Introduction to Patent Protection

Introduction to Patent Protection


Hello, my name is Elizabeth Shaw, and I am
the International Relations Advisor in the Office of Policy and International Affairs
at the United States Patent and Trademark Office. Today, I will be introducing you to patents
– what a patent is, what a patent protects, and how a patent is obtained in the United
States. The details surrounding these topics are included
in the laws and regulations of the United States including the most recent changes in
U.S. patent law enacted under the Leahy-Smith America Invents Act of 2011, or the AIA, and
in the Manual of Patent Examining Procedure, or the MPEP. My goal today is to give you useful facts
that will enable you to understand the basics of patents and how inventions are protected
in the United States and not to get too far off into the complexities of patent law and
patent examination practice. At the end of this presentation, I will provide
links to web sites and web pages where you can explore in detail the intricate laws,
regulations, and examination guidelines for patents in the United States. In addition, the USPTO offers a variety of
assistance to independent inventors and to small and medium size businesses. A link to those resources will also be found
at the end of this presentation. Patented technology today is everywhere: from
our smart phones and electronic tablets; to our medicine cabinets at home; to the cars
we drive; and in how I am reaching you today with this presentation. Patents encourage innovation by incentivizing
the creation of new products and services that can greatly enrich the quality of our
lives. Obtaining a patent in the United States and
in most countries can be a complex process involving laws and regulations that outline
the various requirements and conditions that need to be met. For today, I want you to become familiar with
3 important aspects of the patenting procedure. We will accomplish this by answering three
questions. Question One – what is a patent? Here we will look at the history of patents
in the United States and define what a patent is. Question Two – what does a patent protect? To answer this question, we will explore what
kinds of inventions are eligible for a patent. And Question Three – what is required to
get patent protection? We will answer this question in 2 parts – first
by identifying conditions that an invention must meet to be patentable and second by exploring
the patent examination process. Because patents laws are complex and patents
can be very valuable, we usually recommend that inventors who are unfamiliar with the
patent system seek the assistance of a patent attorney or agent. The patent system was provided for during
the founding of the United States and is included in the U.S. Constitution, Article 1, Section
8, Clause 8 where the founders of the United States granted “Congress the power to create
a patent system that would promote the progress of science and the useful arts, by securing
for limited times to authors and inventors the exclusive right to their respective writings
and discoveries.” This clause is also the source for the U.S.
copyright system, and today we understand the term “useful arts” as referring to
technology. Why do we have patents? Are patents beneficial to the United States? Yes, they are. They encourage investment in new technologies,
allowing not only the creation of these new technologies, but also the resources to bring
them to the marketplace which brings them to individuals like you and me. Abraham Lincoln, our 16th president and the
only president to ever receive a patent, famously said in a speech in 1858 that the “patent
system … added the fuel of interest to the fire of genius, in the discovery and production
of new and useful things.” Here we are at our first question – what is
a patent? In the United States, a patent is a property
right granted by the United States government to an inventor. This property right grants to the inventor
the right, for a limited time, to exclude others from making, using, selling, or offering
for sale the invention throughout the United States, or from importing the invention into
the United States. The patent is granted in exchange of the inventor
fully disclosing the invention to the public, where it otherwise might have remained unknown. This disclosure is important because it promotes
follow-on innovation. A patent is also territorial meaning that
it is only enforceable in the territory or country where it was obtained. So, a patent granted in the United States
can only be protected in the United States. And, the U.S. patent right is a private right. That means the patent holder is tasked with
protecting and enforcing the patented invention – the U.S. government cannot do it for you. There are 3 types of U.S. patents and they
are: a utility patent; a design patent; and a plant patent. Utility patents, the most common type of patent
sought by inventors, are awarded to useful inventions, and they have a 20 year term from
the date of filing. The first utility patent in the United States
was issued on July 31, 1790, to Samuel Hopkins of Philadelphia, Pennsylvania for an improvement
in “the making of pot ash and pearl ash by a new apparatus and process.” In 1790, patents were granted by members of
the Patent Board which included Thomas Jefferson who was then Secretary of State and considered
to be the first administrator of the American patent system and the first patent examiner. The original paper patent grant to Samuel
Hopkins, which was signed by the first U.S. President, George Washington, is still in
existence today in the collections of the Chicago Historical Society. Here we have an example of a utility patent
– an underwater dolly with propellers that make it easier for a camera operator to maneuver
in water. It was invented by filmmaker and inventor,
James Cameron. He created this for his brother Michael to
film underwater scenes for the movie “The Abyss, “ and this underwater dolly was patented
in 1989. While a utility patent represents the functional
