Patents

• Legal Framework of Patents

  What is the historical and legal context of patent law?

  • The U.S. Constitution, Article 1, Section 8:

    "The Congress shall have power to . . . promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries"

  • Using the above Constitutional power, Congress has passed the Patent Act, as amended by The American Inventors Patent Act:

    "[W]hoever 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 therefore."

  • The original length for patent protection was 4 years

    • The current length is 20 years for utility and plant patents; 14 years for design patents

  • Patent law is an exclusive federal field; the states have no control over patent issues

  • The United States Patent and Trademark Office (USPTO) administers the Patent Act (See www.uspto.gov)

    • The USPTO is an agency of the U.S. Department of Commerce

    • The role of the USPTO is to grant patents for the protection of inventions and to register trademark

    • The Court of Appeals for the Federal Circuit hears all patent appeals, followed by the Supreme Court

• Patent Law as it Relates to Business Practices

  What is patentable subject matter?

  • An invention or discovery, e.g., a machine, article, process, or composition ("anything under the sun that is made by man") that is:

    • Novel - there must be a lack of prior art; the proposed invention must not have been invented, patented, or published before the proposed date of invention

      • A patent will not be granted 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,” (emphasis added) 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” (emphasis added)

    • Useful - there is a practical benefit to the invention

      • The subject matter must have a useful purpose and also operate, that is, a machine which will not operate to perform the intended purpose is not useful

    • Nonobvious - 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 nonobvious to a person having ordinary skill in the area of technology related to the invention

      • Even if the subject matter sought to be patented is not exactly shown by the prior art, a patent may still be refused if the differences would be obvious

  • By court decisions, the following items may not be patented:

    • The laws of nature

    • Physical phenomena

    • Abstract ideas, or

    • A mere idea or suggestion  (A complete description of the actual machine or other subject matter for which a patent is sought is required)

  • The U.S. operates under a "first-to-invent" system of patent law; most countries use a "first-to-file system" for priority of patents

   

  There are three types of patents

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

• Business Methods Patents & Software Patents

  Software Patents

  • In 1981, Diamond v. Diehr, the Supreme Court recognized patents for computer software

    • Note the overlap between copyright law and patent law

  Business Methods Patents

  • In State Street Bank & Trust (1998), page 120, the Court of Appeals first recognized business methods patents: any process involving data processing, calculations, conversions, etc., used for business operations and management

    • In a broad sense, business methods patents potentially protect any method of doing or conducting business (35 U.S.C. §273(a)(3))

    • Regarding business methods patents, note issues regarding prior art, valuation, and information lock-up, pages 130-31

   

• Enforcing Patent Rights

  • Understand patent ownership issues:

    • Prior contractual arrangements between the parties regarding ownership

    • Shop rights - using employer resources to develop the patent

  • Literal infringement - a copycat invention in all aspects

  • The doctrine of equivalents - insignificant changes made to patent

  • Note the difference between claims of patent infringement versus invalidity analysis in Amazon.com, page 126

This site is maintained by Jeffrey Pittman.  Please direct comments to pittman@astate.edu.