Module 1: Patent Basics

A patent is a form of intellectual property that applies to inventions.  Patents are issued by the United States Patent and Trademark Office, and they provide the owner with the right to exclude others from making, using, selling or offering to sell the inventions described in the patent.  Depending on the type of patent, this right to exclude lasts for 15-20 years. 

There are three types of patents: utility patents, design patents and plant patents. Utility patents cover inventions or discoveries of new and useful processes, machines or compositions of matter. Utility patents protect the way an article of manufacture is used and works.  Design patents cover the ornamental design for an article of manufacture, and they protect the way the article looks.  Plant patents are granted for the invention and asexual reproduction of any new and distinct variety of plant.

Forms of Intellectual Property

Patents, trademarks, copyrights and trade secrets are all forms of intellectual property.  Unlike real property or goods, intellectual property is intangible.  However, intellectual property is often distributed in a tangible form, such as a DVD that contains a copyrighted movie, or a mobile phone that is covered by both utility and design patents. An understanding of the other three types of intellectual property is therefore necessary to properly apply patent law.

A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others.[1] Trademarks typically signify a brand name, such as Google, Apple, Heineken or Gatorade.  Trademarks also cover logos, such as Target’s bullseye logo or McDonald’s golden arches. In addition, trademarks can cover sounds, such as MGM’s roaring lion, and colors, such as “Tiffany blue.”

Trademarks provide owners with the right to exclusive use of their marks in commerce, which allows for brand recognition.  If someone else attempts to use the same mark, or a “confusingly similar" mark, then the trademark owner can sue to stop the infringement.  Unlike patents, common law trademark rights attach the first time the mark is used in commerce, and it is not absolutely necessary to register a trademark with the Patent and Trademark Office.  However, registration makes trademark enforcement much easier.  Trademarks can last indefinitely if proper maintenance procedures are followed.

Many states also allow for registration of trademarks at the state level, but such registrations provide only limited protections as compared with federal registration.

Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression.[2]  Copyrights protect original works of authorship, including literary, dramatic, musical and artistic works, such as poetry, novels, movies, songs, computer software and architecture.  However, copyrights do not protect facts, ideas, systems or methods of operation.

Copyright protection attaches the moment an original work is created and fixed in a tangible medium, such as on paper or in an audio recording. Thus, like common law trademarks, copyrights do not need to be federally registered.  However, registration provides certain important benefits, including the right to sue infringers.

Copyrights last until 70 years after the death of the author. If the work is created under a “work for hire” arrangement or anonymously, the copyright lasts 95 years from first publication of the work, or 120 years from the date of the work’s creation, whichever is shorter.[3]

A trade secret is “financial, business, scientific, technical, economic or engineering information”[4] that has been made confidential due to its independent economic value. Since the Defend Trade Secrets Act came into effect in 2016[5], trade secret owners can sue for misappropriation in federal court.

Famous trade secrets include the formula for WD-40 and the Google search engine algorithm.  To own a protectable trade secret, the company must take reasonable efforts to conceal the information from the public.  In addition, the trade secret must have economic value and it must contain information.  Trade secret protection ends when and if the information becomes public knowledge.

Types of Patents

Utility patents are the most common type of patents.  They protect new and useful processes, machines, articles of manufacture or compositions of matter.  Utility patents also protect any new and useful improvement of any of these categories.  For example, Thomas Edison received a utility patent for an incandescent light bulb in 1880.  Since that time, thousands of other patents have been issued covering improvements to the light bulb.

The first utility patent was issued in 1790, covering the process of making potash, an ingredient used in fertilizer.  Since then, the United States Patent and Trademark Office has issued over 10 million utility patents.[6]  IBM has been the leading patent recipient for 26 straight years, and it now owns over 110,000 patents.  Other technology companies, including Samsung, Apple, Intel and Qualcomm typically are among the top 10 recipients each year.

To obtain a utility patent, an attorney or patent agent files a patent application with the Patent Office.  The attorney or patent agent must be a member of the Patent Bar, which requires passing a highly specialized exam.  The application is assigned to a patent examiner, who often rejects the initial application, requiring modifications to the application.  This process - known as patent prosecution - can take months or years before a patent finally issues.

An issued patent includes a front page that lists the patent number, issue date, patent title, inventors, assignee, related patents and applications, an abstract of the patent and typically a figure exemplifying one of the patented inventions.  The patent also includes several other numbered figures. In addition, the patent includes a written description detailing the invention in clear, full, concise and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the invention or process.[7]  

Finally, the patent concludes with one or more claims that particularly point out and claim the subject matter that the inventor regards as the invention. The claims define the scope of the protection of the patent.  Whether a patent will be granted is determined, in large measure, by the scope of the claims.[8]  Each claim technically covers a different -- although usually related -- invention.        

Design patents cover the unique visual ornamental characteristics of an article of manufacture.  Design patents can be obtained for any unique article of manufacture, as long as the design for that article is not dictated primarily by the function of the article.  For example, a basic screw would not be entitled to design patent protection, because its design is dictated primarily by its function.  On the other hand, a screw-in light bulb with various ornamental features could be entitled to design patent protection.  The Patent Office has issued over 800,000 design patents.

Like utility patents, design patent applications must be filed by members of the Patent Bar, and they are reviewed by patent examiners at the Patent Office.  Design patents include many of the same aspects as a utility patent, including similar front pages and figures. However, design patents do not include detailed written descriptions or written claims.  The scope of a design patent is dictated solely by the figures in the patent.  