aspects of an invention, a design patent covers the ornamental design or the shape for an
article of manufacture. Increasingly, businesses are becoming more
aware of design patents in providing them with a competitive edge to protect their product
designs. This example of a design patent shows a drawing
from 1931 of an early Minnie Mouse. Walt Disney received his design patent for
Mickey Mouse a year earlier in 1930. The third type of United States patent is
the plant patent. Some may ask why plant varieties should be
protected. After all, plant varieties are products of
nature and should be freely accessible to everyone. What this opinion overlooks is that a plant
breeder who develops a new variety that may be disease resistant, drought resistant, cold
tolerant, or simply aesthetically more pleasing, is no less an inventor than someone who improves
an automobile engine or develops a new pharmaceutical. The only difference is that the medium with
which the plant breeder works is living material rather than inanimate matter. Here is an example of a plant patent – for
a Hydrangea plant named Limelight which has become a popular landscape plant used across
North America. The football-shaped flowers look fresh and
clean in summer’s heat, and Limelight blooms even in cold climates. Next we’ll take a look at what is patent
eligible. This will help to answer our second question
– what does a patent protect? In 1980, the United States Supreme Court answered
the question, “what is patent eligible,” in the landmark decision of Diamond versus
Chakrabarty, which involved the patenting of life forms. In this case, the Supreme Court stated that
Congress’ intention was that patent eligible subject matter included “anything under
the sun that is made by man…” Now, does this literally mean anything made
by humans is eligible for a patent? The answer to that question is “no.” To be patent eligible, an invention must fall
into one of the following 4 categories. An invention must be a process, machine, manufacture,
or composition of matter OR the invention must be an improvement of one of these 4 categories. Even if an invention falls within one of the
4 previous identified statutory, or lawful, categories of invention, it may still not
be patent eligible if it also falls into one of these three judicially-created, or court-created,
exceptions to patentability. These exceptions include: laws of nature (for
instance, Newton’s law of motion); natural phenomena (that would be such things as wind,
sunrise, germination, erosion, or gravity) and abstract ideas (for instance, a mental
process – such as adding up numbers in your head). More examples of inventions not eligible for
patent protection in the United States include: mathematical algorithms; computer software
code per se; and a newly discovered mineral as it exists in nature. You can find more information on patent eligibility
in Chapter 2100 of the Manual of Patent Examining Procedure or MPEP. The MPEP is published by the USPTO and provides
patent examiners, applicants, attorneys, and agents with a reference work on the practices
and procedures relative to the prosecution of patent applications before the USPTO. It contains instructions to examiners and
outlines the current procedures which a patent examiner is required to follow in the normal
examination of a patent application. You will find a link to the MPEP at the end
of this presentation. Earlier, we learned that the United States
Constitution provides for rights to inventors for “limited times.” What are the time limits for a U.S. patent? How long does an inventor have the benefit
of a patent? For utility patents filed after June 8, 1995,
the patent term is generally 20 years from the date the patent application was filed
at the USPTO, and once issued, utility patents have maintenance fees that are due during
the 20-year patent term at 3.5 years, 7.5 years, and 11.5 years. If the maintenance fees are not paid, the
patent can be abandoned and the inventor can lose his or her patent rights. Plant patents also have a term of 20 years
from the date of filing but have no maintenance fees. A design patent term lasts 15 years from the
date of issue and also have no maintenance fees. Now that we know what is eligible for patent
protection, or what kinds of inventions a patent might protect here in the United States,
let’s start to answer our third question – What is required to get a patent? As I said earlier, we will answer this question
in 2 parts. The first part is to identify the conditions
of patentability or what is required of an invention for it to be patentable. Does the invention have utility? Is the invention new or novel? Is it non-obvious to a person having ordinary
skill in the art (or technology)? And has specific disclosure of the invention
utilizing certain requirements been made in the patent application? We will now look at these conditions of patentability
one at a time. First, let’s look at utility. An invention submitted for a patent in the
United States must be useful – it must have some function, and it must perform as described
in the patent application. Under U.S. law, the invention must have specific
utility, substantial utility, and credible utility. These determinations are made by a patent
examiner who is highly skilled in the subject matter of the claimed invention. The USPTO has issued guidelines to assist
both patent examiners and the public is assessing whether an invention has utility that complies
with the law. These guidelines are available in Chapter
2107 of the MPEP. We have also referenced the pertinent law
where patent utility is discussed, 35 U.S.C. (or United States Code) section 101, and you
will find a link to that section of laws and the MPEP at the end of this presentation. Now, before moving on to novelty and non-obviousness,
we need to talk about prior art. To determine if an invention is novel (or
new) and non-obvious, a comparison of the claimed invention with the prior art is required. So what is prior art? Prior art is the state of the art (or the
