patent Law

Patentable subject matter can include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, . . ." that is novel, non obvious, and useful.  See 35 U.S.C. § 101.  These terms do not always mean what they seem to imply in the patent context.  Accordingly, an invention must meet this three part test as interpreted by the U.S. Patent and Trademark Office and the Federal Courts.

A. Novelty and the Patent Search

To qualify as a novel or new invention, the subject matter cannot be described in prior patents, publications or articles, or in public use or on sale in this country for more than one year prior to filing the patent application. See 35 U.S.C. § 102.  Although a basic concept, the requirement that the invention be "new" is often the most difficult constraint on receiving a patent.  Accordingly, great care should be taken when analyzing an invention in view of the legal requirement for novelty.

Individuals that believe they have a patentable invention should have a patentability search performed to determine if any prior patents (referred to as "prior art") have issued which may prevent the issuance of a patent for their invention or limit its scope.  Generally, the cost of a patent search is quite small when compared to that of the legal and filing fees associated with the preparation and filing of a patent application. Accordingly, it is considered wise to incur the patent search costs prior to investing larger sums in engaging in the patent application process.  Also, patent search results generally help the drafter of any subsequent patent application focus their efforts on what appears to be patentable subject matter and aids in developing a reasonable strategy for achieving the goals of the inventor or owner of the patent rights.

Additionally, many inventors dash any opportunity they may have at receiving a patent or benefitting from their invention merely by discussing the details of their invention with other individuals who then discuss the invention with others or utilize the information for their own benefit.  Publicizing the invention dramatically increases the likelihood that the invention will become public knowledge which may prevent the issuance of a patent.  Therefore, it is always wise to first discuss any invention that you may have with a trained professional such as a patent agent or patent attorney who can perform a pre- examination search and advise you on how best to protect your invention.  This initial step (often at little or no cost to the inventor) may insure that the inventor's rights to the invention are not inadvertently jeopardized and that the inventor will achieve the greatest level of protection suitable to his or her situation.

As a practical matter, people should be aware that many of the organizations that advertise for inventors to contact them and promise the potential for financial reward often intend to take advantage of the inventors new invention prior to the inventor securing any patent rights in that invention.  Unlike licensed professionals such as patent attorneys and agents, the organizations offering such assistance are not under any professional obligation of confidentiality or conflict of interest restrictions.  Additionally, it is often the case that patent attorneys provide free initial consultation for inventors who seek basic information and merely wish to speak briefly with an attorney before deciding to proceed with the patent process.  As is our firm's general practice, all initial consultations are free of charge with the understanding that any consultation will be for a reasonable amount of time (usually a half hour).  Accordingly, if you wish to speak with a member of our firm or have a question regarding patenting of an invention, please feel free to contact us by e-mail, or contact us by telephone, fax or snail mail.

B. Requirement of Non Obvious

In addition to novelty, the invention must be non obvious.  The test used by the U.S. Patent and Trademark Office for obviousness is that of a person having ordinary skill in the art to which the subject matter pertains. See 35 U.S.C. § 103.  This can often be satisfied by the fact that the invention is new.  If the invention was obvious, why hasn't it been patented or used in the past?  This question will often suffice as a means of confronting the non- obviousness requirement.  Accordingly, research of relevant patent cases pertaining to obviousness is generally required in order to present a proper response to a Patent Examiner's rejection of a patent application based upon these grounds.

C. Functionality

Finally, there is no requirement that an invention be better than the prior art, however there is a requirement that the patentable subject matter perform its claimed function (i.e., be operable).  The requirement that an invention be operable is less restrictive than the requirement that an invention be new and non obvious.  Often a showing that an invention perform its described function will be sufficient.  There is no requirement that the invention behave better than other prior art only that it operate according to its specifications.  However, a patent application should attempt to take into consideration all potential uses for the patentable subject matter, thereby enhancing the quality of any patent issued based upon the application.  Accordingly, the drafter of the patent application should closely examine the potential uses and possible alternative configurations of an invention to fully provide for such uses and configurations in the patent application and thereby attempt to expand the scope of the protection provided by any resulting patent grant.

