Patent Basics for the Non-Practitioner: Part I of IV: OVERVIEW

September 19, 2007 | By: Thomas F. Zuber, Esq.

A patent is a property right granted by the government of the United States to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.  Article I, Section 8 of the United States Constitution grants Congress the power to enact laws relating to patents: “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.” Pursuant to this grant of power, Congress has from time to time enacted various laws relating to patents, now codified in Title 35 of the United States Code (the “Patent Law Statute”).  These laws established the United States Patent and Trademark Office (“USPTO”) to administer the law relating to the granting of patents.  The USPTO is an agency of the United States Department of Commerce providing patent and trademark protection to inventors and businesses for their inventions and corporate and product identification.

It is at the heart of patent law to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time until expiration of the patent, after which expiration the public is free to copy and profit from the invention. Qualitex Co. v. Jacobson Products Co, Inc., 514 U.S. 159, 164-165 (1995). The Patent Law Statute provides that “whoever 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, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. A “process” is explicitly defined as a “process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” 35 U.S.C. § 100. The term “machine” as used in the statute is the same as used in standard language (e.g.: a human-made system or device made up of fixed and moving parts that perform tasks).  The term “manufacture” refers to articles that are made, and includes all manufactured articles.  The term “composition of matter” refers to chemical compositions, and may include mixtures of ingredients as well as new chemical compounds.  These classes of subject matter taken together include practically all things that are made by man and the processes for making them.

Things which do not fall into one of the above classes of subject matter are not patentable.  For instance, laws of nature and physical phenomena are not patentable subject matter.  Furthermore, a patent cannot be obtained based upon a mere idea or suggestion.  In other words, while a patent may be granted based upon a new process, machine, manufacture, or composition of matter, the mere idea or suggestion of the new process, machine, manufacture, or composition of matter, respectively, will not suffice.  A complete description of the actual process, machine, manufacture, or composition of matter, respectively, is required.

Once issued, a patent grants the patent holder the right to exclude others from making, using, offering to sell, or selling the patented invention within the United States, or importing the patented invention into the United States, during the term of the patent. 35 U.S.C. § 271. However, a patent does not grant the patent holder the right to make, use, offer for sale, sell or import the patented invention.  For example, the issuance of a patent does not protect the patent holder from claims of infringement of the claims of other patents, the scope of which claims may include the patented subject matter.

A patent lasts for twenty 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 timely payment of maintenance fees.  However, under certain circumstances, patent term extensions or adjustments may be available.  U.S. patent grants are effective throughout the United States, U.S. territories, and U.S. possessions.

There are three basic types of patents:

1) 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;

2) Design patents regard inventions relating to new, original, and ornamental designs for articles of manufacture; and

3) Plant patents regard inventions, discoveries, and asexually reproductions of any distinct and new varieties of plants.

Part II of this four part series will issue in two weeks, and will address Utility Patents.

* The author, Thomas F. Zuber, Esq., is a partner of Zuber & Taillieu LLP, specializing in intellectual property transactions.

** This article is for informational purposes only.  This article does not constitute legal advice and, in the absence of a fully executed retainer agreement, no attorney-client relationship exists between its reader and Zuber & Taillieu LLP or any of its attorneys.  For more information, please read our disclaimer.

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