Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

WHAT CAN BE PATENTED

The patent statutes (35 U.S.C. 101) specify four classes of subject matter suitable for the grant of a patent. To be patentable, an invention must be directed to a:

• process
• machine
• manufacture, or
• composition of matter

Often a close look at the creative efforts that led to one patentable invention, will disclose related inventions that may fall within one or more of the other statutory classes of invention. For example, the invention of a new composition of matter, such as a chemical compound, may also involve the invention of a process for making the compound.

Since the compound is probably intended for a specific use, there may at the same time be patentable inventions directed to the

1. use of the compound in a process, or
2. as a material for an article of manufacture.

In addition to falling within one or more of the statutory classes, a patentable invention must meet three requirements, it must be:

• novel, (35 U.S.C. 102)
• useful (35 U.S.C. 101), and
• non-obvious (35 U.S.C. 103).

Novel

In general this means that the invention must not have been known or used by anyone in the U.S. or published or patented anywhere in the world before being invented by the person applying for a patent. Also, it must not have been published or patented anywhere in the world, or in use or on sale in the U.S. more than one year prior to the date of application for a patent.

Useful

The invention must have some identified use. The use may be very limited (this is often the case in the very early stages of development of an invention), but it must be present.

Non-obvious

When viewed against the prior art (i.e. public knowledge, prior publications, etc.) The invention must be non-obvious to a person of ordinary skill in the field to which the invention pertains. (Obviousness is a very subjective factor and is a common source of disagreement between patent applicants and patent examiners.)

THE PATENT APPLICATION

Basic to the philosophy of patents is that, in return for the patent, the inventor must fully disclose the invention. In so doing, the disclosure becomes a part of the technical literature and “promote(s) the progress of...the useful arts" as required by the Constitution (Article I. Section 8).

The full disclosure of the invention insures that the public will have possession of the invention and how to make and use it after the patent expires.

The descriptive portion of the patent application (and of the subsequently issued patent) is called the “specification”. It is a description that is required by statute (35 U.S.C. 112) to be written in sufficient detail to enable those skilled in the art to which it pertains to make and use the invention.

For example, a specification of a patent (or a patent application) on a chemical invention should be sufficiently clear and detailed to enable an ordinary chemist working in the same subject area to make and use the invention.

Patents directed to mechanical inventions will commonly include drawings. Patents directed to chemical inventions will commonly include working examples which may be written in a “cookbook” style to guide other chemists in the practice of the invention. The specification concludes with one or more “claims”. The claims are statements that define the metes and bounds of the invention.

THE PATENTABILITY SEARCH

The patentability of an invention is measured against what others have done before. A patentability search is simply an attempt to find out what has been done before so that the best decision can be made regarding whether or not to file a patent application.

Referred to by various names -- novelty search, pre-examination search (or “pre-ex search”) or simply prior art search, it involves searching the literature to uncover any publications that might affect patentability of the invention. Patentability searches are often limited to searching the patent files. However, a thorough search should also include the non-patent technical literature in the field of the invention.

If the search shows that the invention is not new, or is obvious from the prior art, it may save the time and expense of preparing and filing a patent application. Even if the invention appears patentable over the prior art, the search may uncover references that will serve as a guide in the drafting of a patent application and help to determine the scope of patent protection possible.

PATENT PENDING

When the patent application is filed in the U.S. Patent and Trademark Office, the filing date is recorded and the application is assigned a serial number (sometimes referred to as an application number). The serial number and filing date are important in the identification of the application, and may be useful in relating that application (or the subsequently issued patent) to other related U.S. patents or equivalent foreign patents or applications.

The application is then sent to an Examining Division where it is assigned to a patent examiner who has expertise in the technical field of the invention. The examiner will study the application, make a literature search (i.e., a “prior art” search), and issue an “Office Action” rejecting or allowing the application. In most instances, the first office action will be a rejection, which may be based on formalities or on the Examiner’s opinion that the same invention is shown in the prior art, or obvious from the prior art.

The applicant may then respond by amending the claims to overcome the examiner’s rejection. The application will then be reconsidered and a second office action will be issued. Commonly, the second action will be a “final” action from the examiner, i.e., an allowance or a final rejection.

