Obtaining a Patent
Any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent,” subject to certain conditions and legal exclusions. According to the law, only the inventor may apply for a patent, with certain exceptions. The law also specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion. Therefore a complete description of the invention is required but the invention itself does not actually need to be in a physical embodiment.
In order for an invention to be patentable it must be new and non-obvious If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a valid patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.
Additionally, even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, is ordinarily not patentable.
Types of Patent Applications
An applicant may apply for a patent in three major categories: (1) Utility Patents, (2) Design Patents, and (3) Plant Patents. Utility Patents are granted to anyone who invents or discovers any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. ‘Process’ means a process or method; new industrial or technical processes may be patented. ‘Manufacture’ refers to articles which are made. ‘Composition of matter’ relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. Design Patents are granted to any person who has invented a new, original and ornamental design for an article of manufacture. The aesthetics or appearance of the article is protected. Plant Patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
A United States patent protects your invention only in the United States and its territories and possessions. Normally a license must be obtained from the Commissioner of Patents and Trademarks before you can file for a patent in another country, unless the filing in another country occurs more than six months after the filing in this country, in which case no license is necessary.
Patent Novelty Search
An applicant is not required to conduct a search for similar inventions prior to applying with the Patent and Trademark Office (PTO). However, some people find it useful in that it provides a good idea as to what the current state of their particular art is. Once an application is sent to the PTO, information not already disclosed cannot be added to the application. Therefore with the results of a patent novelty search, both the inventor and the attorney oftentimes can emphasize areas of novelty pertaining to the invention and attempt to obtain coverage accordingly. Regardless of whether a search is conducted by the inventor, the PTO in evaluating an application, conducts a search and notifies the applicant of any prior art which in their opinion renders the Applicant’s invention old or obvious. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the invention cannot be patented.
The PTO does not conduct searches for the public to determine if the invention is patentable except as noted above when acting on an application.
Provisional Patent Applications
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. The corresponding non-provisional application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a “reference” as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term.
The later-filed non-provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention. Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. There is no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. A provisional patent application also allows the term “Patent Pending” to be applied in connection with the description of the invention.
The terms “patent pending” and “patent applied for” are used by a manufacturer or seller of an article to inform the public that an application for a patent on that article is on file. These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.
A patentee who makes or sells patented articles, or a person who does so for or under the patentee, is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. Likewise, the marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty.