Intellectual Property Primer

What is a patent?
What can be patented?
Requirements for patentability
Types of patents
Who can apply for a patent?
The application process
Patent costs
Preserving patent rights

 

What is a patent?

A patent prevents others from making, using, or selling the individual's invention throughout the country in which the patent was issued for a fixed period of time. The term patent means "to lay open," and the purpose of a patent is to open or expose novel advances in technology for the common good.

Although it excludes others from making, using, or selling the invention, the patent does not give the patentee the right to make, use, or sell the invention either. The patentee may have to comply with other laws or acquire a license from the owner of a broader, dominating patent.

A U.S. patent has a limited term of 20 years from date of filing for patents filed after 1995. Patents filed before 1995 have a life of 17 years from date of issuance. Under certain circumstances, patent term extensions or adjustments may be available. More information can be found here.

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  What can be patented?

A new invention must meet the requirements for patentability and fall within the scope of statutory patentable classes. The statutory classes, which have been expanded to include life forms resulting from genetic engineering, are:

  1. Processes
  2. Machines
  3. Articles of manufacture
  4. Compositions of matter
  5. Any improvements of the above

Things that cannot be patented in the United States include, but are not limited to:

  • Ideas
  • Suggestions
  • Theories
  • Plans of action
  • Literary, dramatic, musical, and artistic works
  • Laws of nature
  • Things immoral or injurious to health and the good of society

     

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Requirements for patentability

In order for an invention to be patentable, it must be novel, non-obvious, and useful. Patent law states that an invention cannot be patented if: "(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant of the patent," or "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States." (35 USC Section 102).

An invention is deemed non-obvious if the claimed invention would not be obvious to someone else with ordinary skill in the technical field of the invention. An invention is deemed useful if, at the time of filing, it has an identifiable benefit that is specific, substantial, and practical.

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Types of patents

There are three types of patents:

  1. Utility patents
  2. Design patents
  3. Plant patents

1. Utility patents are for inventors of a new and useful process, machine, article of manufacture, or composition of matter, or an improvement thereof.

2. Design patents are for inventors of new, original, and ornamental design for an article of manufacture.

3. Plant patents are for inventors of any distinct and new variety of plant that is asexually reproduced.

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Who can apply for a patent?

According to the law, only the inventor may apply for a patent, with some exceptions. If the inventor makes the invention as part of an employment contract, the employer may have the right to the patent. If the inventor has passed away, legal representatives or the administrator of the estate may apply. If the inventor is insane, the application for patent may be made by a guardian. If there are two or more inventors, they should apply for a patent as joint inventors.

A person who makes financial contributions only does not qualify as an inventor. It is possible to correct an innocent mistake of omitting an inventor or of mistakenly naming a person as an inventor.

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The application process

To obtain a U.S. patent, a patent application must be filed with the U.S. Patent and Trademark Office (USPTO). There are two types of patent applications: provisional and non-provisional. A non-provisional application is a full application that includes a specification, claims, an oath or declaration, and drawings (if needed). A provisional application includes a specification and drawings (if needed) but does not require a formal claim, the inventor's oath/declaration, or any showing of "prior art." A provisional application provides the means to establish an early effective filing date and allows the invention to show as "Patent Pending." More information about provisional applications can be found here.

Specification

The specification must include a written description of the invention, disclosure of how to make and use the invention, and the best method of carrying out the invention.

Claims

The specification ends with a claim or claims that point out and distinctly claim the subject matter which the applicant regards as the invention. The wording of the claims is extremely important, as it/they define the scope of the protection provided by the patent.

Inventor's oath or declaration

The inventor must make and sign an oath or declaration that she/he believes herself/himself to be the first and original inventor of the invention.

Drawings

Drawings must be filed if they are necessary to understand the invention.

More information on the patenting application process can be found here.

A diagram of the patenting process can be found here.

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Patent costs

Patent applications are subject to a basic fee and additional fees for searching, examination, issuing, and maintenance. These fees are due at the time of filing the application. The current fees can be found here.

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Preserving patent rights

Patents vs. Publications

A "publication" may be: putting thesis in a library, a poster at a conference, PowerPoint slides handed out, etc. It is not necessarily a publication in the academic sense. Both patents and publications are ways to distribute results of research. However, a patent describes the invention in return for a limited period during which others can be excluded from using the information. Inventors must be careful in premature disclosure of an invention in a publication, which makes it public knowledge, in order to avoid losing the right to obtain a patent.

What constitutes a disclosure?

To be a disclosure, the publication must describe the invention in sufficient detail that it could be duplicated or put into use. Describing results alone are not enabling without the underlying description of how the results were accomplished. Inventors should seek advice and carefully consider the timing and ramifications of publication.

International Rights

The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. Almost every country has its own patent law, so a person desiring a patent in a particular country must make an application for patent in that country in accordance with its particular laws. However, for any invention made in the United States, the Director of the USPTO must issue a license before applicants can apply for a patent in a foreign country.

Applicants are advised to:

  • Seek guidance from those specific foreign countries to ensure that patent rights are not lost prematurely.
  • Consider filing an international application under the Patent Cooperation Treaty (PCT). More information can be found here.
  • Consult the USPTO guide on Treaties and Foreign Patents, which can be found here.

Maintaining a Laboratory Notebook

U.S. patent law states that inventorship is determined by the first to invent, not the first to file. (Foreign patent offices determine inventorship by the first to file method.) Your lab notebook is the key piece of evidence in helping to make that determination, especially in the case of identification. This means that an appropriately maintained laboratory notebook can mean the difference between gaining recognition for a discovery or not.

Another investigator should be able to replicate the invention by looking over your entries. The notebook should allow one to determine the nature of the project, when it commenced, what ideas were considered during the project, the compounds made or circuits and equipment actually built and tested, the results of the tests, the dates for each of the above, and the final conclusions.

The following tips may be helpful to avoid the more common mistakes in properly maintaining a lab notebook:

  • Use a standard lab notebook that has permanent pages.
  • Use only one notebook per project, regardless of the number of investigators.
  • Write legibly.
  • Use permanent ink.
  • Date and initial entries.
  • Use consecutive pages.
  • Use brief headings.
  • Identify subject matter.
  • Avoid erasures; cross out any errors.
  • Never tear or cut out pages.
  • Make new entries, do not alter existing entries.
  • Have entries witnessed on a daily or weekly basis (not by a coworker or co-inventor).
  • Include and explain sketches, diagrams, etc.
  • Photos, drawings, etc. should be identified, credited and attached.
  • Make notations of the progress and completion of compounds, assemblies, or models being prepared for testing. Relate these entries to previous sketches or entries that explain how the compound or equipment is being made.
  • Make notations of testing of compounds, identifying the compound or equipment, and commenting on the results of the test. Give tabulated test data, if available. Avoid unnecessary derogatory remarks about tests.
  • Keep in a safe place when not in use.

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