Patents - An overview 

The patent attorneys at Sierra IP Law, PC - Patents, Trademarks & Copyrights understand that a patent is often a tool that may be used by a new or existing business to help that business stand apart from its competitors. A US patent provides the owner with the right to prevent others from making, using, offering to sell or selling the patented invention in the United States for 15 years or 20 years, depending on the type of patent. The following article provides an explanation of US patent law and the US patent system. Covering the following general patent topics:

          - Types of Patents

          - Patentability Requirements

          - Patent Application Process

There are different types of patents that are available to different technologies, including: (1) utility patents, which cover the functional aspects of an invention, (2) design patents, which cover the look, appearance, and specific design of tangible article, such as a consumer product, and (3) plant patents, which cover novel, asexually reproduced plants.

Utility patents cover a wide variety of technologies falling into categories specified by 35 USC 101:

          1.  A machine, which can be any mechanical device that uses mechanical power. It can                 be as simple as a hammer or as complex as a high performance engine.

          2.  An article of manufacture, which may be anything made by a manufacturing                             process, which may be manual, motorized, or automated process. Examples                             include sports equipment, toys, furniture, eye glasses, and many other types of                         technology.

          3.  Compositions of matter, which includes any composition of matter that is                                   manmade, such as a chemical composition made in a lab, genetically modified                         organisms, industrial chemicals (e.g., lubricants, glues, etc.), etc.

          4.  A process or method, which may be a method of making items (e.g., chemical                           synthesis), a method of using a machine or article of manufacture, a medical                             method, a software method, and many others.

These categories allow utility patents to cover new technologies in many different technical fields, including: chemical technologies, electronics, software, biotechnology, life sciences, mechanical and industrial equipment, medical devices, and consumer products.

Under US patent law, a proper utility patent application includes a written specification, patent claims, an abstract, and drawings if the technology described in the application can be shown in a drawing. If the patent application is missing any of these elements, the application is deficient and will be rejected and the application will not be given an official filing date. Each of these elements has its own specific requirements under the patent laws.

The written specification is required because the patent applicant is required to describe the invention in sufficient detail to allow a hypothetical person having ordinary skill in the relevant art (POSITA). This is what the patent owner provides to the public in exchange for the grant of twenty years of exclusive rights to the patentee. This is quid pro quo offered under US patent law: the inventor is granted a patent in exchange for a description of the invention in enough detail to allow the invention to be practiced by the public after the patent expires. The written description provides the inventor's contribution to advancing society through innovation. The specification must generally include a title, a description of the drawings (if any), and an adequate description of the invention.

The exclusive rights provided by a utility patent are defined by written patent claims that are submitted as part of the patent application. A patent claim is a specialized description of the invention that defines exclusive rights provided by the issued patent. The patent claims are the part of application that is examined by the patent office to determine whether the invention is novel and patentable. Thus, they should include the elements of the invention that distinguish it from prior technology, without cluttering them with unnecessary, conventional features. The specialized format includes a pre-amble, recited elements, and further limitations. There are terms of art that must be understood by the patent drafter, such as "comprising". The term "comprising" as used in a patent claim has a particular placement (usually the last word in the pre-amble) and means that the claimed invention includes the recited elements and may include other elements that are not included. The effect of the "comprising" term is that the claim can be infringed by a device that includes the recited elements and additional things that are not included in the language. Drafting patent claims requires specialized skill and knowledge of patent law.

The drawings must provide a graphic representation of each claim element (each feature of the claimed invention), if the claimed invention can be shown in a drawing. A mechanical innovation, for instance, can be shown in two dimensional drawings. In contrast, a patent application disclosing chemical composition may not require a drawing. The drawings must be clean line drawings that are reproducible for publication. The drawings must include reference numbers that correspond to the elements of the invention as described in the specification.

The patent application must include an abstract to facilitate searching of patents and patent applications in the United States Patent and Trademark Office (USPTO) database. In other words, the abstract facilitates the public access to patent filings, allowing the public to enjoy the benefits of the quid pro quo of the patent system.

Design patents provide a different category of patent rights to the patent owner. Design patents protect the visual appearance of an article of manufacture - something tangible that has been manufactured. The patent claim in a design patent is based on the highly specialized drawings that have particular hatching and marking for showing texture and surfaces in the drawings. The drawings must show each surface of the article of manufacture and additional views that aid in the understanding of the design. US patent law requires that the design must be ornamental in some way. For instance, one aspect of the design must have an ornamental aspect. A completely functional design (i.e., where each feature is determined by its function) is not patentable. A design patent cannot be infringed based on the function of the accused article. Design patent infringement only occurs if the accused article appears to be the same as the patented design to the ordinary observer.

Plant patents cover novel and distinct plant varieties that can be asexually reproduced. A plant patent application has its own application requirements that are different from utility and design patents. The application must include a detailed botanical description of the novel plant variety for which protection is sought, including the species, the growth characteristics of the plant, winter dormancy behavior, a complete description of the buds, blossoms, bark, leaves, and fruit, and other features. The new plant variety (e.g., a cutting, mutant, sport, or hybrid) must have novel characteristics from existing varieties, which may be different harvest time from the plant from which the new variety was taken, larger fruit, seedless fruit, or other new characteristic. These distinctions from the parent plant must be documented with photographs of the new variety, including the novel features. The claimed subject matter in a plant patent covers the plant described and shown in the photographs. Plant patents are infringed if the claimed plant is used, offered for sale, or imported without authorization by the patent owner. The Plant Variety Protection Act (PVPA) provides patent-like protection for sexually reproduced plants. See our explanation of the PVPA here.

