Few legal concepts are less well understood than those of patents, trademarks, and copyrights. Often, people mistakenly use these terms interchangeably. For example, a hot topic of the past couple years was Lebron James and Taco Bell’s attempted cancellation of the “Taco Tuesday” trademark. Try typing “Taco Tuesday” into a search engine, and you might find that people have attempted to search both “Taco Tuesday Copyright” and “Taco Tuesday Patent.” Of course, neither of these are correct. Despite encountering patents, trademarks, and copyrights daily, much of the public has simply not been informed about the differences between them. The purpose of this series of blog posts is therefore to dive into each of these and describe what they are, how to obtain them, and what to do with them. We begin first with a discussion of patents.
You might be surprised to learn that patents have been protected in the United States as far back as the founding of this country. Article I, Section 8 of the United States Constitution states that “[The Congress shall have power] [t]o 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.” The first U.S. patent was then granted to Samual Hopkins in 1790 for an improved method to make potash. The patent was even examined by then Secretary of State Thomas Jefferson, and signed by President George Washington, Secretary of State Thomas Jefferson, and Attorney General Edmond Randolph.
But what is a patent? Well, essentially, it is a bargain between an inventor and the Federal Government. In exchange for a complete disclosure to the public of how to make and use an invention, the Federal Government grants a monopoly to the inventor (or the applicant) for the exclusive right to their invention for a period of time. Thus, for this period of time, no other person can make or use the invention claimed in the patent without permission of the patent owner. The patent owner is free to make, use, or license the right to make and use the invention as they please.
Now that we essentially understand what a patent is, let’s now focus on how we can obtain one. Generally, whether one can obtain a patent hinges on three questions:
1) Is the invention something that can be patented?
2) Is the invention new?
3) Is the invention nonobvious?
As to the first inquiry, 35 U.S.C. § 101 states 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 therefor, subject to the conditions and requirements of this title.” This seems straightforward, but the current 101 jurisprudence is anything but. Essentially, the Supreme Court has interpreted this to specifically include process, machines, manufactures, and compositions of matter, and exclude certain subject matter such as laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). This is a topic for a future blog entry, as certain inventions such as software applications may be abstract and may not be patentable depending upon certain criteria. For now, let's just say that anything occurring naturally or any abstract ideas are not patentable.
For an invention to be patentable, it must also be new. A future blog entry will go in depth on this subject and specifically 35 U.S.C. 102. For the purposes of this post, however, we will just say that anything available to the public before the earliest effective filing date of a patent application is considered prior art against that application. This can be an article, a public offer for sale, a published PH.D dissertation, a presentation, a speech, or any other communication or display of an invention to the public. This inquiry asks whether each and every element of the invention claimed in the patent application is anticipated by a prior art reference. For example, if your invention is a coffee mug having 1) a handle, 2) a receptacle for holding coffee, and 3) a removable lid, as long as a reference shows all three of these elements, your claims will be considered anticipated by the prior art.
But what if none of the prior art references show all of the elements, but reference #1 shows a receptacle with a handle and reference #2 shows a receptacle with a removable lid? This situation falls under the third inquiry and 35 U.S.C. § 103 – whether the invention is nonobvious. Again, the full topic may be a subject of a future blog entry, but essentially the inquiry is whether it would have been obvious for a person of skill in the art to combine references #1 and #2 to arrive at your claimed invention. If the answer is yes, your claims will be rejected by the U.S. Patent Office. Thus, even if your invention does not exist in the prior art, if certain elements of your invention are found in multiple prior art references your application may nevertheless be rejected as obvious over the prior art.
These inquiries and more generally come up during what is called prosecution. After filing your patent application, an Examiner at the United States Patent and Trademark Office will perform a prior art search for your invention, and may reject one or more of your claims according to these inquiries. The USPTO will issue an Office Action with the Examiner’s findings and decision, and you will be afforded an opportunity to respond. You, or your patent attorney, may then craft arguments and claim amendments to overcome the Examiner’s rejections. This process may continue (for the appropriate USPTO fee) until the Examiner is satisfied that your invention is patentable, new, and nonobvious. The application will then be approved for issuance.
Once a patent is issued, what now? Well, a patent is a valuable IP asset. As your property, you are free to sell, trade, license, assign, or do with as you please. If your invention is valuable, the opportunity to make and use the invention exclusively for several years may be invaluable. The only contingency is that your patent must be maintained with the USPTO by filing a fee at 3 ½, 7 ½, and 11 ½ years after issuance.
This post is just a very broad overview of what a patent is, the process to obtain one, challenges you may face, and the end result. As stated previously, this will be the first in a series of posts focusing on patents, trademarks, and copyrights. Future posts will not only introduce new concepts and discussion of current USPTO topics, but will also go in depth on many of the topics above. If you have any questions or wish to discuss obtaining a patent, trademark, or copyright, please feel free to contact us.