Hello, my name is Elizabeth Shaw, and I am the International Relations Advisor in the
Office of Policy and International Affairs at the United States Patent and Trademark
Office.
Today, I will be introducing you to patents – what a patent is, what a patent protects,
and how a patent is obtained in the United States.
The details surrounding these topics are included in the laws and regulations of the United
States including the most recent changes in U.S. patent law enacted under the Leahy-Smith
America Invents Act of 2011, or the AIA, and in the Manual of Patent Examining Procedure,
or the MPEP.
My goal today is to give you useful facts that will enable you to understand the basics
of patents and how inventions are protected in the United States and not to get too far
off into the complexities of patent law and patent examination practice.
At the end of this presentation, I will provide links to web sites and web pages where you
can explore in detail the intricate laws, regulations, and examination guidelines for
patents in the United States.
In addition, the USPTO offers a variety of assistance to independent inventors and to
small and medium size businesses.
A link to those resources will also be found at the end of this presentation.
Patented technology today is everywhere: from our smart phones and electronic tablets; to
our medicine cabinets at home; to the cars we drive; and in how I am reaching you today
with this presentation.
Patents encourage innovation by incentivizing the creation of new products and services
that can greatly enrich the quality of our lives.
Obtaining a patent in the United States and in most countries can be a complex process
involving laws and regulations that outline the various requirements and conditions that
need to be met.
For today, I want you to become familiar with 3 important aspects of the patenting procedure.
We will accomplish this by answering three questions.
Question One – what is a patent?
Here we will look at the history of patents in the United States and define what a patent
is.
Question Two – what does a patent protect?
To answer this question, we will explore what kinds of inventions are eligible for a patent.
And Question Three – what is required to get patent protection?
We will answer this question in 2 parts – first by identifying conditions that an invention
must meet to be patentable and second by exploring the patent examination process.
Because patents laws are complex and patents can be very valuable, we usually recommend
that inventors who are unfamiliar with the patent system seek the assistance of a patent
attorney or agent.
The patent system was provided for during the founding of the United States and is included
in the U.S. Constitution, Article 1, Section 8, Clause 8 where the founders of the United
States granted “Congress the power to create a patent system that would promote the progress
of science and the useful arts, by securing for limited times to authors and inventors
the exclusive right to their respective writings and discoveries.”
This clause is also the source for the U.S. copyright system, and today we understand
the term “useful arts” as referring to technology.
Why do we have patents?
Are patents beneficial to the United States?
Yes, they are.
They encourage investment in new technologies, allowing not only the creation of these new
technologies, but also the resources to bring them to the marketplace which brings them
to individuals like you and me.
Abraham Lincoln, our 16th president and the only president to ever receive a patent, famously
said in a speech in 1858 that the “patent system … added the fuel of interest to the
fire of genius, in the discovery and production of new and useful things.”
Here we are at our first question - what is a patent?
In the United States, a patent is a property right granted by the United States government
to an inventor.
This property right grants to the inventor the right, for a limited time, to exclude
others from making, using, selling, or offering for sale the invention throughout the United
States, or from importing the invention into the United States.
The patent is granted in exchange of the inventor fully disclosing the invention to the public,
where it otherwise might have remained unknown.
This disclosure is important because it promotes follow-on innovation.
A patent is also territorial meaning that it is only enforceable in the territory or
country where it was obtained.
So, a patent granted in the United States can only be protected in the United States.
And, the U.S. patent right is a private right.
That means the patent holder is tasked with protecting and enforcing the patented invention
– the U.S. government cannot do it for you.
There are 3 types of U.S. patents and they are: a utility patent; a design patent; and
a plant patent.
Utility patents, the most common type of patent sought by inventors, are awarded to useful
inventions, and they have a 20 year term from the date of filing.
The first utility patent in the United States was issued on July 31, 1790, to Samuel Hopkins
of Philadelphia, Pennsylvania for an improvement in “the making of pot ash and pearl ash
by a new apparatus and process.”
In 1790, patents were granted by members of the Patent Board which included Thomas Jefferson
who was then Secretary of State and considered to be the first administrator of the American
patent system and the first patent examiner.
The original paper patent grant to Samuel Hopkins, which was signed by the first U.S.
President, George Washington, is still in existence today in the collections of the
Chicago Historical Society.
Here we have an example of a utility patent – an underwater dolly with propellers that
make it easier for a camera operator to maneuver in water.
It was invented by filmmaker and inventor, James Cameron.
He created this for his brother Michael to film underwater scenes for the movie “The
Abyss, “ and this underwater dolly was patented in 1989.
