A patent is a form of intellectual property that provides the patent owner with the right to exclude others from manufacturing, making, using, marketing, selling, or importing a claimed invention for a set period of time.  Patents are territorial, meaning that a patent issued by a particular country will not provide any protection in other countries, although an application filed in one country, such as the United States, can often be used to claim an earlier priority or filing date in another country.  

Types of Patents

The United States recognizes three different types of subject matter that can be protected by a patent.  Those three types are:

  • Utility Patents:  Utility patents protect useful inventions, such as a new type of tool, a new kind of drug, or a new way to organize or search a database.
  • Design Patents:  Design patents protect aesthetic inventions, such as the particular appearance of a picture frame or the aesthetic features of a cell phone case.
  • Plant Patents:  Plant patents protect a new and distinct variety of plant that can be asexually reproduced, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

Here at the Law Offices of Konrad Sherinian, LLC we can provide skilled counsel in utility patents and design patents.  However, we do not deal with plant patents.

Requirements for Patentability 

There are specific requirements for the patentability of both utility patents and design patents.  However, there are limits to what can be patented for both.  In particular, a patent can only be granted to a person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof […]”  The term “process” is defined to include any a process, act, or method, and is generally limited to industrial or technical processes, although business methods are sometimes patentable as well.    Machine refers to mechanically, electrically, or electronically operated devices for performing a task, including computers.  The term “manufacture” refers to things that are made and includes any and all manufactured items.  The term “composition of matter” refers to chemical compositions, and can include mixtures and solutions as well as chemical compounds.  In the hands of a skilled patent attorney, nearly anything ever made, as well as the process of making it, can be drafted as patent-eligible material.

Generally, patents must be directed to “useful” subject matter, although this requirement tends to only arise when prosecuting utility patent applications.  The precise definition of “useful” has been the subject of extensive litigation, especially recently with relation to chemical compounds and software.  However, a simple way of thinking about whether a particular subject matter is useful is to consider if the subject matter has a useful purpose and whether the subject matter as set forth in the patent application can fulfill that purpose. 

In addition, a patent cannot be obtained based on a mere idea or suggestion.  Patents can only be obtained for a new invention, which requires a complete description of the subject matter for which a patent is sought.

Novelty

In addition, all patents must be both novel and non-obviousness.  Novelty is described in 35 U.S.C. 102, which states that a patent cannot be obtained if:

“(1) the claimed 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 claimed invention” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

Effectively, novelty requires that no one in the entire world did the exact same thing as a particular patent application is attempting to claim.  Regretfully, this largely includes the inventor’s own actions; it is very common for an inventor to make a presentation at a scientific exposition, and, at a later date, be denied a patent because s/he earlier exposed the subject matter to the public.  Other common ways that novelty can be destroyed are by seeking funding, or just attempting to generate “hype;” i.e.; look at what we are going to release next year!

In certain cases, a non-disclosure agreement can preserve novelty, although certain form non-disclosure agreements are not effective for this purpose.  There are other exceptions to the novelty requirement, such as a grace period for an inventor’s own works and publications, and seeking the advice of a skilled attorney is always recommended before giving up on an invention. 

Non-Obviousness

In addition to novelty, the claimed subject matter of a patent must be non-obvious.  The issue of what is and what is not obvious is (probably) the most difficult subject in all of the patent law, and most practitioners take years before they finally have a solid grasp of obviousness.  The obviousness requirement is set forth in 35 USC 103, which does a fair job of stating it plainly:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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.  Patentability shall not be negated by the manner in which the invention was made.”

The first sentence of 35 USC 103 has likely been the subject of more litigation than any other in patent law.  In particular, there is extensive case law setting forth what is meant by “differences,” “claimed invention,” “prior art,” “effective filing date,” “a person having ordinary skill in the art,” and “to which the claimed invention pertains.”  Attempting to provide even an overview of obviousness would require far more time than a typical inventor would be willing to spend.  However, in general, non-obviousness requires that the claimed invention be sufficiently different from the prior art that a typical practitioner (a person having ordinary skill in the art) would find the differences to be clever, inventive, or non-obvious.  For example, the Supreme Court has held that the substitution of one metal for another in making a doorknob was obvious.  Generally, the substitution of color is obvious, as are minor variations in size. 

Infringement

Once a patent has been granted, the patent holder can file a lawsuit in a Federal District Court if s/he has evidence that another is infringing on the claims of the patent.  Infringement of a patent is determined by comparing the claims of the patent to the accused product. 

In the case of utility patents, the text of the patent is compared element-by-element to the features of the accused product, and every element of the claim must be present in the accused product for infringement to be found.  The specific meaning of various elements of the claims is frequently the subject of litigation in patent suits.

In the case of design patents, the drawings of the design patent are compared to the accused product, and every claimed feature of the drawing must be present in the accused product in identically or substantially identical form. 

We Can Help!

Attorneys at the Law Offices of Konrad Sherinian, LLC have extensive experience in patent matters.  Our attorneys have helped clients obtain numerous patents in areas such as software, electronics, and the mechanical arts in the United States and throughout the world.  In addition, we have litigated patent cases on behalf of both plaintiffs and defendants in District Courts throughout the United States.  Reach out to us today, and we will quickly set up a time when you can speak to an attorney.