There are several statutory requirements under the patent law that a patent application must meet in order to be granted patent protection. Several of these requirements related to formal requirements of the application that were mentioned above, relating to clarity and definiteness, and sufficient written description to describe the claimed subject matter and enable a POSITA to practice the invention. Patent law has three general substantive requirements beyond the formal requirements. The claimed invention must be within one of the categories of patentable subject matter under 35 USC 101 (see above), the invention must be novel under 35 USC 102, and the invention must be non-obvious under 35 USC 103. Novelty and non-obviousness is determined with respect to previous public information, referred to as "prior art".

If a technology has been previously disclosed to the public in some form, a patent cannot be granted. The form of the disclosure may take several forms, including a patent, a published patent application, a journal article, a research paper, a product in the marketplace, an explanatory pamphlet, book, or video, or any other form of disclosure. In order to render an invention unpatentable, the disclosure must be sufficiently detailed to enable a POSITA to practice the invention against which the disclosure is considered prior art.

New technologies must be novel in order to be found patentable. If a claimed invention is "anticipated" by a single prior art. The concept of anticipation is that the claimed invention is not new, and was previously fully disclosed to the public in a single reference, such as a single patent, a single journal article, or a single video. A combination of references cannot properly be used in an anticipation rejection. It cannot be asserted that a reference anticipates the claimed invention because it would be obvious to change a feature of a prior art reference or add a well-known component.

The concept of obviousness under US patent law is that a patent may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a POSITA at the time of the patent filing. The prior art is analyzed in reference to the effective filing date of the examined application.  The patent examiner cannot take the perspective of a person having knowledge of the present state of the art when scrutinizing the claimed invention in view of the prior art. An obviousness rejection may be based on a single prior art reference or multiple references. For example, the examiner may find that it would be obvious to modify technology disclosed in a single patent reference in view of a matter of standard design choice or technique. In a rejection based on a combination of cited references, a primary reference may teach most of what is claimed, and a secondary reference may disclose the missing element(s) or step(s). There must be some motivation to combine the references.  The motivation must be found in the prior art, or must be one of the exemplary rationales for obviousness. Examples of rationales include the use of a known technique to improve similar devices in the same way, using a component or step from an analogous technology to yield predictable results, or a known work in one field of endeavor may prompt variations in the same field based on design incentives or other market forces if the variations are predictable to a POSITA.

Proper patent applications must be filed with the United States Patent and Trademark Office (USPTO) in order to seek patent protection. Ideally, patent applications should be filed at the earliest possible time in order to beat other inventors or other technology companies to the patent office. The US patent system is a first-to-file system. This means that it does not matter who invented a technology first, the inventor that files first has priority of patent rights.

Any patent filing must meet the patent application requirements discussed above, including a specification that adequately supports the claimed subject matter, drawings, claims, and an Abstract. However, there are many subtleties in patent law that should be understood by anyone preparing and filing patent applications. Patent law is defined by many sources, including the Title 35 of the United States Code, Title 37 of the Code of Federal Regulations, federal court decisions, the Manual of Patent Examining Procedure, and decisions by the Patent Trial and Appeal Board of the USPTO. To ensure that the patent application is properly prepared, the applicant or inventors should consult with an experienced patent attorney before filing a patent application.

Once the patent application is filed, a patent examiner in the USPTO reviews the appliance with the formal requirements, that the invention falls in one of the patent subject matter categories of 35 USC 101, and that the claimed subject matter is novel and non-obvious. The patent examiner will conduct their own search of the USPTO database and other sources of prior art for the closest prior technology. The examiner performs a patentability analysis in view of the search results and makes a determination as to whether the claimed invention is sufficiently distinct from the closest prior art. The examiner then issues an office action to the applicant that explains all issues that are found with the patent application.

The patent applicant has the opportunity to respond to an office action. Amendments to the application and legal arguments can be submitted to the USPTO to overcome any rejections in the office action. The office action must be carefully analyzed to determine whether the positioned taken by the patent examiner can be successfully challenged and overcome to result in a granted patent. In some cases, multiple office actions may be issued, resulting in several back-and-forths with the patent examiner. Multiple rounds of examination may result in patent applications that cover a technology that is relatively close to the prior art. A patent applicant may choose to file a patent application where it is a close call as to whether a patent can be issued because the technology is important to the applicant's business. In such cases, there may be an extended battle with the USPTO. The patent examination process is complicated and requires a thorough knowledge of the patent laws and the tricks of the trade. It is highly recommended that inventors and patent applicants seek the assistance of skilled patent attorney before filing any patent applications.

Our attorneys are also experienced and skilled in all forms of intellectual property matter. Through many years of direct experience, our patent attorneys have developed a clear understanding of patent office practice and procedure, and have developed the knowledge and skill to efficiently prosecute patents before the United States Patent and Trademark Office. We have developed a thorough understanding of the tendencies and patterns of patent examiners. This expertise and knowledge is applied on behalf of our clients in the patent examination process and provides an advantage in seeking patent protection. We also have extensive experience in pursuing international patent rights for our clients. Patent Cooperation Treaty (PCT) application filings are a regular part of our practice, and we work with an extensive network of foreign associated in pursuing foreign patent and design rights for our clients. Contact our office for a free consultation.