D. Patent Rights

Once a patent is issued by the U.S. Patent and Trademark Office, it has a presumption of validity.  The burden of proof for any alleged infringement (i.e. trespassing on the inventor's rights) is on the infringer.  Therefore, as an initial matter, a patent owner going to court to stop someone from using the patented subject matter without his or her authorization does not have to prove that they have the rights to the invention beyond demonstrating ownership of the patent grant.  Accordingly, an inventor and/or patent owner would merely have to demonstrate the other party's unauthorized use of the patent to prevail in court by demonstrating that the opposing party is utilizing the subject matter contained in the claims presented in the patent grant.

Potential patent owners and litigants should be aware that even if you demonstrate that an infringing party is utilizing the subject matter contained in the claims presented in a patent grant, the opposing party may attack the validity of the patent grant itself without attacking your ownership of the particular patent.  One method that an opposing party may use is to demonstrate that the patent at issue is in some way defective or improperly issued.  Accordingly, patent infringement litigation is generally costly as the time and expenses associated with proving the technical aspects of a patent's validity can be quite high.

Following the granting of a patent, the information disclosed in the patent is no longer the exclusive property of the inventor, and becomes available to the public through the disclosure in the patent.  This limitation required by law is based upon the public policy of the United States and most nations of the world to encourage and promote the development of science and industry by granting a monopoly to an inventor for a limited period of time as a reward for his or her work.  In exchange for the limited monopoly, the patent is given a limited lifetime and the information disclosed therein becomes available to the public upon issuance of the patent grant as a means of encouraging further technological advancement by others.  The inventor's rights remain protected, but others are given the opportunity to build on the invention and create other patentable subject matter.  After the expiration of the patent, the public is permitted to use the patented subject matter free of charge without the need for authorization from the patent holder.

E. Utility and Design Patents:  What is the Difference?

In the United States, an inventor can apply for two general types of patents.  As the terms indicate, a utility patent may be available for inventions having a function and a design patent may be available for inventions that contain an ornamental feature that is patentable.  A third category of patent is available for plants and are accordingly labeled "plant patents".  However, plant patent are not as common as utility or design patents.

The utility patent may be for either the apparatus or the method of making the invention.  Prior to June 8, 1995, the life span of a utility patent was 17 years from the date of issuance of the patent.  However, U.S. patent laws changed on June 8, 1995 to comply with the requirements of the General Agreement on Tariffs and Trade (commonly referred to as "GATT"), and as a result a utility patent now expires 20 years from the filing date of the patent application.  However, the term of a design patent remains 14 years from the date of issue.  This change, as well as other more intricate changes to the patent laws, may have a profound impact upon a patentable invention.  Accordingly, care should be taken when determining how to go about protecting one's rights to an invention to ensure maximum benefit from any utility patent.

Unlike a utility patent, a design patent exclusively protects the ornamental aspects of a functional object, but not the utility of the object.  Therefore, the requirements of a design patent are slightly different than a utility patent.  A design patent requires novelty, originality, non obviousness for other than functional or utilitarian purpose.  It is possible to receive both a design patent and a utility patent for the same object, however both patents would protect different aspects of the invention.

Foreign and international patent matters are managed either through the Patent Cooperation Treaty International Authorities (for international patent matters under the PCT) or by the respective patent offices established by each country.  For further information on patent protection in foreign countries, please contact us by e-mail, or contact us by snail mail, telephone or fax and we will advise you on further specifics or provide contact information for our foreign associates who specialize in patent law for a given country.


For questions or further information regarding the patentability of a specific invention or potential infringement of yours or another's patent, please contact us by e-mail, or contact us by snail mail, telephone, or fax.