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You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
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Robert M. Hunter, Ph.D.
Registered Patent Agent
WebPatent.com
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PATENTS 101
by Robert M. Hunter, Registered Patent Agent
Table of Contents
Everyone appreciates having their ideas put into practice. This desire is especially true of inventors - those people who are motivated to affect change in one or more technological fields. This document describes how inventors and the organizations that support their creative activities can obtain and use patents. The information is presented in a question and answer format that generally follows the flow of the "idea to IP" process.
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What is a patent?
The word "patent" means many things. A patent is a document that describes "how to make" and "how to use" an invention and contains claims that an invention is the personal property of the owner of the patent. Thus, a patent is a vessel for a form of intellectual property. A patent is also a right granted by a patent office that confers on the patentee the right to prevent others from making, using or selling the invention in the jurisdiction (i.e., country or region) served by the patent office. In a sense, a patent is also a contract between the patentee and the government. In exchange for granting a monopoly for a limited term to the patentee, the government obtains and places in the public domain information on how to practice the invention, thus promoting the progress of science and useful arts.
It is also important to understand what a patent is not. A patent confers a negative right, not a positive one. A patent does not give its owner the right to make, use or sell a claimed invention because practicing one's own invention may infringe the claims of a prior-issued patent that has not expired.
In the U.S., inventors can obtain three different kinds of patents. A utility patent can be used to protect how a new technology is used and works. A plant patent can be used to protect a plant that its inventor has reproduced asexually (i.e, by means other than from seeds). A design patent is used to protect the visual characteristics or aspects displayed on an object. A variety of other techniques are available to protect other types of intellectual property.
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What is patentable?
An invention is a solution to a technical problem. Some inventions are patentable and some are not. In the U.S., a patentable invention must be claimed as either a machine (a device or apparatus), a manufacture (a manufactured article), a composition of matter (a combination of ingredients), or a process (of operating something, of making something or using something).
A claimed invention is patentable if it meets the criteria for patentability set out by the patent office from which a patent is being sought. While patentability rules vary among patent offices, in order to be patentable, an invention must be a useful solution to a technical problem that was new and not obvious (to a person skilled in the field to which it pertains) on a critical date, usually the day that the application for patent was filed in that patent office.
In the U.S. (and in the Philippines) another critical date is important in assessing patentability, the date of invention. That is the case because, in these jurisdictions, inventions are patentable by the "first to invent" an invention rather than the "first to file" a patent application on an otherwise patentable invention, as is the case in all other patent office jurisdictions.
Whether an invention is patentable may also depend on how the invention is claimed in the patent application. For example, under U.S. law, a naturally-occurring bacterium is not patentable, but a pure culture or a new use of the same bacterium might be patentable. Similarly, while gravity is not patentable, a novel machine or process that relies on gravity might be patentable.
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What are the criteria for obtaining a patent?
All patent offices require that an invention be "useful," "novel" (or new) and "non-obvious." It must also have been adequately described in a patent application. In order to be useful (to have utility), an invention must actually solve a technical problem. The invention cannot be inoperable (e.g., a perpetual motion machine), frivolous or illegal (e.g., a pipe bomb).
The new and non-obvious criteria mean new and non-obvious in a certain area and as of a certain date, which area and date vary among patent offices. In order to be new, the very same invention must not have been in the public domain before the critical date. In order to be non-obvious, the invention must not have been so close to something that is old that the invention would have been obvious to a person skilled in the art to which it pertains (and who knows about all that is old) on the critical date. Because patentability rules can be quite complex, the Inventor's Guide document web explains these rules and illustrates their application under U.S. and international (Patent Cooperation Treaty or PCT) rules.
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How can one determine that an invention is new?
In fact, one cannot prove that an invention is new. That would require proof that the invention is not in the available prior art, i.e., proof that the hypothetical person having ordinary skill in the art but possessing knowledge of all of the prior art would have had no knowledge of the invention or subject mater that would have rendered the invention obvious on the critical date (i.e., on the date of invention or the filing date). Any logician will attest that proving a negative is not possible.
