Patent

Patent Law: An Overview

Patents grant an inventor the right to exclude others from producing or using the inventor's discovery or invention for a limited period of time. Congress enacted U.S. patent laws under its Constitutional grant of authority to protect the discoveries of inventors. See U.S. Constitution, Article I, Section 8. Title 35 of the United States Code contains the main body of law concerning patents. To receive a patent, an invention must meet the following five requirements: patentable subject matter, the utility requirement, the novelty requirement, the nonobviousness requirement, and the description requirement. See §§ 101-103 of Title 35.

Patent Requirements

The patentable subject matter criterion requires that the invention fall within the scope of inventions that Congress has designed the patent laws to protect. In § 101 of Title 35, Congress provides, "Whoever 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 therefor, subject to the conditions and requirements of this title." Because of this broad definition, the United States Supreme Court has focused on categories that do not fall within the patentable subject matter requirement. These categories include the following: 1) laws of nature; 2) natural phenomena; and 3) abstract ideas.

The utility criterion requires that the invention fall within one of four general types of inventions/discoveries: machines, human made products, compositions of matter, and processing methods. See § 101 of Title 35. Changing technology has led to an ever expanding understanding of what constitutes a human made product. Specific supplements to the Patent Act provide, in addition, for design and plant patents.

The novelty criterion requires that the invention not be known prior to the filing of the patent application. An applicant cannot make the invention known to the public through a published article or use in another's patent, and the applicant can neither patent another's invention who has not suppressed, abandoned, or concealed the patent nor patent another's invention that has been described in a patent application presented to the U.S. Patent and Trademark Office.

The nonobviousness criterion disallows a patent's issuance if the invention only differs from a previously patented invention by making obvious modifications. A modification is obvious if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains." § 103 of Title 35. In 2007 the U.S. Supreme Court took up the Federal Circuit Court's test of obviousness in KSR International Co. v. Teleflex, Inc. (04-1350). The KSR decision struck down the test of whether some "'suggestion, teaching, or motivation' would have lead a person of ordinary skil"l in the art "to combine the prior art teachings to create the patented device." The Court, however, did not provide a replacement test for the Federal Circuit to use.

Finally, the adequate description criterion requires the applicant to adequately describe the invention with enough particularity that those persons with ordinary skill in the art can make, use, and understand the invention.

The Patent Application Process

The Federal government has charged the U.S. Patent and Trademark Office with adminstering patents. See §§ 1-26 of Title 35. Parts 2 - 6 of Title 37 of the Code of Federal Regulations contain governmental regulations pertaining to Patents. Each new patent application for an alleged invention receives review by an examiner who determines whether to award the requested patent. See § 1.104 of Part 1 of Title 37 (C.F.R.). While historically the law required applicants to present a model as part of a patent application, in most cases today, the Office requires only detailed specifications. See §§ 112-114 of Title 35.

If the office rejects an application, an applicant may appeal the decision to the Patent Office's Board of Appeals with further or alternative review available from the United States Court of Appeals for the Federal Circuit or in the United States District Court for the District of Columbia. See §§ 134, 141, & 145 of Title 35.

In 1975 the Patent Cooperation Treaty was incorporated into Title 35. See §§ 351-376 of Title 35. The Patent Cooperation Treaty allows patent applicant to file a single application in one country and retain the right to have the application filed in numerous other countries for up to 30 months. The Treaty enables applicants to file world-wide patent applications at substantially reduced costs.

Rights of a Patent Owner

Prior to a recent amendment prompted by the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) accompanying the Uruguay Round GATT, patents were normally issued for a non-renewable period of seventeen years, measured from the date of issuance. See § 154 of Title 35. Under the amended provision (which took effect June 8, 1995) the term will be twenty years measured from the date of application.

A long-established doctrine of patent law, the exhaustion doctrine, entitles a patentee to a single royalty per patented device. This rule aims to prevent patentees from collecting a series of royalty payments for a single invention. The U.S. Supreme Court affirmed this rule in its United States v. Univis Lens Co. decision of 1942. 316 U.S. 241. For over 65 years this rule stood, but in 2008, the U.S. Supreme Court took a case, Quanta Computers v. LG Electronics (06-937) to consider the contemporary relevance of the doctrine. In a unanimous decision, the Court reaffirmed the doctrine, holding that the exhaustion doctrine prevents a patentee from bringing an action against a third party purchaser after having already received a royalty payment from the initial sale.

Patent Litigation

Patent infringement cases arise under Federal patent law over which the Federal courts have exclusive jurisdiction. See § 1338(a) of Title 28 of The United States Code.

In 2007 the U.S. Supreme Court in MedImmune v. Genetech (05-608) held that a patent licensee does not have to breach the terms of the contract in order to meet the actual controversy requirement and challenge the licensed patent in court.