Saturday, March 06, 2010

Patent Basics I

(This is the first in a series of posts that are going to focus on the basics of Patent law. I recently completed a similar series on Trademark law, and will cover Copyright and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at

“You ought to patent that idea!”

We've all heard that dozens of times before, but perhaps never thought about what it really meant. Today's post will cover the basics about patents; what they are and what they do. Future posts will cover the patent application process, and what you can do with your patent once you have it.

The Patent Grant

A patent is a license granted by the government. In the case of the United States, the Constitution gives the government the power to grant patents; specifically, “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” So a patent gives the patent owner the exclusive right to practice the patented invention for a limited period of time.

Part and parcel of that “exclusive Right,” of course, is the right to exclude others from practicing the patented invention for the duration of the patent. Similarly, the patent owner has the right to permit others to use the invention – that's typically known as a patent license.

What Can be Patented?

There are two main categories of patents: Utility and Design. This post will focus on Utility Patents, and a later post will cover Design Patents.

What the Patent Statute Allows

While there is a continuing debate about the outer limits of what can be patented, there are some basic guidelines that apply to the vast majority of the situations that most of us will encounter. The first issue is whether the invention falls within the categories of things that the law allows to be patented. These include a “process, machine, manufacture, or composition of matter.” A “process” is like a formula, or a set of instructions for making or doing something. It is the category is the one that is used to identify so-called “business method” patents, which is one type of idea that many people argue should not be patentable.

A “machine” is, well, a machine. A “manufacture” is something that is made, but it can cover a lot of other things as well. And a “composition of matter” can be a chemical, a biological invention, or a new material.

Something Useful

A patentable invention is one that is “useful.” It accomplishes some meaningful task or achieves a meaningful result. That may be plowing a field, pinning a broken bone together, changing the chemical makeup of a fluid, or making a decision about how best to invest a sum of money. This separates a patentable idea from a creative idea. Writings, works of art, musical compositions, and the like are typically not considered to be patentable, but can often be protected by copyright. (Copyright will be covered in future posts.)

Something Novel

A patentable invention is “novel,” or new. It is one that no one has invented before. In the United States, that means that the person who first conceives of the invention and “reduces it to practice” – makes it work – will be entitled to a patent for that invention. In other countries, the first person who files the application for the patent for an invention gets the patent. While the US may move to that system in the future, for now it remains a “first to invent” country rather than a “first to file” country.

Something Not Obvious

A patentable invention is not “obvious.” It is one that someone who is familiar with the subject matter wouldn't consider to be an obvious combination of existing inventions. (The actual standard is “one of ordinary skill in the art,” meaning that this hypothetical person has to have some skill in the particular technical field of the invention.) As you can imagine, this is one area where people often have differing views. One person may believe that adding an on/off switch to an extension cord is an idea that should be patentable, while another could consider that to be an obvious combination of two existing inventions: the extension cord and the on/off switch.

Next up . . .

In future posts, we'll dive more deeply into the patent process. The next post will discuss how not to lose your patent rights even before you acquire them.

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