technology) prior to the filing date of a patent application. It is used to determine whether an invention
is patentable or not and consists of the body of published information or prior existing
disclosures of the relevant field of technology claimed in a patent application made anywhere
in the world. If an inventor discloses his or her invention
before filing a patent application for that invention, the inventor may lose out on getting
a patent. Disclosure of an invention can be made in
many different ways – for instance: sale of the invention; exhibiting the invention
at a trade show; or an oral disclosure made anywhere in the world such as discussing an
invention in a paper presented at a conference. However, in the United States, the law provides
for a 12 month grace period. This means that certain disclosures by the
inventor, or others who derived their disclosure from the inventor, may not be used as prior
art if that disclosure occurred within 12 months prior to the effective filing date
of the patent application. You should also be aware that in some countries
there is no grace period or a more limited grace period. Remember: disclosure of the invention outside
of the 12 month grace period is considered prior art, and a patent will not be granted. Next, we will look at the novelty requirement
which can be found in the U.S. law at 35 U.S.C. section 102. To be novel, an invention must not be disclosed
in the prior art. When comparing the claimed invention to the
existing prior art to determine novelty, we determine whether a disclosure of the identical
invention has been made in writing or through another type of disclosure such as oral disclosure,
public use, or sale. However, as I pointed out before, if disclosure
occurred during the 12 month grace period prior to filing the patent application, it
may not be considered prior art and will not affect the novelty of the invention if the
disclosure was by the inventor or by others who derived their disclosure from the inventor. Now – even if disclosure of the identical
invention is not shown in the prior art, patentability requirements also state the invention must
not be obvious in view of the prior art. What is non-obviousness? Again, we are comparing the claimed invention
against the existing prior art. The question being asked for non-obviousness
is whether or not the invention would have been obvious to a person having ordinary,
or an average level of skill, in the art in the field of the invention. In addition, the patent law requires that
the assessment be “at the time the invention was made.” This requirement means that patent examiners
must be historical detectives, piecing together what was known at the time the invention was
made. The law also states that patentability will
not be denied by the manner in which the invention was made. That means that the assessment of obviousness
does not depend on whether the invention took 10,000 hours to develop through trial and
error, or was developed relatively quickly, as a result of a flash of genius! The key is whether the differences between
the claimed invention and the prior art are non-obvious, even if the invention is not
identically disclosed and considered novel. We learned earlier that a patent grants an
inventor certain rights to their invention – and for a limited time the right to exclude
others from making, using, selling, or offering for sale the invention throughout the United
States, or importing the invention into the United States. In exchange for a patent, the inventor is
required to make sure that the claimed invention is communicated (or disclosed) to the public
in a meaningful way. A patent application is required to have specific
information as to ensure that anyone skilled in the art (or technology of the invention)
is able to make and use the invention. In the disclosure, the specific information
of the manner and process of making and using the invention must be in full, clear, concise,
and exact terms so that anyone skilled in the art of the claimed invention can make
it and use it on their own. That is, the disclosure must be an enabling
and clear disclosure. More information on these requirements of
written description and enablement can be found in 35 U.S.C. section 112 and in the
MPEP. We have now reviewed many of the critical
statutory requirements that must be met to receive a patent grant in the United States. Now let’s look at how a patent application
processes through the USPTO. Patent examination is a process by which a
patent examiner reviews the contents of a patent application for compliance with U.S.
legal requirements. These are the requirements that we have talked
about earlier in the presentation. After a thorough examination of the application,
the patent examiner comes to a conclusion as to the invention’s patentability and
decides whether to grant or reject the patent application. All patent examiners at the USPTO have at
least a bachelor’s degree relative to the subject matter applications that they will
be assigned to examine, though many have graduate degrees as well. For example, USPTO patent examiners have degrees
in; engineering including electronical, mechanical, and chemical; biology and microbiology; physics;
and design examiners may have degrees in architecture, applied arts, or graphics. Every new examiner receives both on-the-job
and formal training which cover all aspects of basic and advanced examining functions
and corresponding legal concepts. And the burden lies first with the patent
examiner to prove that the claimed invention fails to comply with one or more of the patentability
requirements. The first step is to file an application for
a patent, and I want to point out one of the most important changes that the America Invents
Act made to the U.S. patent system. That is, the United States switched from being
a “first-to-invent” system to a “first- inventor- to-file” system. Changing to first inventor to file brought
the United States in line with other countries’ laws and brought more certainty to the U.S.
