The purpose of this article is to explain the most basic aspects, but in many respects the most important aspects, of the patent process. This article does not address many of the intricacies involved in the patent process or patent enforcement, nor does it attempt to compare patents to other forms of intellectual property.

1. What is a patent?

A patent is a grant from the government, specifically the United States Patent and Trademark Office (“USPTO”), that permits its owner to exclude all other parties from making, using, selling, offering for sale, and importing into the U.S. the subject matter covered by the patent for a set period of time. Patents are now issued for a period of 20 years from the date on which the patent application is filed. Once a patent expires, it cannot be renewed, and its teachings are “dedicated” to the public domain. Thus, in exchange for a detailed written description of the invention, the government will grant you certain exclusive rights with respect to the invention for a set term of years, but once those years pass the invention becomes part of the public domain.

2. Why patent?

A patent is a legal tool that can be used to protect the competitive advantage a company may realize as a consequence of new technological or product development. If your company is in the market of making and selling widgets and you develop an improvement to the widget that might provide a competitive edge in the marketplace, a patent can be used to keep competitors from copying this improvement, thereby taking away the competitive edge.

3. Requirements

The basic requirements an invention must meet in order to qualify for patent protection are: (1) proper subject matter, (2) novelty, and (3) non-obviousness. There are other technical requirements that must also be met, such as providing an “enabling” disclosure of the “best mode” known for practicing the invention, but these technical requirements will not be discussed in this article.

a. Subject Matter
Patents are granted for any new and useful machine, article of manufacture, composition of matter, process, ornamental design (for which a “design” patent may be obtained), or any new and useful improvement of any of these. Thus, inventions such as a new (or modified) computer program to perform some specified function, a new (or modified) machine for stitching baseballs, a new drug for treating a specified ailment, a new (or modified) process for removing impurities from drinking water could constitute “patentable subject matter.” Whether an invention of the appropriate subject matter is in fact patentable, however, is further dependant upon determining whether the invention is also “novel” and “non-obvious.”

b. Novelty
In order for the invention to be granted a patent, it must be novel. Novelty means, in essence, that whatever it is that is being “claimed” to be the “invention” must not have existed in the “prior art.” Prior art is the body of public information that existed before the invention was conceived and reduced to practice (i.e., made) and before the application for patent is actually filed. Prior art is typically found in patents that have already issued (regardless of whether the patent has expired or is still in force and regardless of where the patent issued (e.g.., the U.S., Canada, Europe, Japan, etc…) and technical literature (such as technical journals, magazines, trade journals, and the like).

In addition to an invention having been disclosed in prior publications, another way that an invention may lose its novelty is an inventor waits too long to apply for a patent. In the United States, applicants for patents are given one year from their earliest public disclosure or offer for sale in which to apply for a patent on the invention that was disclosed or offered for sale. Thus, if a new product is first introduced to the public at a trade show, a patent application must be prepared and filed with the USPTO within one year of that date (referred to as the “one year statutory bar”). Failure to apply for a patent within that one year time frame destroys the novelty of the invention and makes it unpatentable.

For those companies who do business in countries other than the United States, they should be mindful that U.S. patents only offer protection in the United States and not in foreign countries. In order to stop competitors from infringing upon your patent rights in other countries, you must obtain patent protection in the other countries. In other words, a U.S. patent will not permit you to stop activities that would otherwise be in violation of your patent rights in the U.S. from occurring in Canada. To do that, you must also apply for and obtain a Canadian patent. An important thing to remember in this regard is that most foreign countries do not give patent applicants one year from a public disclosure or offer for sale in which to apply for a patent, but rather require that the patent be applied for either before any public disclosure of offer for sale (referred to as “absolute novelty” countries) or within six months of the first disclosure or offer for sale (referred to as six month statutory bar countries). Thus, even though the United States gives patent applicants one year from a public disclosure or offer for sale, if foreign patent rights are also desired you generally have to get your patent applications filed much more quickly and perhaps prior to ever making a public disclosure or offer for sale.

c. Non-Obviousness
In addition to being novel, an invention must also be non-obvious over the prior art at the time the invention is made. An invention will be considered obvious if all of the component parts comprising the invention can be found in the prior art, even though all of the elements are not found in a single prior art reference (that would render the invention unpatentable as not novel), and the prior art further teaches that it would be useful or desirable to combine the elements in the same way in which the elements were combined to make the invention. This does not mean that an invention is obvious simply because all of its component elements have previously existed (in fact most inventions comprise a combination of preexisting elements). Rather, where the prior art expressly teaches or suggests the particular combination of elements, the invention may fail for obviousness. Where all of the elements comprising an invention do independently exist, but there is no express teaching of combining them in the same way in which the invention has combined them, an argument that the invention is obvious is most likely based on improper “hindsight.” Indeed, most inventions seem “obvious” after they have been created, but that will not necessarily negate their patentability.

Summary

Mr. McGuire is a Registered Patent Attourney and is Chair of the Intellectual Property Practice Group at Bond, Schoeneck & King, PLLC.

established in this invention. A patent will permit you to stop your competitors from making, using, selling, offering for sale, and importing into the U.S. whatever it is that you have protected, thereby giving you a legal tool to maintain that competitive edge. It is important to remember that any public disclosures and/or offers for sale of the invention can destroy the invention’s novelty, and you should therefore seek proper counsel before divulging the invention to the public.