Understanding Patent Law

There are three types of patents – design, utility and plant. Design patents are granted for new and original items that can be manufactured.  Utility patents are granted for new and useful processes, machines, manufactured product, and composition of matters or improvements on established processes, machines, products or compositions. Plant patents can be granted for discoveries of new plant species as well as those plants that are manipulated to reproduce a new variety.

Patent Law

The Constitution of the United States gives Congress the power to enact laws relating to patents, (Article I, section 8). Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. Since that time, patent law has been revised to reflect the changing times, however, the basic ideology remains the same. The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law also established the United States Patent and Trademark Office as the administrative body in granting patents and other related patent issues.

 What Can Be Patented

Patent law specifies what types of things, or subject matter, can be patented and the conditions that must be met to obtain a patent. These are outlined in Article 1, section 8, USC 35, statutes 101-103.)

Statute 101

In the language of the statute, any person who “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,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be “useful.” The term “useful” refers to the condition that the subject matter has a purpose and is also operable. In other words, a machine that does not operate to perform the intended purpose would not be useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

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 of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Statute 102 - Novelty

In order for an invention to be patentable it must be new as defined in the patent law, which provides 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 for 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 . . .”

If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.

Statute 103 - Non-Obviousness

Even if the subject matter sought to be patented is not exactly shown by prior art, and even if it has one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences are 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 substitutions of one color for another, or changes in size, are ordinarily not patentable.