Fortunately, patent offices and the court recognize that this "Catch 22" exists and require only that the available information compels conclusion of novelty under the "preponderance of evidence, burden-of-proof" standard. However, because the validity of an issued patent can be defeated in a trial (adjudicating patent infringement, for example) by finding evidence that was not considered during examination of the patent application, it behooves an applicant for a patent to be duly diligent in searching for and bringing to the attention of the Examiner all of the prior art. To do less is to build your hopes (and to place a large investment in time and money) on shifting sand. Moreover, because a patent conveys only a right to prevent others from practicing a claimed invention, one may not even have the right to practice one's own invention if it is dominated by a prior-issued and unexpired patent to another. For these reasons, the Patent Search document web shows you how to conduct a search of the patent and non-patent literature.
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What is required in a patent application?
The content and format of a patent application must comply with the rules of the patent office in which it is being filed. Typically, a patent application must clearly communicate to a person skilled in the art what the invention is and how to make and use the invention. In the U.S., the patent application must also describe the best way for carrying out the invention known to the inventor on the day the application is filed, an aspect of the invention called the "best mode." The Inventor's Guide document web explains disclosure rules for U.S. and international (PCT) patent applications and for other types of disclosures.
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What are the parts of a patent application?
A patent application consists of a formal legal request that a patent be issued to the applicant (called a declaration or oath in the U.S. and a request in the PCT), a specification, and one or more drawings (if necessary to understand the invention) and a payment (called a fee). If the application is not a provisional application, it must contain an abstract and at least one claim.
The specification portion of a patent application contains a written description of the invention. For perverse reasons that are lost in the mist of time, different patent offices divide the specification into parts having different names, and with parts after the title having different recommended headings. In the U.S., the preferred headings of a regular patent application are Cross-References to Related Applications (if any), Statement as to Rights to Inventions Made Under Federally Sponsored Research and Development, Background of the Invention, Summary of the Invention, Brief Description of the Drawings, Claims and Abstract of the Disclosure. The preferred headings of the description portion of an international (PCT) patent application, on the other hand, are Technical Field, Background Art, Brief Description of the Drawings, Best Mode for Carrying Out the Invention or Mode(s) for Carrying Out the Invention and Industrial Applicability. A PCT application must also include at least one claim, drawings (if necessary) and an abstract.
Guidance on how to prepare each of the parts of the specification as well as the drawings, abstract and claims is described in the Inventor's Guide document web. That document web leads the inventor through the process of preparing these parts of a provisional (U.S.) patent application, a regular (U.S.) patent application and an international (PCT) patent application. It also provides copies of the forms used in filing the application.
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What is a claim?
A patent application that can issue as a patent must contain at least one claim. The claims are the heart of a patent application because they define the legal "metes and bounds" of the intellectual property for which protection is sought. The words of a claim can be thought of as being analogous to the property lines that define the boundaries of a parcel of real estate or the corners of a mining claim. In order to maximize the value of an patent, claims must be drawn in such a way as to encompass as much "property" within their scope as is legally possible. Ideally, at least one broad claim should encompass every improvement to an invention that could come in the future and nothing (in the prior art) that has come before. Drafting such a broad claim is difficult indeed! If this is not accomplished, however, others will be able to make, use and sell products and/or processes that contain what would otherwise have been the intellectual property of the patentee.
Grammatically, a claim is the object of a sentence that begins with the phrase, "I claim," We claim," or "What is claimed is." In the instance of a claimed product (a machine, a manufacture or a composition), a claim distinctly describes and interrelates the elements of the product. In the instance of a claimed process, a claim distinctly describes and interrelates the steps of the process. Guidance on claim drafting is given in the Inventor's Guide document web. It leads the inventor(s) through the process of drafting a single broad claim of his/her/their invention.
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Who is an inventor?
