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Patents 101

What is a patent?

A patent is a property right granted to an inventor by the Government. This right gives the inventor the opportunity to "exclude others from making, using or selling the invention" for a term of 20 years from the date of filing the application. In return for this period of exclusivity, the inventor must disclose the details of the invention so that others may seek improvements or new uses. The inventor gains from this period of exclusive control of the invention and society gains through the further advancements that may be made on the technology.

Who is an inventor?

Determining who is named as an inventor on a patent is a legal decision rather than a choice made among participants, such as for a credit in a publication. Only those individual(s) who furnish an idea, not the employer or the person who pays for the development of the idea, can be named as inventors. An inventor is the one who first conceives of the invention in sufficient detail that someone skilled in the art could reproduce the invention. If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor.

What can be patented?

Patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. A patent may be granted to anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof." The word "process" is defined to be a process or method, and new processes, primarily industrial or technical processes, may be patented. The term "manufacture" refers to articles which are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

In addition to the field of subject matter, an invention must meet other conditions and be:

New - The invention must be a new idea. It is not patentable if the invention is known or used by others, or described in a publication anywhere in the world, more than one year prior to the application for a US patent. It is important for inventors to be able to describe how their inventions differ from the existing state of the art.

Non-obviousness - The invention must not be an obvious extension of prior art. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be inobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

Useful - The invention must have a useful effect or a purpose. If there is no use for the invention, it is not patentable.

Types of patents

The patent law provides for the granting of three categories of patents:

Utility patents are granted for any new process, method, machine, manufacture, or compositions of matter, or any new and useful improvement thereof.

Design patents are granted for new, original and ornamental design for an article of manufacture. The appearance of the article is protected.

Plant patents are granted for distinct and new varieties of plants that have been invented or discovered and asexually reproduced.

When should you get a patent?

In the United States, patents are granted on a "first to invent" basis rather than a "first to file" basis, however, it is usually considered best to file an application as soon as the invention is made and reduced to practice. Ideally, a patent application should be made before the invention is disclosed to the public. Once the invention is made public, you lose the opportunity to file for patent protection in most foreign countries. There is a one year grace period after publication to file an application in the US. After publication, the last date to file an application is known as the "publication bar date." After this date an invention is ineligible for patent protection.

How is a patent obtained?

The first step to obtaining a patent is to file a U.S. Patent Application. The application includes a detailed description of the invention, drawings if applicable, a declaration that the inventor(s) believe themselves to be the original and first inventor(s) of the subject matter of the application, and a fee. The application explains how the invention differs from existing technology in the field ("prior art") and how the invention may be used ("claims").

Applications filed in the Patent and Trademark Office and accepted as complete applications are assigned to an examiner with expertise in the area of technology of the invention. The examination of the application consists of a study of the application for compliance with the legal requirements and a search through United States patents, prior foreign patent documents which are available in the Patent and Trademark Office, and available literature, to see if the claimed invention is new and unobvious. A decision is reached by the examiner in the light of the study and the result of the search.

The applicant is notified in writing of the examiner's decision by an "office action" which is normally mailed to the attorney or agent. If the invention is not considered patentable subject matter, the claims will be rejected. If the examiner finds that the invention is not new, the claims will be rejected, but the claims may also be rejected if they differ only in an obvious manner from what is found. It is not uncommon for some or all of the claims to be rejected on the first action by the examiner; relatively few applications are allowed as filed. The examiner provides reasons for his or her decisions and the applicant has an opportunity to provide a response with additional arguments or evidence to support their application. The process of responding to office actions and defending one's patent application is known as patent "prosecution."

The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner's action. The applicant must respond to every ground of objection and rejection in the prior Office action (except that a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated). The applicant's action must appear throughout to be a bona fide attempt to advance the case to final action. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.

After receiving the applicant's response, the application will be reconsidered, and the applicant will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. The second Office action usually will be made final. The applicant's response is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim.

If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner.

The patent application process takes anywhere from 12 months to three or more years. Biotechnology and software patents generally take two or more years. Approximately two out of every three applications result in the issuing of a patent.

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