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Legally Speaking


Issue: August, 2005
Author: David R. McKinney & Edwin S. Wall

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Patent Law Basics

Every attorney ought to understand some of the basics of patent law. Only registered patent attorneys may file and prosecute patent applications on behalf of clients with the Patent and Trademark Office (PTO). Nevertheless, as a non-patent attorney, basic knowledge of patent law will be helpful to your clients. This article presents some basic principles of U.S. patent law and provides useful guidance for attorneys.

What is a Patent?
Patents are intangible personal property that provide a collection of exclusive rights. These include the right to exclude all others, for a specified term of years, from making, using, or selling in the U.S., or importing into the U.S. for sale, the invention claimed in an issued patent. Like other types of property, patents can be bought, sold, licensed for others= use, and used as collateral for debts. When the patent term expires, the invention passes into the public domain, and the exclusive rights terminate.

Types of Patents
There are two primary types of patents: design patents and utility patents. Design patents cover "any new, original, and ornamental design for an article of manufacture." They do not cover the functional features of an invention, but provide the owner with the right to exclude others from making, using, or selling the same product with the same design. Design patents are used to cover stylish products, having important ornamental features.

Most patent seekers want a utility patent, however. A utility patent covers the functional features of an invention, regardless of its form or appearance. Because the coverage is thus broader, utility patents are generally more valuable. Accordingly, the remainder of this article will deal exclusively with utility patents.

Basis of U.S. Patent Law
The United States patent system is authorized by the U.S. Constitution, which declares that "Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to . . . inventors the exclusive right to their respective . . . discoveries." The current law, based upon the Patent Act of 1952, is found at 35 U.S.C. ' 101 et seq. The patent system is intended to promote innovation by granting a limited period of exclusive rights in an invention in exchange for full public disclosure.

Patentable Subject Matter
When seeking a U.S. patent, the first hurdle is to present patentable subject matter. The patent statutes allow patent protection for any "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . ." This broad language is interpreted to "include anything under the sun that is made by man.@ " Conversely, things not made by man are generally unpatentable: the laws of nature, physical phenomena, and abstract ideas themselves are not patentable because they are "manifestations of . . . nature, free to all men and reserved exclusively to none."

The Requirements for Patentability
An invention must be new, useful, and non-obvious to earn a patent. Federal statutes and case law further define these requirements.

1) Novelty - The Patent Act allows patent protection only for inventions that are "new." That is, the invention is patentable unless it "was known or used by others" in the U.S. before invention by the inventor, or was "patented or described in a printed publication" anywhere, more than one year prior to the person's patent application date. Prior patents, printed publications, or other evidence of prior inventions are called "prior art."

Each patent includes a series of numbered claims. Each claim is a single sentence that sets out in words the invention that is protected. When determining whether an invention is novel, the Patent Office and courts look at the patent claims to determine whether the prior art anticipates any of them. If every element of a claim is found in a single prior art reference, the claim is considered anticipated and unpatentable.

2) Utility - The patent statutes also require that an invention must be "useful" to be patented. To be useful, an invention simply must be capable of accomplishing at least one of its stated purposes. It need not be the best or only way to accomplish a certain result, and it need only be useful to some extent and in certain applications, but it must be useful in some way.

While the utility requirement is usually easily satisfied, there are some purported inventions which fail it. Patent applications for perpetual motion machines are summarily rejected because they cannot work according to all known natural laws. Likewise, inventions for expanding powers of ESP, reversing aging, drawing electrical energy out of the ether, or similar "incredulous inventions" are deemed unpatentable without clear proof of utility.

3) Non-Obviousness - Even if the exact invention is not anticipated by the prior art, patent protection is still not available "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which such subject matter pertains." This is the obviousness requirement, and often presents the most difficult hurdle to patentability.
Congress has not codified rules for the obviousness requirement because defining what is "obvious" is difficult. Instead, this task is left to the courts. Under current legal standards, an invention is obvious if three criteria are met. First, there must be some suggestion or motivation, either in the prior art or in knowledge generally available to one of ordinary skill in the art, to modify a given reference or to combine the teachings of several references. Second, there must be a reasonable expectation of success. Third, the prior art reference or references taken together must teach or suggest all of the claim limitations.

There are some general rules that give guidance as to what is obvious. An invention may be deemed obvious if it is merely a new use for a known item, a change of material or color, or a mere change of shape. There are exceptions, however, and skilled patent attorneys’ creative strategies can succeed in obtaining patent protection for inventions which at first appear obvious.

Other Considerations

1) Prior Public Use or Sale - The patent laws also impose an important statutory limitation called the "on-sale bar." "A person shall be entitled to a patent unless C . . . (b) the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." This statute presents a two-edged sword. On the one hand, inventors can sell their invention in the U.S. for up to a year before filing a patent application without losing U.S. patent rights. This allows time to test the market or generate revenue before seeking a patent. On the other hand, once this year passes, all possibility of patenting the invention in the U.S. is forever lost.

It is also important to keep in mind that most foreign nations have an "absolute novelty" requirement. That is, if an invention has been publicly disclosed anywhere before a patent application was filed, it is unpatentable in that country.

2) Inventorship - Under U.S. patent law, only the original and first inventor of an invention may apply for and receive patent protection. All patent application filings in the PTO must include a signed declaration stating that the applicant is the true inventor. The filing of a patent application with a false declaration constitutes inequitable conduct, makes any patent granted thereon unenforceable, and constitutes a crime. This provision prevents someone from stealing an invention and rushing to the patent office ahead of the actual inventor.


The procedure for obtaining a patent requires the assistance of a patent attorney. Nevertheless, any attorney can provide helpful guidance by asking his/her client the following questions:

  • What does this invention actually do?

  • What is it about this invention that is new?

  • Is this invention an improvement on something known? If so, how is the improvement novel?

  • Would someone who is knowledgeable about these sorts of things think your invention is obvious?

  • Has this invention already been in public use or on sale? If so, for how long?

  • Is there a significant foreign market for this invention? If foreign patenting is desired, has there been any prior publication or public disclosure of the invention?

  • Who is/are the true inventor(s)?

  • How much is this invention expected to be worth in the marketplace?

  • Who will want to buy it?

  • How long is this invention likely to be valuable in the marketplace?

The answers to these questions will help focus on the critical issues in seeking a patent. If the invention appears to be valuable, the next step is to refer the inventor to a registered patent attorney. As a non-patent attorney, you can help guide a client's first steps toward protecting his/her invention.

David R. McKinney is a registered patent attorney, practicing in Salt Lake City, Utah. He received his JD Cum Laude from Brigham Young University in 1998, and is a licensed Professional Engineer. His law practice covers all facets of patent, trademark, copyright, and related matters.

Edwin S. Wall is a registered patent attorney, practicing in Utah and Wyoming. He received his JD from the University of Wyoming in 1990. He also holds degrees in Physics, Engineering, and Political Science. His practice areas include patents, trademarks, copyrights and unfair competition.

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