An inventor must be a thinker, a doer and a teacher. Obsession and persistence to the point of stubbornness also help. An inventor is someone who thinks of an invention, ensures that it is diligently developed and ensures that the public is informed about it. As a practical matter, inventors excel at noticing problems with technology and understanding why those problems persist. But inventors do more than recognize technical problems - they solve them. For this reason, under U.S. law, the first qualification for being named an inventor is to have contributed to the conception of an invention. Conception is the mental part of the inventive act. It occurs at the moment when "a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice" forms in the mind(s) of the inventor(s). Legally, a person who has not thought of a claimed invention cannot be named an inventor in a U.S. patent application. Doing so can threaten the validity of any patent that is granted on the application.
Mere conception is not enough, however. Thinking of an invention is a necessary but insufficient part of an inventor's responsibilities. The second part of the inventive act is diligence in reducing the invention to practice. Reduction to practice can be accomplished either by building and testing the invention or by filing a patent application that discloses "how to make" and "how to use" the invention. After an invention has been reduced to practice, it is considered made or completed. Reducing an invention to practice is, therefore, the second responsibility of an inventor. It can be accomplished by the inventor or on behalf of the inventor by others. Thus, an inventor does not have to personally build and test the invention or file the patent application - others can give him/her/them a "pair of hands" in this endeavor. As was noted above, the activities that result in reduction to practice must be diligently carried out. If priority of inventorship is to be safeguarded, diligence must begin just before another conceiver (alleged inventor) enters the field and must continue until the invention is completed.
If the inventor has reduced the invention to practice by filing a patent application that eventually issues as a patent, the third responsibility of an inventor has been met. If the inventor has chosen to build and test the invention in secret, however, the final act of invention has yet to be carried out. U.S. courts have consistently held that an invention, though completed, is deemed abandoned by its inventor, if within a reasonable time after completion, no steps are taken to make the invention publicly known. Thus, inventorship can be lost by failing to file a patent application, to describe the completed invention in a publicly disseminated document or to use the completed invention publicly. The contract between the inventor and society is not fulfilled until public disclosure has occurred.
Given the above description of all that is required to be named an inventor, it is understandable why persistence is a critical personality trait of successful inventors. It is also easy to see why Thomas Edison concluded, "Invention is one percent inspiration and 99 percent perspiration." The Inventor's Guide document web explains U.S. inventorship rules and how to evaluate inventorship under those rules.
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Should an invention be kept a secret?
In general, it is prudent to keep "how to make" and "how to use" an invention a secret, at least until a patent application is filed, and sometimes until after a patent issues. This is the case because, in a global economy it is often necessary to obtain patent protection in multiple countries in order to maximize the value of the invention. Many countries other than the U.S. require absolute novelty as a condition of patentability - that is, an enabling description of the invention cannot have entered the public domain prior to the filing of the first patent application on the invention. The applicant is then given a period (one year in the absence of a PCT filing) within which to file in other countries.
Some countries (the U.S. is one), provide a grace period (one year in the U.S.) during which an invention can be publicly disclosed, publicly used, offered for sale (even secretly) or sold before a patent application must be filed in the country with the grace period. Care must be taken, however, to file a complete and enabling patent application in the countries in which patent protection is sought before the end of the grace period(s).
There are other reasons to keep an invention secret. Almost all employment agreements and Government contract and grant awards require that inventions be reported to the employer to allow patent applications to be filed, if appropriate. Many employment agreements go further in that they require that information about the invention be maintained in secrecy. Keeping an invention a trade secret until a patent issues can also give the invention's owner a time advantage over competitors, especially in cases when the invention is a pioneering one that opens up new avenues for innovation or when extensive development is required before commercialization can occur.
The Inventor's Guide document web describes how conception and reduction to practice of an invention can be documented. It leads the inventor through the process of preparing the invention disclosures required for invention reporting. It also provides examples of confidentiality agreements under which inventions can be disclosed while maintaining their trade secret nature.
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How are patents obtained?
Patents are obtained by conducting a negotiation with the patent office in which the patent application was filed. The process is called "prosecution" of the patent and can extend over an 18-month to two-year period, or longer. The first step in the process is the filing of a complete patent application in the patent office. Normally, the date upon which the patent office receives the patent application and gives it an application number is the filing date of the application. Upon receipt, a regular application is checked for completeness and assigned to group for searching and/or examination of the application. A provisional application is a special case in that it is not searched or examined, but its filing must be followed within a year by the filing of a regular application.