Although plant patents[9] are important to some people and businesses, they constitute an extremely small subset of all issued patents.  Plant patents are granted to people who invent or discover distinct and new varieties of plant, and who are able to asexually reproduce the plant.  Thus, plant patents do not apply to plants that reproduce by seeds. Rather, utility patents apply to seeds, including those that support the “genetically modified organism” industry.  In addition, plant patents are not issued for tuber propagated plants or plants found in uncultivated states.  Two common examples of plant patents include apple trees and rose bushes derived by cutting pieces of the stems.

Patentability Requirements

Congress and the Patent Office have created a number of requirements for obtaining patent protection.  Let’s discuss several of the most important requirements.

The first is inventorship.[10] Every patent application must list all of the inventors and only those inventors. Each listed inventor must make a significant contribution to one or more claims of the patent.  The Patent Office typically requires corroborating evidence of inventorship, such as a detailed laboratory notebook or other documentation. A patent application can be denied for improper inventorship designations.  In addition, issued patents can be invalidated for improper inventorship, although inventorship can be corrected after issuance.

The second requirement is subject matter eligibility.[11] Utility patents only pertain to certain categories of inventions; namely, only processes, machines, manufactures, compositions of matter or improvements of any of these categories.  For many years, courts read these categories so broadly that almost anything new and useful could be patented.  This all changed when the Supreme Court issued its Alice Corp. v. CLS Bank decision in 2014.[12] 

In that case, the Supreme Court significantly limited the scope of patent protection for certain abstract concepts, including many computer software-related ideas.  The case addressed patent claims covering a computerized trading platform handling financial transactions in which a third party settles obligations between two others so as to eliminate settlement risk.[13]  The Court ruled that this was an abstract concept, and that the patent claims did no more than require a generic computer to implement the abstract concept. This was insufficient to transform the abstract concept into a patent-eligible invention.

The Court employed a two-step analysis from an earlier case, Mayo v. Prometheus.[14]  First, does the patent claim cover an abstract idea, such as an algorithm, method of computation or other general principle?  If so, then does the patent claim add something extra that embodies an inventive concept?  Merely requiring computer implementation does not transform an abstract idea, such as computer software, into a patent-eligible invention.

The Patent Office and lower courts struggled to consistently apply the Alice holding. The Patent Office rejected thousands of claims based on Alice, and federal courts and the Patent Trial and Appeal Board invalidated hundreds of patents.  However, several other patents claiming abstract concepts were issued or upheld.  For that reason, in 2019 the Patent Office issued some guidance for practitioners and courts, most likely opening the door to patentability for some computer software and other abstract concepts.

The Patent Office synthesized key concepts from various decisions over the years since the Alice decision, grouping abstract ideas into three primary categories:  mathematical concepts, methods of organizing human activity and mental processes.[15]  Methods of organizing human activity include fundamental economic principles or practices, commercial or legal interactions and managing personal behavior, relationships or interactions between people. Mental processes include concepts performed in the human mind, including an observation, evaluation, judgment and opinion.

The Patent Office indicated that all of these abstract ideas could still be patentable if the claim recites additional elements that create a practical application of the abstract concept.[16] For example, patentable claims could include those that reflect an improvement in the functioning of a computer, an improvement to other technology or technical field or that use a particular machine that is integral to the claim.

Based on this guidance, numerous software claims are patent eligible.  For example, IBM obtained a patent on claims covering a method of automated partitioning of transportation routing problems.  Microsoft patented different analytics data systems used to analyze data and produce reports for a user to view, and another inventor patented a method of surfing the Internet.

The Patent Elements

To be patentable, three elements are required of any invention: usefulness (for utility and plant patents, but not for design patents), novelty and non-obviousness.

Not surprisingly, utility patent applications must claim useful inventions to obtain patent protection.[17]  This presents a very low bar, and patent claims are rarely rejected on the basis of utility.  An invention is "useful" if it provides some identifiable benefit and is capable of use.[18]  Only a small degree of utility is required.  Regardless, this doctrine has been used to exclude some inoperative inventions and hypothetical designs, such as perpetual motion machines.[19]

Also, and not surprisingly, all patent applications must claim new, or “novel,” inventions.[20]  A patent claim which is not novel is said to be “anticipated” by the “prior art.”  A claim is anticipated (and thus not eligible for protection) if every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.[21]  The prior art must show the identical invention in as complete detail as contained in the patent claim.[22] 

Prior art encompasses all publicly available information anywhere in the world that existed prior to the filing date of the patent application.  Thus, prior art includes articles of manufacture shown in patents, patent applications, published research papers, other written publications, treatises, books and advertisements.  Prior art also includes articles of manufacture that were in public use, on sale or otherwise available to the public. 

Patent law does provide important exceptions to these categories of prior art.  For example, disclosures made within a year of filing are considered not prior art if the disclosure was made by the inventor or by someone who obtained the subject matter from the inventor.[23]  Thus, inventors effectively have a one-year grace period. They can wait up to one year from initial disclosure before filing their applications.  In addition, patent applications by the same inventors, or based on information obtained from those inventors, do not constitute prior art.[24]

Even if a patent claim is not identical to the prior art the claim can still be rejected if the differences between the claimed invention and some prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention. Obviousness is measured by a person having ordinary skill in the art to which the claimed invention pertains.[25] Typically, two or more prior art references are combined to reach an obviousness determination, and there must be some motivation or reason that would cause a person of skill in the art to combine the references to create the patented invention. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”[26]

Patent Examiners must also weigh other evidence relevant to the issue of obviousness, sometimes referred to as secondary considerations of nonobviousness.[27]  These secondary considerations include evidence of commercial success, evidence that the invention addressed long-felt but unsolved needs, past failures of others to solve the problem and unexpected results produced by the invention.

In our next module, we’ll turn to the patent application process, including discussion of the role of the patent attorney and patent searches, applications and maintenance.