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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Recently I authored a blog post regarding whether or not you can patent an idea? Remember you can get a patent for the" thing" you make not the idea.

In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

I used the example of the “idea” for the transporter in the Star Trek television series as an idea that can only be patented if someone could make it.

What about the "Back to the Future" movie where Michael J. Fox has automatic clothes and automatic sneaker laces.

Well, I found this cool video on YouTube and the actual patent application (.PDF) by Nike. Take a look. What do you think?

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Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

In 1966 Eugene Wesley "Gene" Roddenberry came up with the “idea” for the transporter. In the Star Trek television series Captain Kirk would use his communication device (which looked a lot like the cell phones of today) from a planet’s surface to order his engineer to “beam me up Scotty.”

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)." 

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?"  I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert  is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot  get a patent on the idea alone. 

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What Inventors Need to Know...

Inventors often ask me “can I get a provisional patent?” But there is no such thing as a “Provisional patent.” A provisional patent application is a patent application that is used by a patent applicant to secure a filing date. A provisional patent application never matures into a patent. And there is no patent protection until a non-provisional application is allowed and issued as a patent. In order to maintain the filing date, a non-provisional patent application must be filed within the 12 month period starting from the filing date of the provisional patent application.

One of the most important things that an inventor should be aware of is that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed non-provisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.

The bottom line is if new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

Independent inventors and startups focus too much on the "costs less" part while missing the bigger picture. People think that a provisional application can be quickly filed because the rules don't require all the formalities of a non-provisional application. While this may be true, if the disclosure of the invention is not the same in the provisional application as it is in the later filed non-provisional, the filing date will be lost.

The rule for DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION is:

(D) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

An inventor can still file a non-provisional application that claims priority to any provisional application, but with a weak provisional as the foundation there will likely have to be plenty of new matter added to the non-provisional application. Adding, subtracting, modifying parts, or changing the structure or operation of the parts would all qualify as not fully supported changes. An inventor will not be able to rely on the filing date of a weak provisional patent application for these new disclosures.

I believe that a strong provisional application should be prepared so as to look and feel exactly like non-provisional application so that the only thing a patent practitioner needs to add are the claims. If the non-provisional patent application is filed with the same disclosure as the provisional patent application the filing date is preserved. This will become even more important if the Patent Reform Act of 2010 is ratified and the first inventor to file system is enacted.

Here are a few basic points regarding a provisional patent application:

• Provisional applications provide an early effective filing date and a one-year extension as to the filing of a U.S. non-provisional patent application (35 U.S.C. 119; Benefit of earlier filing date; right of priority)
• In order to retain the priority benefit of the provisional patent application, a regular U.S. patent application and any foreign counterpart applications must be filed within one year of the provisional patent application and must claim priority based on the provisional patent application or the provisional patent application will become abandoned
• The foreign patent application may include national, regional (e.g., European), or Patent Cooperation Treaty (PCT) patent applications
• Provisional applications can be filed without any formal patent claims, oath or declaration, or any information disclosure (prior art) statement
• Provisional applications have a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent
• The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

The USPTO recently posted an article in the InventorsEye April Newsletter answering basic questions about a provisional patent application. The newsletter also provides a checklist of some facts the USPTO deems important:

1.  A provisional patent application expires after one year;
2.  A provisional patent application cannot be extended;
3.  A provisional patent application cannot be renewed;
4.  A provisional patent application will never become a patent;
5.  Provisional applications may not be filed for design inventions;
6.  The USPTO does NOT examine provisional patent applications on their merits.;
7.  The USPTO does not conduct a prior art search on provisional patent applications;
8.  The USPTO does review provisional patent applications to make sure they meet minimum filing requirements;
9.  A provisional patent application is not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application); and
10.  The term "patent pending” can be used by the inventor for the duration of the one-year pendency of a provisional patent application.

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The patent reform legislation has been amended and introduced in the Senate as Amendment to S. 515 (“Patent Reform Act of 2010 (.PDF)″). When and if it will ever be enacted is a question in and of itself, however here is my summary of one of the more relevant sections of the proposed patent reform act.

Elimination of the Best Mode Requirement

Patent reformers wish to modify or remove the subjective elements of patent infringement litigation that depend on proving an inventor’s state of mind. Current patent law (35 U.S.C. 112) requires that a patent application “set forth the best mode contemplated by the inventor of carrying out his invention” and failure to comply can invalidate a patent in court.

The courts, however, have failed to consistently define and set the scope of the best mode requirement, such that compliance with the best mode requirement currently presents a guessing game for patent practitioners and inventors. Steven B. Walmsley, Best Mode: A Plea to Repair or Sacrifice This Broken Requirement of United States Patent Law, 9 Mich. Telecomm. Tech. L. Rev. 125 (2002),(PDF)

Two patents (5,827,698 and 6,040,160) in the billion dollar Bio Tech industry were recently invalidated in the case of Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010) because of failure to meet the best mode requirement of 35 U.S.C. 112. The two patents relate to methods of producing L-lysine using GM E. coli and include fairly broad claims. The evidence showed that Ajinomoto intentionally concealed their preferred host strain. The court ruled the claims were invalid for violations of the best mode requirement of 35 U.S.C. § 112, and that both patents were unenforceable for inequitable conduct because of those best mode violations.

If the Patent Reform Act of 2010 where enacted it would have eliminated the best mode invalidity defense and the Ajinomoto patents would not have been invalidated. Not to mention the time and expense to litigate the issue. I wonder how many hours were billed in the discovery and argument of this issue?

If the bill were passed, SEC. 15. BEST MODE REQUIREMENT would read in part as follows:

‘‘…failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable…”

The reasoning behind the recommended change is that the subjective “best mode” requirement throws a monkey wrench in every patent litigation. The best mode requirement focuses specifically on the best mode known to the inventor at the time the application is filed. It is a subjective standard. Time and money are expended  looking for examples of “Evidence of concealment” of a subjective state of mind of the inventor at the time of filing.

Is this “subjective” best mode requirement necessary when 35 U.S.C. 112 has an "objective" requirement that a patent application give a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” the invention?

The public is fully informed of the patented technology by the requirement for a complete written description and enabling details to permit the complete scope of the claimed invention to be used. The added requirement to also disclose the “best mode” was placed into law because it was thought of as

“… a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.” In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).

"The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention." Eli Lilly & Co. v. Barr Laboratories Inc (PDF)., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001).

This edition of the patent reform act is an example of yet another "balancing act" by the legislature. If the bill is made into law it will result in:

• Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; and
• The elimination of a defense from defendants that use (infringe) patented technology so that they can not invalidate an otherwise valid patent.

Here is a patent reform that favors the inventor over the infringer and arguably over society as a whole.

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