The negotiation process proceeds by means of the exchange of correspondence between an employee of the patent office, called an Examiner, and the applicant, who is typically represented by a registered patent agent or patent attorney. (By convention, the first letter of the word "Examiner" is capitalized as an indication of respect for the position. Such a reminder is helpful to all parties in situations in which the negotiations become intense, as can occur.) The process is typically driven by communications from the patent office. In the prosecution of a U.S. patent application, the written communications from the patent office to the applicant are called Office actions or actions. Similarly, written communications from the applicant to the patent office are called amendments or responses, respectively, depending on whether the communications propose to change the application. The prosecution of international patent applications is more "forms based" with each type of patent office communication having a different name, e.g., notification, invitation, written opinion, etc.
In the prosecution of a U.S. patent application, the first Office action often contains an assertion that the applicant has claimed inventions that are sufficiently different from one another that they cannot be prosecuted in the same application. Such action will contain a "restriction" requirement that the applicant elect which group of inventions claimed in the application that he/she/they wish to prosecute. If the Examiner prevails, the other inventions must be prosecuted in one or more related applications that enjoy the same filing date as the original application, and a presumption that they are, indeed, different and separately-patentable over the inventions in the original application. If the applicant disagrees with the restriction requirement or any other decision of the Examiner that does not involve the patentability of a claim, he/she/they can ask the Examiner to reconsider the decision and, if the Examiner does not change his position, the applicant can petition the Commissioner of Patents and Trademarks to review the decision.
If the application is not deemed to claim multiple inventions, the first Office action addresses formal requirements and the patentability of each of the claims. An applicant can expect that, in the first Office action "on the merits of the application," the Examiner will reject all of the claims and provide grounds for each rejection and reasons why each and every claim appears to be unpatentable. The applicant responds to the rejections by arguing why they are incorrect and/or by amending the application (most likely the claims) to avoid the rejections. Sometimes a telephone interview is used to facilitate clarification of the issues remaining between the Examiner and the applicant, prior to preparation of an amendment. At this point, it is important to add or amend any claims that the applicant desires to change because adding or amending claims is typically not allowed later in the prosecution, unless the changes are made in response to suggestions by the Examiner.
The Examiner considers the response/amendment submitted by the applicant and then issues a second Office action. In the second Office action, it is not unusual for the Examiner to make a "final rejection" of some or all of the claims. Upon receipt of a final rejection, the only options available to the applicant are to adopt changes in the rejected claims suggested by the Examiner (if any are suggested), to appeal the Examiner's decision to the Board of Patent Appeals and Interferences or to abandon the application, if no claims have been allowed by the Examiner. If at least one claim has been allowed, the applicant can also cancel the rejected claims and, in such a case, the Examiner will allow the application to issue. A continuing or continuation-in-part patent application can then be filed (during the pendency of the original application) in an attempt to obtain allowance of other claims.
An appeal of any or all rejected claims can be taken to the Board of Patent Appeals and Interferences ("Board") at any point in the process after the claim(s) has/have been rejected twice by the Examiner. The Board is a three-member panel of experienced examiners who are knowledgeable in the technical field of the invention and in patent law. The first step in the appeal process is for the applicant to file a notice of appeal. Shortly thereafter, the applicant files an appeal brief containing arguments and legal precedents in support of the applicant's case. It is generally prudent to include a statement that the claims do not stand or fall together and argue why each and every claim under appeal is separately patentable. If, after review of the appeal brief, the Examiner does not change his/her position, he/she files a response to the appeals brief called an examiner's answer. If the examiner's answer contains new arguments or new grounds of rejection, the applicant may respond to them in a reply brief to be filed within two months of the examiner's action. The applicant may also, during that time, request that an oral hearing be scheduled to allow him/her/them to present their arguments orally before the Board. After consideration of the information before it, the Board renders a written opinion which may determine the patentability of any of the claims in the application. The Board may affirm the Examiner, in whole or in part, reverse the Examiner and/or recommend a new ground of rejection of any claim. In the later case, the applicant is given an opportunity to respond to the new grounds of rejection.
