4 Getting a Patent (Patent Protection)

Patent prosecution is the interaction between a patent applicant (and their attorney, if applicable) and the patent office with regard to a patent application. In this process the parties interact to determine whether an application should become a patent. In the United States, the relevant patent office where prosecution occurs is the United States Patent and Trademark Office, which may also be referred to in prosecution documentation as “the USPTO,” “the Patent Office,” or simply “the Office.”

1. Patent Laws

The Constitution of the United States gives Congress the power to enact laws relating to patents in Article I, section 8, which reads, “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has, from time to time, enacted various laws relating to patents. The patent law specifies the subject matter for which a patent may be obtained, the conditions for patentability, and establishes the USPTO as the body responsible for administering the law relating to the granting of patents. Additionally, the patent law contains various other provisions relating to patents.

2. Functions of the United States Patent and Trademark Office^[1]

The USPTO is an agency of the U.S. Department of Commerce. The role of the USPTO is twofold: to grant patents for the protection of inventions and to register trademarks. It serves the interests of inventors and businesses with respect to their inventions and service identifications. It also advises and assists the President of the United States, the Secretary of Commerce, the bureaus and offices of the Department of Commerce, and other government agencies in matters involving all domestic and global aspects of intellectual property. Through the preservation, classification, and dissemination of patent information, the Office promotes the industrial and technological progress of the nation and strengthens the economy.

Congress established the USPTO to issue patents on behalf of the government. The Office as a distinct bureau dates from the year 1802 when a separate official in the Department of State, who became known as “Superintendent of Patents,” was placed in charge of patents. The revision of the patent laws enacted in 1836 reorganized the Patent Office and designated the official in charge as “Commissioner of Patents.” The Patent Office remained in the Department of State until 1849 when it was transferred to the Department of Interior. In 1925 it was transferred to the Department of Commerce, where it remains today. The name of the Patent Office was changed to the Patent and Trademark Office in 1975 and changed to the United States Patent and Trademark Office in 2000.

In discharging its patent-related duties, the USPTO examines applications and grants patents on inventions when applicants are entitled to them; it publishes and disseminates patent information, records assignments of patents, maintains search files of U.S. and foreign patents, and maintains a search room for public use in examining issued patents and records. The Office supplies copies of patents and official records to the public. It provides training to practitioners as to the requirements of the patent statutes and regulations, and it publishes the Manual of Patent Examining Procedure (MPEP) to elucidate these. By protecting intellectual endeavors and encouraging technological progress, the USPTO seeks to preserve the United States’ technological edge. The USPTO also disseminates patent and trademark information that promotes an understanding of intellectual property protection and facilitates the development and sharing of new technologies worldwide.

The work of examining applications for patents is divided among a number of examining technology centers (TCs), each TC having jurisdiction over certain assigned fields of technology. Every TC is headed by a group directors and staffed by examiners and support staff. The examiners review applications for patents and determine whether patents should be granted. If the examiners refuse to grant a patent, an appeal can be made to the Patent Trial and Appeal Board and a review by the Director of the USPTO may be requested on other matters by petition. In addition to the examining TCs, other offices perform various services, such as receiving and distributing mail, receiving new applications, handling sales of printed copies of patents, making copies of records, inspecting drawings, and recording assignments.

At present, the USPTO has over 12,000 employees, of whom about three quarters are examiners and others with technical and legal training. Patent applications are received at a rate of over 500,000 per year.

3. What May Be Patented^[2]

The patent law says that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patented.

A “process” is a “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” For example, a process for making rolled steel qualifies as a patentable process under the statute.

A “machine” is a particular apparatus for achieving a certain result or carrying out a distinct process—lathes, printing presses, motors, and the cotton gin are all examples of the hundreds of thousands of machines that have received US patents since the first Patent Act in 1790.

A “manufacture” is an article or a product, such as a television, an automobile, a telephone, or a lightbulb.

A “composition of matter” is a new arrangement of elements so that the resulting compound, such as a metal alloy, is not found in nature.

In 1980, the Supreme Court said that even living organisms—in particular, a new “genetically engineered” bacterium that could “eat” oil spills—could be patented. This decision has spawned innovation: a variety of small biotechnology firms have attracted venture capitalists and other investors.

There are still other categories of patentable subjects. An “improvement” is an alteration of a process, machine, manufacture, or composition of matter that satisfies the tests for patentability. New varieties of cultivated or hybridized plants are also patentable, as are genetically modified strains of soybean, corn, or other crops.

4. What May Not Be Patented^[3]

Many things can be patented, but not 1) the laws of nature, 2) natural phenomena, and 3) abstract ideas.

