The Constitution of the United
States gives Congress the power to enact laws relating to patents, in Article
I, section 8, which reads “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.” Under this power Congress has from time to time enacted
various laws relating to patents. The first patent law was enacted in 1790. The
patent laws underwent a general revision which was enacted July 19, 1952, and
which came into effect January 1, 1953. It is codified in Title 35, United
The patent law specifies the
subject matter for which a patent may be obtained and the conditions for
patentability. The law establishes the United States Patent and Trademark
Office to administer the law relating to the granting of patents and contains
various other provisions relating to patents.
What is a Patent?
A patent for an invention is the
grant of a property right to the inventor, issued by the United States Patent
and Trademark Office. Generally, the term of a new patent is 20 years from the
date on which the application for the patent was filed in the United States or,
in special cases, from the date an earlier related application was filed,
subject to the payment of maintenance fees. U.S. patent grants are effective
only within the United States, U.S. territories, and U.S. possessions. Under
certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent
grant is, in the language of the statute and of the grant itself, “the right to
exclude others from making, using, offering for sale, or selling” the invention
in the United States or “importing” the invention into the United States. What
is granted is not the right to make, use, offer for sale, sell or import, but
the right to exclude others from making, using, offering for sale, selling or
importing the invention. Once a patent is issued, the patentee must enforce the
patent without aid of the USPTO.
There are three types of patents:
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;
patents may be granted to anyone who invents a new, original, and ornamental
design for an article of manufacture; and
3) Plant patents
may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.
What Can Be Patented
The patent law specifies the
general field of subject matter that can be patented and the conditions under
which a patent may be obtained.
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.
“process” is defined by law as a process, act, or method, and primarily includes
industrial or technical processes.
“machine” … (see text book)
“manufacture” refers to articles that are made, and includes all manufactured
“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 in an atomic weapon. See 42 U.S.C. 2181(a).
The patent law specifies that the
subject matter must be “useful.” The term “useful” in this connection refers to
the condition that the subject matter has a useful purpose and also includes
operativeness, that is, a machine which will not operate to perform the
intended purpose would not be called useful, and therefore would not be granted
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.
Novelty And Non-Obviousness, Conditions For Obtaining A Patent
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:
“(1) the claimed
invention was patented, described in a printed publication, or in public use,
on sale, or otherwise available to the public before the effective filing date
of the claimed invention” or
“(2) the claimed
invention was described in a patent issued [by the U.S.] or in an application
for patent published or deemed published [by the U.S.], in which the patent or
application, as the case may be, names another inventor and was effectively
filed before the effective filing date of the claimed invention.”
An exception may apply to a
“disclosure made 1 year or less before the effective filing date of the claimed
invention,” but only if “the disclosure was made by the inventor or joint
inventor or by another who obtained the subject matter disclosed… from the
inventor or a joint inventor.”
In patent prohibition (1), the
term “otherwise available to the public” refers to other types of disclosures
of the claimed invention such as, for example, an oral presentation at a
scientific meeting, a demonstration at a trade show, a lecture or speech, a
statement made on a radio talk show, a YouTube™ video, or a website or other
Even if the subject matter sought
to be patented is not exactly shown by the prior art, and involves one or more
differences over the most nearly similar thing already known, a patent may
still be refused if the differences would be 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 substitution of one color for another, or changes in size, are ordinarily
not patentable.The United States Patent and Trademark Office (USPTO or Office)
is an agency of the U.S. Department of Commerce.
The role of the USPTO is to grant patents for the protection of inventions.
It serves the interests of
inventors and businesses with respect to their inventions and corporate
products, and service identifications. It also advises and assists the
President of the United States, the Secretary of Commerce, the bureaus and
offices of the Department of Commerce, and other agencies of the government in
matters involving all domestic and global aspects of “intellectual property.”
Through the preservation, classification, and dissemination of patent
information, the Office promotes the industrial and technological progress of
the nation and strengthens the economy.
In discharging its patent related
duties, the USPTO examines applications and grants patents on inventions when
applicants are entitled to them; it publishes and disseminates patent
information, records assignments of patents, maintains search files of U.S. and
foreign patents, and maintains a search room for public use in examining issued
patents and records. The Office supplies copies of patents and official records
to the public.