If the applicant is unsatisfied with the decision of the Board, he/she/they may appeal the decision either to the Court of Appeal for the Federal Circuit (CAFC) or to the U.S. District Court for the District of Columbia. The losing party (either the applicant or the Office) from the U.S. Court for the District of Columbia may appeal the decision to the CAFC. The losing party from the CAFC may appeal the decision to the U.S. Supreme Court by filing a petition for writ of certiorari.
If one or more claims are found patentable in an application and the application is placed in a condition for allowance with regard to other than certain formal matters, the Examiner will issue a notice of allowance. The applicant must then pay an issue fee within three months of the mailing date of the notice of allowance and correct any formalities identified in the application by the Examiner. Sometime (usually months) after the issue fee is paid and informalities are corrected, the patent will issue. Errors in an issued patent do occur. In the U.S., they can be corrected by reissue, by the issuance of a certificate of correction, by disclaimer and by reexamination.
Successful prosecution of a patent involves both initiating actions and responding to the actions of the patent office in a competent and timely manner. Even when an inventor is being represented by a patent agent or patent attorney, his/her active participation in the process is required. Because many of the activities of the patent prosecution process must occur before or on a deadline, technology managers must track milestones that occur during the prosecution of a U.S. patent application and an international (PCT) application. The Inventor's Guide document web explains and illustrates common invention reporting and patent prosecution milestones. The Patent Rules document web contains hypertext versions of two documents, the USPTO Manual of Patent Examining Procedure and the PCT Applicant's Guide, that present patent office interpretations of the rules and procedures to be followed in filing and prosecution of patent applications. The interpretation of patent office rules by your patent agent or patent attorney may differ from the the official interpretation of the same rules by a patent office. Such "official" interpretations are regularly overturned by court decisions.
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What is a patent examiner?
All patent offices have employees who conduct patent searches and examine patents for compliance with formal and patentability rules. It is these employees who represent the patent office (and the "People" of the country) in the negotiation of the scope of patent claims. In the U.S., those employees are called Examiners. Patent Examiners have a degree in a science or engineering and a few have a law degree. It is the job of an Examiner to ensure that the "People" gain adequate disclosure of an invention in return for the patent grant (and the temporary monopoly that it confers) and that only inventions that are truly useful, novel and non-obvious are patented. New Examiners are typically bright, but inexperienced, young scientists or engineers with a little knowledge of patent law. For example, Einstein was a patent examiner for the Swiss patent office early in his career. Because new Examiners get only limited training in patent law, they are often more open to arguments that point out structural differences between an invention and the prior art than they are to arguments that turn on legal points, valid though both may be.
In the U.S., the performance (rating) of Examiners as employees is measured (and their advancement in the Office is determined) by how productive they are. Productivity is quantified, in great part, by counting "first actions on the merits" (or "FAOMs") and "disposals." An Examiner receives a FAOM count when the Examiner first preforms an action on the merits and a disposal count when a U.S. application is allowed or abandoned or when an Examiner's answer is prepared during appeal. With such a system in place, it should be no surprise that Examiner's are highly motivated to begin and end the negotiation process by preparing and mailing certain types of Office actions. While the USPTO is continuously striving to improve the quality of this service and, hence the quality of the patents that it issues, until it is able to build measurements of service quality into the performance ratings of Examiners, it is the buyer of these services (the applicant) who must beware.
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How is a patent monopoly enforced?
As was noted above, a patent confers a negative right on the patentee. It gives the patentee the right to bring suit against an alleged infringer of the patent to prevent the infringer from making, using or selling the claimed invention within the jurisdiction of the patent. In the U.S., to enforce patent rights against an infringer, a civil suit can be brought in a particular U.S. District Court. A suit for patent infringement can either seek monetary damages or an injunction to stop the unauthorized practice of the invention, or both. The losing party of a patent infringement suit can appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). The losing party at the CAFC can petition to the U.S. Supreme Court in the form of a petition for writ of certiorari. A person with a reason to believe that he will be sued for patent infringement can sue the patent owner in order to establish noninfringement and/or to have the patent declared invalid.