One frequently asked question is whether patents can be issued for computer software. The USPTO was reluctant to do so at first, based on the notion that computer programs were not “novel”—the software program either incorporated automation of manual processes or used mathematical equations (which were not patentable). But, in 1998, the Supreme Court held that patents could be obtained for a process that incorporated a computer program if the process itself was patentable.

A business process can also be patentable, as the US Court of Appeals for the Federal Circuit ruled in 1998 in State Street Bank and Trust v. Signature Financial Group. In that case, Signature Financial had a patent for a computerized accounting system that determined share prices through a series of mathematical calculations that would help manage mutual funds. State Street sued to challenge that patent. Signature argued that its model and process was protected, and the court of appeals upheld it as a “practical application of a mathematical, algorithm, formula, or calculation” because it produces a “useful, concrete and tangible result.” Since State Street, many other firms have applied for business process patents.

It is notable that, while software and business method patents are viable, many critics argue that the USPTO should not issue these patents. Additionally, courts have recently interpreted relevant precedent to narrow the range of software and business methods that are patentable.

5. Tests for Patentability^[4]

Just because an invention falls within one of the categories of patentable subjects mentioned above, it is not necessarily patentable. The Patent Act and judicial precedent have established certain tests that must be met before a patent is granted. To approve a patent application, the USPTO will require that the invention, discovery, or process be novel, useful, and nonobvious in light of current technology.

Novelty is a patentability requirement. An invention is not new and therefore not patentable if it was known to the public before the date of filing of the patent application, or before its date of priority if the priority of an earlier patent application is claimed. The purpose of the novelty requirement is to prevent previously known “inventions” from being patented again. All previously known inventions are described in the “prior art,” which constitutes all information that might be relevant to a patent’s claims of originality as made available to the public in any form before a given date. If an invention has been described in the prior art, a patent on that invention is not valid and should not be granted. Prior art is further discussed in the following subsection.

A patent grants an inventor a legally enforceable monopoly over their invention. This means that others can be legally restrained from exploiting the invention. It is not the intention of the patent system to deny anyone what they have been free to do before someone claims an invention. For example, one cannot patent the wheel, as that would exclude others from manufacturing wheels despite having previously been free to do so. Because the legal test for patentability is that the invention must be something new (i.e. it must possess “novelty”) and the invention of the wheel is not new, the wheel is considered part of the prior art.

Another significant test of patentability is that of obviousness. The law says that no invention may be patented “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” This provision of the law has produced innumerable court cases, especially over improvement patents, when those who wish to use an invention on which a patent has been issued have refused to pay royalties on the grounds that the invention was obvious to anyone who looked.

6. Prior Art^[5]

“Prior art” is the information that is publicly available as of a given date. Prior art available before a specific date (such as the filing date of a patent) may affect whether a patent will be granted.

35 U.S.C. 102(a) defines the prior art that will preclude the grant of a patent on a claimed invention unless an exception in 35 U.S.C. 102(b) is applicable. Specifically, 35 U.S.C. 102(a) provides (in paraphrase) that:

[a] person can get a patent unless—

(1) the invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the patent application; or

(2) the claimed invention was described in a patent or in a published patent application filed by another inventor before the effective filing date of the patent application.

The categories of prior art are set forth in 102(a). These documents and activities are used to determine whether a claimed invention is novel or nonobvious. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(1) may be based are an issued patent, a published patent application, and a non-patent publication. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only. Evidence that the claimed invention was in public use, on sale, or otherwise available to the public may also form the basis for a prior art rejection under 35 U.S.C. 102(a)(1).

35 U.S.C. 102(b) sets out exceptions to 35 U.S.C. 102(a), in that prior art that otherwise would be included in 35 U.S.C. 102(a) shall not be prior art if it falls within an exception under 35 U.S.C. 102(b). Exceptions to the categories of prior art defined in 35 U.S.C. 102(a)(1) are provided in 35 U.S.C. 102(b)(1). Specifically, 35 U.S.C. 102(b)(1) states (with some edits) that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

7. Procedures for Obtaining a Patent^[6]

An inventor does not obtain a patent automatically; obtaining a patent is an expensive and time-consuming process, and the inventor will need the services of a patent attorney. The attorney will help develop the required specification, a description of the invention that gives enough detail so that one skilled in the art will be able to make and use the invention. After receiving an application, a USPTO examiner will search the records and accept or reject the claim. Usually, the attorney will negotiate with the examiner and will rewrite and refine the application until it is accepted. A rejection may be appealed, first to the USPTO’s Patent Trial and Appeal Board and then, if that fails, to the federal district court in the District of Columbia or to the US Court of Appeals for the Federal Circuit.

