What is a patent (US Patent Law)?

Conceptually: An incentive for invention!

Legally: An Exclusionary Right, a patent is a grant to the patent holder by the USPTO of the right to exclude others from making, using, selling, or importing a product in the US that uses the patented invention for a limited period of time.

  • An intangible asset that can be bought, sold, or licensed
  • Time limited (20 years from file date)
  • Scope Limited (Claims)
  • Publication (Disclosure to the public)

For an invention to be patentable for utility:

  • 35 U.S.C. Section 101 states that "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject  to the conditions and requirements of this title".
  • Utility (Useful): The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness or industrial applicability.
  • Novelty (New): An invention is "novel" if nothing identical previously existed to your patent application filing (Prior Art is very critical to you obtaining a patent for your invention).
  • Nonobvious: This determination is made by deciding whether the invention sought to be patented would have been obvious "to one of ordinary skill in the art" based upon multiple forms of Prior Art.

NOTE: A United States Supreme Court decision in the case Diamond v. Chakrabarty  ruled that a live, human-made micro-organism is considered patentable subject matter under 35 U.S.C. Section 101 falling under the categories of "manufacture" or "composition of matter".

What cannot be patented:

  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (Copyright)
  • Inventions which are considered not useful or possible by the USPTO, for example, Perpetual motion machines, or offensive to public morality.

Patenting software has been an ongoing discussion and debate with the US courts, and various court cases have changed the interpretation of what can be patentable.  While copyright law covers the program code itself, a patent is possible for the underlying algorithm/process.  It's always best to have a well-qualified patent attorney review whether it would be worthwhile to file on the software algorithm.  Expenses can accumulate to high levels trying to get a patent examiner to agree on claims for a software algorithm. 

Types of Patents:

  • Utility Patents cover "Inventions" for principal categories of things that may be patented: a machine, an article of manufacture, a process/method of doing something, composition of matter (drug molecule, polymer) or the method of its use, products of genetic engineering, or improvements to any of these things.
  • Plant Patents may be granted to anyone who invents or discovers, and asexually reproduces, a new variety of certain kinds of plants.
  • Design Patents cover the ornamental appearance of a useful device but not its function.

Utility patents are the most common type of intellectual property the Office of Technology Transfer deals with at the university. The utility patent protects most of the tangible inventions faculty researchers create while performing research in their labs. New discoveries can happen when performing research in the lab. Many activities take place during a research project, and a question we often get from faculty or students is: “I am an author on a paper, why am I not an inventor?”

Inventors are legally determined if they contributed to the original conception and workability of an invention, thus you must have inventive contribution to any one part of a claim in an issued patent. The claims of a patent describe the scope of the invention, or the legal metes and bounds for the protected invention. Inventorship is NOT warranted for any inventions that are not claimed in an issued patent. Performing simple tests or experiments does not constitute inventorship on an invention, but if during those experiments a new discovery is created, then it’s possible that the person would be considered an inventor.

Another important point on your invention is the reduction-to-practice. Many inventions are conceptual ideas, but if you have built a prototype or created a lab benchtop mechanism, you have reduced that invention to practice. Patent application usually require a description of how the invention will look or work. Any version of the invention is considered an embodiment of the invention. You could have multiple embodiments, but it is a requirement in patent law to describe the "best mode" or best working embodiment of the invention. Patent applications require a reduction-to-practice, which may or may not be a constructive reduction-to-practice, but required for the fact that the patent should contain the specifications for someone skilled in the art to pick up the patent and be able to reproduce the invention.

Public disclosure of your Invention

Last but not least is disclosing an idea to the public before filing a patent application.  A public disclosure can be in the form of a written published journal article, verbal presentation at a conference, poster presentation, or discussions with a 3rd party entity.  Public disclosure can seriously diminish the value and completely prohibit the ability for patent protection.  Most countries around the world view public disclosure of an invention as an absolute bar to getting an issued patent, with the exceptions of a few countries like the United States and Japan which have a 1-year grace period for filing a patent application after a public disclosure has occurred.  This means that in the United States, a US patent is possible if the application is filed within that 1-year period of the public disclosure.  

Before publishing, always remember to disclose your idea to the Office of Technology Transfer (OTT) by submitting an invention disclosure.  We can file a provisional patent application the same day in order to protect your idea.