Filing and prosecuting or defending a patent infringement suit in the U.S. can cost each side hundreds of thousands or millions of dollars. For this reason, great care must be taken in preparing patent applications and in prosecuting patents.
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What are patent agents and patent attorneys?
Patent agents and patent attorneys (patent professionals) are people who have earned degrees in science or engineering and who have passed a registration examination given by a particular patent office. In the U.S., only about a third of those who take the registration examination pass it. Both patent agents and patent attorneys can represent an applicant before a patent office in the preparation and prosecution of patent applications. In the U.S., a patent attorney is also a member of the bar of a U.S. court or the highest court in any State and can, therefore, practice law. Thus, a patent attorney can draw up agreements (e.g., employment agreements or licensing agreements) and can represent an applicant or patentee before a court (e.g., in appealing a patent office decision to a court or in a prosecuting or defending a patent infringement suit) while a patent agent cannot perform such services.
Patent agents and patent attorneys play an important role in assisting applicants understand patent laws and in developing strategies for maximizing the value of intellectual property under those laws. They can ensure that those strategies are implemented when patent applications are prepared. They are experts in writing (drafting) patent claims and in negotiating the wording (and, hence, scope) of those claims during the prosecution of the patent application.
As was noted above, patent applications can be prepared, filed and prosecuted by applicants who are not represented by a patent agent or patent attorney. Such applicants are called pro se applicants. Filing or prosecution of patent applications on a "pro se" basis is inappropriate for inventors of high technology inventions who have not had years of experience in such activity and an aptitude for the complex legal work that is often involved.
Patent agents and patent attorneys can adequately represent patent applicants only after they gain an understanding of the invention and the background art in the field of the invention. The inventor(s) has/have a duty to "teach" the subject invention to the patent professional and to make this person aware of any background art of which the inventor(s) is/are aware. The Inventor's Guide document web explains how to retain and work with a registered patent agent or patent attorney.
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What are the differences among national, regional and international patent applications?
A national patent application is filed in a national patent office (e.g., the USPTO). If the national patent application is a regular application (as opposed to a provisional application), an enforceable national patent will be granted on the application, provided searching and examination of the application reveals that the claimed invention is patentable and formal requirements have been met. Provisional national applications do not issue as patents, but they can be used to establish the priority date of an invention that is claimed in a regular application, provided the regular application is filed within 12 months of the filing date of the provisional application.
A regional patent application is filed in a regional patent office (e.g., the European Patent Office or EPO) under a regional patent convention (essentially a contract among Nation States), such as the European Patent Convention (EPC). If the law of a contracting State so permits, a regional application may also be filed in the central industrial property office of the State. If searching and examination of the application reveals that the claimed invention is patentable and formal requirements have been met, a regional (e.g., European) patent is issued. A regional patent confers upon its owner, in each contracting State for which it is granted, the same rights that would be conferred by a national patent granted by that State. The Africa Intellectual Property Organization (OAPI) and the Eurasian Patent Convention are other examples of regional patent systems.
An international patent is filed in an appropriate Receiving Office under the Patent Cooperation Treaty (PCT), a treaty signed by over 90 member Nation States. For example, only U.S. residents and nationals may file an international patent application in the U.S. Receiving Office (the USPTO). An international patent application may be searched (by an International Searching Authority or ISA) or searched by an ISA and examined (by an International Preliminary Examining Authority or IPEA), if additional fees are paid. The IPEA will issue an opinion as to whether the claimed invention satisfies criteria set out in the PCT for novelty, inventive step (non-obviousness) and industrial applicability. If a Demand for preliminary examination is not filed, regional and/or national applications (in PCT member jurisdictions named in the international application as filed) must be filed within 20 months of the priority date of the application. If a timely Demand is filed, filing of regional and/or national patent applications may be delayed until 30 months after the priority date. International patent applications do not issue as international patents.
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