Once a patent application has been filed, the inventor (or a company to which the inventor has assigned the invention) may put the words “patent pending” on the invention. These words have no legal effect. Anyone is free to make the invention as long as the patent has not yet been issued. But the words “patent pending” do put others on notice that a patent has been applied for. Once the patent has been granted, infringers may be sued even if the infringed has made the product and offered it for sale before the patent was granted.

8. Foreign Filing^[7]

In today’s global market, obtaining a US patent is important but is not usually sufficient protection. The inventor may need to secure patent protection in other countries as well. Under the Paris Convention for the Protection of Industrial Property (1883), parties in one country can file for patent or trademark protection in any of the other member countries. As of 2011, 172 countries had adopted this agreement.

The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) established standards for protecting intellectual property rights (patents, trademarks, and copyrights) and provides that each member nation must have laws that protect intellectual property rights with effective access to judicial systems for pursuing civil and criminal penalties for violations of such rights.

9. Application for Patent^[8]

a. Non-Provisional Application for a Patent

A non-provisional application for a patent is made to the Director of the United States Patent and Trademark Office and includes:

(1) A written document which comprises a specification (description and claims);

(2) Drawings (when necessary);

(3) An oath or declaration asserting that, to the best of their knowledge, the listed inventors are correct and promising to disclose any information relevant to the patent application; and

(4) Filing, search, and examination fees.

The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent.

More than one claim may be presented provided they differ from each other. Claims may be presented in independent form (i.e., the claim stands by itself) or in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim that refers back to more than one other claim is considered a “multiple dependent claim.”

The patent application is not forwarded for examination until all required parts— complying with the rules related thereto—are received. If any application is filed without all the required parts for obtaining a filing date (resulting in an incomplete or defective application), the applicant will be notified of the deficiencies and given a time period to complete the application filing. Additionally, a surcharge may be required. If the omission is not corrected within the specified time period, the application will be returned or otherwise disposed of; the filing fee—if submitted—will be refunded less a handling fee as set forth in the fee schedule.

The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received by the USPTO, or the date on which the last part completing the application is received in the case of a previously incomplete or defective application.

Fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents are reduced by 50 percent for any small entity that qualifies for reduced fees, and are reduced by 75% for any micro entity that files a certification evidencing the legal requirements to claim micro entity status. Generally, small entities are individual inventors, companies with less than 500 employees, or non-profits. A micro entity is a party that meets the requirements for a small entity, has not been named as an inventor on more than four patent applications, and does not have a gross income more than three times the median household income of the previous year. A list of fees and charges associated with getting a patent can be found at: http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule .

b. Provisional Application for a Patent

Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent, which was designed to provide a lower-cost first patent filing in the United States. Claims and oath or declaration are not required for a provisional application. A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention.

The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received by the USPTO, after which time the applicant has up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional applications are not examined on their merits. A provisional application will become abandoned 12 months from its filing date.

c. Publication of Patent Applications

Publication of patent applications is required by the American Inventors Protection Act of 1999 for most patent applications. Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication, the application for patent is no longer held in confidence by the Office, and any member of the public may request access to the entire file history of the application.

As a result of publication, an applicant may assert provisional rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes on a published application claim provided actual notice is given to the third party by the applicant, and the dispute issues from an application with a substantially identical claim. Thus, damages for pre-patent grant infringement by another are available.

10. The Duty of Candor

The duty of candor and good faith in dealing with the USPTO is an obligation for each individual associated with the filing and prosecution of a patent application. Parties associated with a patent application include the inventor(s), attorney or agents responsible for the prosecution, and any other party who is “substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.” This obligation instills a duty to disclose to the patent examiner all information the applicant knows to be material to patentability. An applicant is under no affirmative obligation to conduct a prior art search in order to seek out any potential material information, but the applicant may not keep themselves in a state of cultivated ignorance in order to avoid knowing that material information exists and has not been submitted to the examiner. Information is considered material to patentability if it establishes, by itself or in combination with other information, a case of unpatentability of any claim, or is inconsistent with any position asserted by the applicant in arguing against a claim of unpatentability or arguing for a claim of patentability. Information that would determine a claim unpatentable by a preponderance of the evidence establishes a case of unpatentability. The duty of candor extends throughout the lifetime of the patent application.

The duty of candor serves the public interest by ensuring the most effective patent examination occurs at the time an application is being examined, and by making sure that the patent examiner is aware of all information material to the patentability of the present application. The requirement of disclosure of material information by the applicant is necessitated by the fact that the USPTO lacks proper means for fully investigating patent claims.

The duty of candor furthers the issuance of patents that are new and useful, as most patent applicants will presumptively choose to submit material information in order to strengthen their patent and avoid the risks of a potentially disastrous incorrect judgment regarding the materiality of particular information. Further, applicants regularly choose to submit information of questionable materiality in order to ensure that they avoid suspicion of attempting to deceive the USPTO.