On receiving a final rejection, the applicant has the right to appeal that rejection to the Patent Office’s own Board of Appeals and Interferences who will consider the arguments and render a written opinion affirming or reversing the examiner’s rejection.

The “patent pending” process, from filing to issue of a patent, requires an average time of approximately eighteen months -- if the process goes smoothly. If there are problems, such as the need to appeal, the process may take considerably longer.

THE PATENT TERM

The term of a U.S. patent begins on the date of issue and ends 20 years from the date on which the application was filed (subject to the payment of maintenance fees). During that time the patentee has the right to exclude others from making, using, or selling the invention in the United States.

Related post:

Patent Fundamentals (Part 1)

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What's taking the Supreme Court so long to hand down an opinion on the Bilski vs Kappos case? Bilski was argued on Nov. 9, 2009... 225 days ago. There has been much speculation that the decision will be published when the Supreme Court next releases its opinions on Thursday (June 24, 2010) or next Monday.

Dennis Crouch's Patently-O blog posts a nice chart of Joseph Miller, a professor at Lewis & Clark Law School, which shows the length of time it took the Supreme Court to render decisions on 20 other patent cases. The range was between 35 and 153 days. Dennis Crouch concludes:

"If you feel like you've been waiting a long time to see the Bilski opinion, it's because you have been waiting a longer time than usual."

My first thought was how can you compare Bilski, a case that's going to have long reaching consequences to many existing patents and software companies futures, with any other patent case? Wouldn't you expect it to be longer than the rest?

But a quick glance at the list and I saw a couple of the seminal cases in patent law history and a big one is right there at 140 days- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a case that was pending for almost twenty years and a case the Supreme Court looked at twice regarding the scope of prosecution history estoppel under the doctrine of equivalents.

The questions presented to the supreme Court in Bilski were:

1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."
2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

The Bilski decision may affect whether any business method, software, e-commerce and/or medical diagnostic technology is patentable. It will be interesting to see what and when they decide this case. Stay tuned for my next post on the Bilski decision.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos Decision

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

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What is patentable subject matter? Many people believe that they can patent anything. But the truth is there is only certain statutorily allowable subject matter that can be patented (35 USC 101).

Here's a list of the basic allowable subject matter:

1. Process (Method of making infrared heaters which reduces costs by 25%) 
2. Machine (Motorized device for clearing leaves out of a gutter without climbing)
3. Article of manufacture (Pencil, chair)
4. Composition of matter (Paint, drugs)
5. Or any new and useful improvement thereof (Chair with a footrest)

If your invention falls into one of the above categories it must also be:

• New (no one has ever done it before) 35 USC 102
• Useful (it can't be something that has no use whatsoever) and
• Non-obvious 35 USC 103 (It must be non-obvious to one having ordinary skill in the pertinent art at the time the invention was made)

It doesn't take much to show that your idea is new because the slightest change will cause it to be original. And useful isn't really much of an obstacle, almost everything has some sort of use. There is a joke among chemical patent attorneys, "Any chemical composition has a use, it either kills grass or helps it grow!"

The hard thing to understand and to teach is what is non-obvious! I sometimes use the example of the invention of a table to get this idea across.

Let's pretend you were around 10,000 years ago and you were the first person to invent a table. Your table has a square top, a bottom and four legs.

Now someone makes an improvement on the table and tries to get a patent. The improvement is that the top is circular in shape instead of a square. The argument by the patent office may be someone skilled in the art (a carpenter) would think it obvious that the top could be made in any shape or dimension and a round top would be rejected as an obvious improvement.

Even though the improvement of the first ever circular top is new, and it is useful it would be arguably not patentable if it was determined that it would be an obvious improvement for a carpenter to make a table top in any shape.

Now let's take a different approach. Let's say that the new inventor was the first to invent a table with pedestal legs connected to the center of the bottom. It could be argued that this way to connect the legs to the top is a non-obvious improvement and would be potentially patentable in the prehistoric patent office.

But obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. 

So if there was a chair in the prior art with a with similar legs like the pedestal legs of the invention table the examiner might combine the references of the square table with the chair and say it was obvious to come up with the new table.

I am not trying to replace the many legal treaties and case law on this the question of obviousness, not to mention the Manual of Patent Examining Procedure (MPEP) where there are many examples of what is non-obvious. I hope the simple logic of the table scenario is an easy way to generally grasp this concept.

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