General Information About Patents
A patent is the grant of a property right to an inventor, issued by the United States Patent and Trademark Office. The term of a new patent is 20 years from the date of application for the patent. There is an important distinction of rights in a patent. The patent does not confer affirmative rights to "manufacture, use, offer for sale, sell, or import" but merely the right to exclude others from "manufacturing, using, offering for sale, selling, or importing."
There are three types of patents:
Utility Patent - A patent for a new and useful machine, process, article of manufacture, or composition of matter, including improvements.
Design Patent - A patent for a new, original, and ornamental design for an article of manufacture.
Plant Patent - A patent for an asexually reproduced, new, and distinct variety of plant.
The patent law limits the subject matter that can be patented. These are:
- A "process” is defined by law as a process, act or method, and primarily includes industrial or technical processes.
- A “machine” is interpreted a an electrical or mechanical (or combination) device.
- An "article of manufacture” includes all manufactured articles.
A “composition of matter” indicates chemical compositions, mixtures of ingredients, as well as new chemical compounds.
Items that cannot be patented include:
Atomic Energy - The Atomic Energy Act of 1954 excludes the patenting of inventions specifically related to special nuclear material or atomic energy in an atomic weapon. [42 U.S.C. 2181 (a).]
Non-Useful - This term incorporates the concept that the subject matter of a patent must be operational. For example, a machine that will not operate to perform the intended purpose would not be useful, and therefore would not be granted a patent.
Laws of Nature - The laws of nature, physical phenomena, and abstract ideas are not patentable. You cannot patent gravity, light, and the big bang.
Ideas and Suggestions - An idea may lead to a patent, but the idea itself is not patentable. A complete description of the actual machine or other subject matter for which a patent is sought is required. You cannot patent the warp drive engine - yet!
Other Criteria for Obtaining a Patent
The invention must be new. In order to be new it must meet these criteria:
The invention cannot have been known, used, patented, or described in a printed publication in the United States.
The invention cannot have been described in a foreign publication.
The invention cannot have been in public use or on sale for more than one year prior to the patent application. (Some foreign patents cannot be issued if the invention was on sale or in use for any period prior to application.)
The subject matter sought to be patented must be sufficiently different from prior art so as to be non-obvious to someone skilled in the area of technology related to the invention, even if those differences were not published or otherwise disclosed. For example, changing the color of an invention is not be patentable.
Elements of a Patent Application
The patent application will contain much more than just the patent documentation itself. I will include the following:
- Application transmittal form.
- Fee transmittal form.
- Application Data Sheet.
- Executed Oath or declaration.
Non-Provisional Patent Application
A non-provisional patent application includes:
- A written document which comprises a specification (description and claims), and an oath or declaration
- A drawing, when necessary
- Filing, search, and examination fees.
Fees may be reduced if the applicant asserts small entity status and pays a small entity fee.
Provisional Patent Application
A provisional patent application is a lower cost option for utility and plant patents (not design patents). A provisional patent application establishes an early effective filing date and permits the applicant to use the term "Patent Pending." A provisional patent will be abandoned within 12 months of filing if a non-privisional application is not subsequently filed. The 20 year term of a patent is not affected by the provisional application.
Publication of Patent Applications
A patent application must be published by operation of law for most utility and plant applications. An applicant may request the publication be withheld, but only in the case where no patent application will be filed in a foreign country where publication is required. However, the application will be published in any event after 18 months. As a result of the publication, an applicant may assert provisional rights. Provisional rights allow the applicant protection from infringement, if a patent is subsequently granted, and if the applicant provides actual notice to an infringing party.
Elements of a Patent
Specification (Description and Claims)
The specification should have the following sections, in order:
- Title of the invention. The title should be as short as possible and no more than 500 characters.
- Cross reference to related applications, if any.
- Statement of federally sponsored research or development, if any.
A ”sequence listing,” which is a table or a computer program listing appendix submitted on a compact disc and an incorporation by reference of the material on the compact disc.
- Background of the invention.
Brief summary of the invention. The summary will describe the nature and substance of the invention.
- Brief description of the several views of the drawing, if any.
- Detailed description of the invention.
A claim or claims. This is the distinguishing subject matter of the invention and is what the inventor regards as the invention. The claims define the scope of protection afforded the invention when questions of infringement are judged by the courts.