While a utility patent represents the functional aspects of an invention, a design patent covers
the ornamental design or the shape for an article of manufacture.
Increasingly, businesses are becoming more aware of design patents in providing them
with a competitive edge to protect their product designs.
This example of a design patent shows a drawing from 1931 of an early Minnie Mouse.
Walt Disney received his design patent for Mickey Mouse a year earlier in 1930.
The third type of United States patent is the plant patent.
Some may ask why plant varieties should be protected.
After all, plant varieties are products of nature and should be freely accessible to
everyone.
What this opinion overlooks is that a plant breeder who develops a new variety that may
be disease resistant, drought resistant, cold tolerant, or simply aesthetically more pleasing,
is no less an inventor than someone who improves an automobile engine or develops a new pharmaceutical.
The only difference is that the medium with which the plant breeder works is living material
rather than inanimate matter.
Here is an example of a plant patent - for a Hydrangea plant named Limelight which has
become a popular landscape plant used across North America.
The football-shaped flowers look fresh and clean in summer’s heat, and Limelight blooms
even in cold climates.
Next we’ll take a look at what is patent eligible.
This will help to answer our second question – what does a patent protect?
In 1980, the United States Supreme Court answered the question, “what is patent eligible,”
in the landmark decision of Diamond versus Chakrabarty, which involved the patenting
of life forms.
In this case, the Supreme Court stated that Congress’ intention was that patent eligible
subject matter included “anything under the sun that is made by man…”
Now, does this literally mean anything made by humans is eligible for a patent?
The answer to that question is “no.”
To be patent eligible, an invention must fall into one of the following 4 categories.
An invention must be a process, machine, manufacture, or composition of matter OR the invention
must be an improvement of one of these 4 categories.
Even if an invention falls within one of the 4 previous identified statutory, or lawful,
categories of invention, it may still not be patent eligible if it also falls into one
of these three judicially-created, or court-created, exceptions to patentability.
These exceptions include: laws of nature (for instance, Newton’s law of motion); natural
phenomena (that would be such things as wind, sunrise, germination, erosion, or gravity)
and abstract ideas (for instance, a mental process – such as adding up numbers in your
head).
More examples of inventions not eligible for patent protection in the United States include:
mathematical algorithms; computer software code per se; and a newly discovered mineral
as it exists in nature.
You can find more information on patent eligibility in Chapter 2100 of the Manual of Patent Examining
Procedure or MPEP.
The MPEP is published by the USPTO and provides patent examiners, applicants, attorneys, and
agents with a reference work on the practices and procedures relative to the prosecution
of patent applications before the USPTO.
It contains instructions to examiners and outlines the current procedures which a patent
examiner is required to follow in the normal examination of a patent application.
You will find a link to the MPEP at the end of this presentation.
Earlier, we learned that the United States Constitution provides for rights to inventors
for “limited times.”
What are the time limits for a U.S. patent?
How long does an inventor have the benefit of a patent?
For utility patents filed after June 8, 1995, the patent term is generally 20 years from
the date the patent application was filed at the USPTO, and once issued, utility patents
have maintenance fees that are due during the 20-year patent term at 3.5 years, 7.5
years, and 11.5 years.
If the maintenance fees are not paid, the patent can be abandoned and the inventor can
lose his or her patent rights.
Plant patents also have a term of 20 years from the date of filing but have no maintenance
fees.
A design patent term lasts 15 years from the date of issue and also have no maintenance
fees.
Now that we know what is eligible for patent protection, or what kinds of inventions a
patent might protect here in the United States, let’s start to answer our third question
– What is required to get a patent?
As I said earlier, we will answer this question in 2 parts.
The first part is to identify the conditions of patentability or what is required of an
invention for it to be patentable.
Does the invention have utility?
Is the invention new or novel?
Is it non-obvious to a person having ordinary skill in the art (or technology)?
And has specific disclosure of the invention utilizing certain requirements been made in
the patent application?
We will now look at these conditions of patentability one at a time.
First, let’s look at utility.
An invention submitted for a patent in the United States must be useful – it must have
some function, and it must perform as described in the patent application.
Under U.S. law, the invention must have specific utility, substantial utility, and credible
utility.
These determinations are made by a patent examiner who is highly skilled in the subject
matter of the claimed invention.
The USPTO has issued guidelines to assist both patent examiners and the public is assessing
whether an invention has utility that complies with the law.
These guidelines are available in Chapter 2107 of the MPEP.
We have also referenced the pertinent law where patent utility is discussed, 35 U.S.C.