patent process. All patent applications filed in the United
States after March 16, 2013, are filed under the first inventor to file rules. A patent application may be filed either electronically
or in paper form. But, be aware that the America Invents Act
provides for an additional fee for filings made by non-electronic means. The USPTO has a series of informational videos
specifically on first inventor to file changes, and these videos, along with others relative
to the America Invents Act, can be found on our web site at www.uspto.gov. I have also provided the link to the web page
with AIA informational videos at the end of this presentation. Here are the requirements for a utility patent
application – it must include a written description or specification of the invention
(we talked about that requirement earlier), at least one claim, drawings if necessary
to understand the invention, an oath or declaration stating among other things that the inventor
or inventors truly came up with the invention, and for biotechnology inventions, a nucleotide
and/or amino acid sequence listing if necessary. Patent claims define the legal scope of the
patent and can be compared to the deed to a house or piece of land. Like a property deed, the claims define the
legal boundary between what constitutes a trespass of the property rights, or in the
patent world, what is an infringing or non-infringing action. When the application is received at the USPTO,
the office will conduct a formalities review of the application and will notify the applicant
of any deficiencies found. This is more of an administrative check to
ensure all patent application documents have been property filled out or included. Once the application has passed the formalities
review, is it then assigned to an examiner who will evaluate the application based on
the patentability requirements we discussed earlier. Once the application is taken up by the patent
examiner for examination, the examiner will read the patent application to gain an understanding
of the invention and the claims. Next, a search of the prior art begins. These pictures were taken in the early and
the mid-20th century showing how examiners in the U.S. Patent Office used to search for
prior art. Before computers changed how we all work,
patent searches were done by hand through stacks and stacks of granted patents and by
searching other printed materials such as books, treatises, magazines, and newspapers. Today, patent examiners have access to the
latest electronic databases and resources to search for prior art related to the technology
of an invention claimed in a patent application and can perform patent application searches
at any location that has computer access to the Internet. Once the search is completed, the examiner
will prepare a written communication called an office action indicating the examiner’s
decisions regarding compliance or non-compliance with the patentability requirements, with
supporting reasoning and evidence. If at any point in the process the patent
examiner is satisfied that the claimed invention is fully compliant with all legal requirements,
the application is allowed to be issued as a patent. If, however, the examiner determines that
one or more laws have not been complied with, the examiner will send an office action containing
a rejection or rejections to the applicant for response. The applicant must then respond to the patent
examiner’s rejections. The response can include cancellation of any
rejected claims, amendments of those claims to overcome the rejection, arguments that
the rejection does not apply, or evidence that calls into question the basis of the
rejection. If the examiner is still not convinced by
the inventor’s response that the rejection should be withdrawn, the examiner may make
the rejection final. Does an inventor have any options after receiving
a final rejection? The answer is yes. After receiving a final rejection, the inventor
has the option to appeal the examiner’s decision to the Patent Trial and Appeal Board
(or PTAB) for further review. The inventor also has the option to file a
request for continued examination (or RCE) to begin another round of examination where
the inventor can introduce some additional claim amendments or arguments. And finally, if the inventor does not respond
to the final rejection, the patent application will be abandoned and no further action will
be taken on it by the USPTO. If the claimed invention is found by the examiner
to be fully compliant with all the U.S. patent laws, the application will be allowed and
a patent will be granted. Once a patent is granted, the inventor or
patent owner has the right to exclude others from exploiting the invention. The patent grant is now an asset that can
allow the inventor time to enter and develop a market for the invention, attract investors
to risk their capital in financing the commercialization of the invention, or to license the patent
to others who seek to develop the technology. Now, this has been a very simplified version
of the patent examination process, and in the case of a real patent application, the
process could have many more steps and take many months to complete. I hope you now have a good understanding of
the basics of patents: what they are; what they protect; and what it takes to get patent
protection in the United States. For more detailed information on U.S. patent
laws and regulations, the USPTO examination process, the America Invents Act, and resources
available from the USPTO for inventors including the Patent Pro Bono Program, where free legal
assistance is available to under-resourced inventors interested in securing patent protection
for their inventions, and the Pro Se Assistance Program, where inventors who may not have
the resources to hire a patent attorney or agent can get help meeting their goals of
protecting their valuable intellectual property, please use the links shown on this slide or
visit our web site at www.uspto.gov.

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