- Abstract of the disclosure. The abstract of the invention is a single paragraph, 150 words or less, describing the "art" to which the invention pertains and describing what is "new" about the invention.
- Sequence listing, if any.
The specification is a written description of the invention and the method of manufacture of the invention. The specification is required to contain sufficient full, clear, and concise to enable any person skilled in the technological area of the invention to make and use the invention.
The description of the invention must be able to distinguish the invention from other inventions. It must describe a specific embodiment of the invention and must explain the mode of operation of principle of application. In an improvement to a previous invention, the specification must point out which specific parts constitute the improvement.
The applicant for a patent is required to furnish a drawing of the invention if the nature of the invention requires a drawing in order to understand the invention. The drawing must reference each and every claim specified.
Models and Specimens
A working model is typically not required as the description of the invention must be sufficient to allow a person knowledgeable in the art to produce and use the invention. However, a model may be required if deemed necessary to prove the functionality of the invention. For example, a patent for a perpetual motion machine will most likely require a working model. If the invention relates to a composition of matter, specimens may be required for experimentation. A micro-biological invention will require a specimen.
Assignments and Licenses
A patent is considered personal property. It may be sold, transferred, and mortgaged. The transfer of the patent must be in writing. The transfer may include the entire patent or a portion or interest in the patent. A transfer may also limit the geographical area for which the patent is applicable.
A patent may be owned by more than one person, as is the case with joint inventors. An assignment of the patent may also be to two or more entities. Any joint owner has full rights to he entire invention as long as that does not infringe on the rights of the other joint owners. A definite, specific agreement outlining the respective rights and obligations between the parties is recommended. The owner of a patent may grant licenses to others.
Patent Marking and Patent Pending
A manufactured invention is required to be marked with the term "Patent" followed by the applicable patent number or numbers. If the invention is not marked, the patent owner may not be able to recover damages for patent infringement. Indicating that an item is protected under patent, when in fact it is not, is illegal.
The terms "Patent Applied For" and "Patent Pending" have no legal effect but are provided simply for inform of the fact that an application for patent has been filed. A patent does not afford any protection until issued. Therefore, an item marked "Patent Pending" may be infringed without penalty.
Treaties and Foreign Patents
United States Patents are only valid in the United States and its territories. A U.S. inventor must file for foreign patents in the subject country, or in some cases a regional patent center, such as for the European Union.
The Paris Convention for the Protection of Industrial Property provides that each country guarantee the same protection it affords its own citizens to foreign citizens who apply for a patent in that country. There are 168 signatories to that treaty, including the United States. Therefore, foreign inventors may file for a U.S. Patent and U.S. citizens may file for foreign patents.
Disclosure Document Program
The USPTO provides a service whereby they will accept and preserve for a period of two years a "disclosure document." The disclosure document acts as evidence of the date of conception of an invention. The disclosure document is merely a more credible form of evidence than a certified letter mailed to oneself. The best form of evidence of conception of an invention remains the witnessed, permanently bound, page-numbered lab notebook or notarized records.
The disclosure document may be forwarded to the USPTO by the inventor, the owner of the invention, the attorney of the inventor (or owner), or the agent of the inventor (or owner). It must be signed by the inventor. The disclosure document will not be published or disclosed. The USPTO will retain the document for two years. If no patent application is filed within those two years, and specifically reference the disclosure document, the disclosure document will be destroyed.
The disclosure document is not used to establish the effective filing date of a patent application, nor is it a substitute for a patent application. Also, the disclosure document does not substitute for the requirements to file for patent application within one year of the publication, sale, or use of the invention, nor does it establish priority of an invention.
Attorneys and Agents
Significant knowledge of patent law, United States Patent and Trademark Office practice and procedure, as well as scientific or technical knowledge, is required for the preparation of a patent application. An inventor may prepare their own patent application, but unless they are knowledgeable and familiar with the process, there is a risk of significant difficulty working with the patent office and the risk of not adequately protecting the invention. Therefore, it is recommended that an inventor utilize the services of a patent attorney or agent registered with the U.S. Patent and Trademark Office to practice before the USPTO. Genesis engineers and staff will work with you to effectively employ the services of a patent attorney or agent.