(or United States Code) section 101, and you will find a link to that section of laws and
the MPEP at the end of this presentation.
Now, before moving on to novelty and non-obviousness, we need to talk about prior art.
To determine if an invention is novel (or new) and non-obvious, a comparison of the
claimed invention with the prior art is required.
So what is prior art?
Prior art is the state of the art (or the technology) prior to the filing date of a
patent application.
It is used to determine whether an invention is patentable or not and consists of the body
of published information or prior existing disclosures of the relevant field of technology
claimed in a patent application made anywhere in the world.
If an inventor discloses his or her invention before filing a patent application for that
invention, the inventor may lose out on getting a patent.
Disclosure of an invention can be made in many different ways – for instance: sale
of the invention; exhibiting the invention at a trade show; or an oral disclosure made
anywhere in the world such as discussing an invention in a paper presented at a conference.
However, in the United States, the law provides for a 12 month grace period.
This means that certain disclosures by the inventor, or others who derived their disclosure
from the inventor, may not be used as prior art if that disclosure occurred within 12
months prior to the effective filing date of the patent application.
You should also be aware that in some countries there is no grace period or a more limited
grace period.
Remember: disclosure of the invention outside of the 12 month grace period is considered
prior art, and a patent will not be granted.
Next, we will look at the novelty requirement which can be found in the U.S. law at 35 U.S.C.
section 102.
To be novel, an invention must not be disclosed in the prior art.
When comparing the claimed invention to the existing prior art to determine novelty, we
determine whether a disclosure of the identical invention has been made in writing or through
another type of disclosure such as oral disclosure, public use, or sale.
However, as I pointed out before, if disclosure occurred during the 12 month grace period
prior to filing the patent application, it may not be considered prior art and will not
affect the novelty of the invention if the disclosure was by the inventor or by others
who derived their disclosure from the inventor.
Now - even if disclosure of the identical invention is not shown in the prior art, patentability
requirements also state the invention must not be obvious in view of the prior art.
What is non-obviousness?
Again, we are comparing the claimed invention against the existing prior art.
The question being asked for non-obviousness is whether or not the invention would have
been obvious to a person having ordinary, or an average level of skill, in the art in
the field of the invention.
In addition, the patent law requires that the assessment be “at the time the invention
was made.”
This requirement means that patent examiners must be historical detectives, piecing together
what was known at the time the invention was made.
The law also states that patentability will not be denied by the manner in which the invention
was made.
That means that the assessment of obviousness does not depend on whether the invention took
10,000 hours to develop through trial and error, or was developed relatively quickly,
as a result of a flash of genius!
The key is whether the differences between the claimed invention and the prior art are
non-obvious, even if the invention is not identically disclosed and considered novel.
We learned earlier that a patent grants an inventor certain rights to their invention
– and for a limited time the right to exclude others from making, using, selling, or offering
for sale the invention throughout the United States, or importing the invention into the
United States.
In exchange for a patent, the inventor is required to make sure that the claimed invention
is communicated (or disclosed) to the public in a meaningful way.
A patent application is required to have specific information as to ensure that anyone skilled
in the art (or technology of the invention) is able to make and use the invention.
In the disclosure, the specific information of the manner and process of making and using
the invention must be in full, clear, concise, and exact terms so that anyone skilled in
the art of the claimed invention can make it and use it on their own.
That is, the disclosure must be an enabling and clear disclosure.
More information on these requirements of written description and enablement can be
found in 35 U.S.C. section 112 and in the MPEP.
We have now reviewed many of the critical statutory requirements that must be met to
receive a patent grant in the United States.
Now let’s look at how a patent application processes through the USPTO.
Patent examination is a process by which a patent examiner reviews the contents of a
patent application for compliance with U.S. legal requirements.
These are the requirements that we have talked about earlier in the presentation.
After a thorough examination of the application, the patent examiner comes to a conclusion
as to the invention’s patentability and decides whether to grant or reject the patent
application.
All patent examiners at the USPTO have at least a bachelor’s degree relative to the
subject matter applications that they will be assigned to examine, though many have graduate
degrees as well.
For example, USPTO patent examiners have degrees in; engineering including electronical, mechanical,
and chemical; biology and microbiology; physics; and design examiners may have degrees in architecture,
applied arts, or graphics.
Every new examiner receives both on-the-job and formal training which cover all aspects
of basic and advanced examining functions and corresponding legal concepts.
And the burden lies first with the patent examiner to prove that the claimed invention
fails to comply with one or more of the patentability requirements.
The first step is to file an application for a patent, and I want to point out one of the
most important changes that the America Invents Act made to the U.S. patent system.
That is, the United States switched from being a “first-to-invent” system to a “first-
inventor- to-file” system.
Changing to first inventor to file brought the United States in line with other countries’
laws and brought more certainty to the U.S. patent process.
All patent applications filed in the United States after March 16, 2013, are filed under
the first inventor to file rules.
A patent application may be filed either electronically or in paper form.
But, be aware that the America Invents Act provides for an additional fee for filings
made by non-electronic means.
The USPTO has a series of informational videos specifically on first inventor to file changes,
and these videos, along with others relative to the America Invents Act, can be found on
our web site at www.uspto.gov.
I have also provided the link to the web page with AIA informational videos at the end of
this presentation.
Here are the requirements for a utility patent application – it must include a written
description or specification of the invention (we talked about that requirement earlier),
at least one claim, drawings if necessary to understand the invention, an oath or declaration
stating among other things that the inventor or inventors truly came up with the invention,
and for biotechnology inventions, a nucleotide and/or amino acid sequence listing if necessary.
Patent claims define the legal scope of the patent and can be compared to the deed to
a house or piece of land.
Like a property deed, the claims define the legal boundary between what constitutes a
trespass of the property rights, or in the patent world, what is an infringing or non-infringing
action.
When the application is received at the USPTO, the office will conduct a formalities review
of the application and will notify the applicant of any deficiencies found.
This is more of an administrative check to ensure all patent application documents have
been property filled out or included.
Once the application has passed the formalities review, is it then assigned to an examiner
who will evaluate the application based on the patentability requirements we discussed
earlier.
Once the application is taken up by the patent examiner for examination, the examiner will
read the patent application to gain an understanding of the invention and the claims.
Next, a search of the prior art begins.
These pictures were taken in the early and the mid-20th century showing how examiners
in the U.S. Patent Office used to search for prior art.
Before computers changed how we all work, patent searches were done by hand through
stacks and stacks of granted patents and by searching other printed materials such as
books, treatises, magazines, and newspapers.
Today, patent examiners have access to the latest electronic databases and resources
to search for prior art related to the technology of an invention claimed in a patent application
and can perform patent application searches at any location that has computer access to
the Internet.
Once the search is completed, the examiner will prepare a written communication called
an office action indicating the examiner’s decisions regarding compliance or non-compliance
with the patentability requirements, with supporting reasoning and evidence.
If at any point in the process the patent examiner is satisfied that the claimed invention
is fully compliant with all legal requirements, the application is allowed to be issued as
a patent.
If, however, the examiner determines that one or more laws have not been complied with,
the examiner will send an office action containing a rejection or rejections to the applicant
for response.
The applicant must then respond to the patent examiner’s rejections.
The response can include cancellation of any rejected claims, amendments of those claims
to overcome the rejection, arguments that the rejection does not apply, or evidence
that calls into question the basis of the rejection.
If the examiner is still not convinced by the inventor’s response that the rejection
should be withdrawn, the examiner may make the rejection final.
Does an inventor have any options after receiving a final rejection?
The answer is yes.
After receiving a final rejection, the inventor has the option to appeal the examiner’s
decision to the Patent Trial and Appeal Board (or PTAB) for further review.
The inventor also has the option to file a request for continued examination (or RCE)
to begin another round of examination where the inventor can introduce some additional
claim amendments or arguments.
And finally, if the inventor does not respond to the final rejection, the patent application
will be abandoned and no further action will be taken on it by the USPTO.
If the claimed invention is found by the examiner to be fully compliant with all the U.S. patent
laws, the application will be allowed and a patent will be granted.
Once a patent is granted, the inventor or patent owner has the right to exclude others
from exploiting the invention.
The patent grant is now an asset that can allow the inventor time to enter and develop
a market for the invention, attract investors to risk their capital in financing the commercialization
of the invention, or to license the patent to others who seek to develop the technology.
Now, this has been a very simplified version of the patent examination process, and in
the case of a real patent application, the process could have many more steps and take
many months to complete.
I hope you now have a good understanding of the basics of patents: what they are; what
they protect; and what it takes to get patent protection in the United States.
For more detailed information on U.S. patent laws and regulations, the USPTO examination
process, the America Invents Act, and resources available from the USPTO for inventors including
the Patent Pro Bono Program, where free legal assistance is available to under-resourced
inventors interested in securing patent protection for their inventions, and the Pro Se Assistance
Program, where inventors who may not have the resources to hire a patent attorney or
agent can get help meeting their goals of protecting their valuable intellectual property,
please use the links shown on this slide or visit our web site at www.uspto.gov.