A United States patent, once granted to an inventor, can provide exclusivity to the inventor and prevent others from making, using, offering to sell, or selling the invention in the United States. The patent can last up to twenty years from filing. The inventor invests her time coming up with novel solutions to big problems and gets rewarded with exclusivity in using the idea, or licensing fees from others who use her solution.
In the United States, patents can protect a variety of innovative technologies including machines, processes, articles of manufacture, or composition of matter are all possible subjects matters.
The U.S. system applies a “first to file” policy. This means that inventor credit will be given to the inventor of an invention who filed a patent application first. With the one-year grace period, an inventor has twelve months after public disclosure or sale to file the patent application.
In general, an invention must satisfy the following requirements to be granted:
- New
- Unique
- Not obvious
Identifying the factors that determine whether a process can be patented is a good starting point when developing a new process.
What Can Be Patented?
#1. Processes
A process patent is a utility patent that covers methods, a series of acts, or steps for changing the functionality or characteristics of a material during a particular use. Such process patents can protect cooking steps in a recipe, or ways of combining chemicals to arrive at an end product, among others.
A process can be patented if it changes material properties or functionality. A process patent is a great way to protect your invention from imitators. It also helps protect your hard work. It also gives you the advantage of being able to sell it to customers in the future. After all, who wants to give their products away?
The process of patenting a manufacturing process involves balancing the benefits of protecting your proprietary method against the costs of disclosing it. Intellectual property is a good investment in a company, especially when they provide valuable exclusivity. IP is also an asset that can be part of the company valuation. A patent attorney can help you review the issues and make an informed decision. Moreover, a patent can protect the process for 20 years. This exclusivity can help your business flourish.
#2. Machines
A machine is a concrete thing made up of parts or a combination of parts. A bicycle, an airplane engine, or an electric drill are all examples. What makes a new machine patentable is that it combines existing parts in a novel way. However, the machine must also provide utility and certain types of machines are subject to greater scrutiny. For example, examiners are skeptical of perpetual motion machine inventions and thus such applications should show more proof that it works.
#3. Compositions of matter
In the US, compositions of matter are a special class of patentable inventions. They refer to novel mixtures of two or more constituents. A common example is a chemical compound. The applicant must carefully consider which classification is appropriate for their invention, and the patent office will assign an inspector based on their findings. In general, however, compositions of matter may be patentable, provided that they comply with the requirements of the Patent Act.
A composition of matter may be patented for a variety of purposes. Some examples include a Tupperware container, a spiral notebook, a folded corrugated box, or a genetically altered plant or animal. Other examples include pharmaceutical drugs, genetically modified organisms, and articles of manufacture. However, a composition may not be patentable if it violates the laws of nature, such as gravity. One method of claiming a patent for a composition of matter is to recite the individual constituents of a particular material. A particular alloy composition containing specified levels of alloying additives may be patentable. Or, an alloy containing a newly discovered metallic phase may be patented.
#4. Software
These days software is everywhere. As venture capitalists note, software eats the world. You encounter software more than on your desktop at work. Software is behind apps, data, and cloud computing, among others. Software drives growth in nearly every industry and empowers countless people and American businesses and improves our lives each day in ways big and small. The software creates breakthroughs and many software patents have been issued.
In the United States, software claims are analyzed by applying the Alice framework. This framework considers laws of nature, natural phenomena, and abstract ideas in deciding whether an idea is patentable or not. Computer-implemented inventions and software fall under this category. However, it can still be difficult to determine if a software claim is patentable. Below is a discussion of the Alice framework and the different factors to consider when assessing software patent eligibility.
The USPTO has generally ruled that software patent applications that implement technical improvements are eligible for patent protection. This means that software that affects the way a computer works or increases its speed or capability is patentable. Software patent applications that enhance the security of a computer, data storage compression, encryption, and high-performance processing techniques can be patented.
While the term “software” means “computer program,” it actually refers to any piece of software stand-alone or attached to hardware. In some cases, a software patent may include the hardware, as is common for Internet of Things (IoT) inventions.
Given that software patentability is an active debate, applicants should be defensive in claiming their inventions. The Federal Circuit used the term “specific” or “specifically”, numerous times in referring to claims when ruling on eligibility, and cases that use “specific” as a root term. In each case, claims were deemed eligible.
Specificity refers to whether claims describe an outcome or how it can be achieved. Puristically outcome-oriented claims are often functional and indicate what the invention provides and not how it works. For example, Electric Power Group, LLC’s patent was invalidated because the claims “define a desirable information-based outcome and not [being] restricted to inventive means of achieving it.” The Court also criticized one claim’s “result-based function language” in Two-Way Media Ltd.
The claims require the functional results of converting and routing records, controlling them, monitoring them, and accumulating data. However, it does not adequately describe how to do this in a non-abstract manner. You can find many more examples of claims which have failed due to a lack of specificity about the steps required to execute the invention.
Given the present environment, it is conservative to claim a specific function of a particular element that performs something in a certain way to achieve a specific result or solve a particular problem. A claim with fewer details will likely be found abstract and invalidated.
Further, specificity is only a starting point and should be directed at technical problems. What is the difference between solving technical problems and business problems? In general, inventions that solve technical problems in the operation and operation of machines ( .e.g. error correction coding signals, multiprocessing) are more likely to be patentable over inventions addressing the operation and management of businesses ( .e.g., derivative trading, hedging risks analysis, e-commerce schemes, and retail schemes).
Then there is the gray area of inventions that improve human performance and life ( .e.g. film animation, desktop communication apps, video game avatar control) that are in the middle of the patentability spectrum as they arguably relate to non-abstract technological improvements.
The contours of a business method can be somewhat flexible and are up to the individual. The Federal Circuit has found claims that are business-oriented eligible in some cases. In Trading Techs Int’l, Inc., it was determined that claims relating to a securities trading interface were sufficiently technical since they solved problems with such interfaces.
In DDR Holdings LLC v. Hotels.com L.P., the Court ruled that the claimed solution to “creating a composite website that combines certain visual components of a host site with content from a third-party seller” was technically a “necessarily grounded in computer technology.” This is despite the fact that it arguably addresses the business-oriented problem of retaining or increasing web traffic.
In drafting the specification, we recommend that the detailed description:
- Clearly define the real-world benefits of the process. Explain how the process works and what it does. You can use flowcharts to explain the process and cover many perspectives.
It is important to clearly identify the role of the computer in completing the process. Also, how the computer functions to implement it. This should be as technical and detailed as possible. Be sure to include recommended and minimum configurations and how the invention improves computer performance.
Give an overview of how the method is implemented in terms of system usage. Explain the relationship between the controller and the computer. Describe how the elements interact to facilitate the process.
Give a description of how you plan to implement the innovation. This is where flowcharts are highly suggested.
If necessary, you can disclose the code or algorithm. However, if the function is clearly defined in the specifications, code may not be needed as long as a skilled programmer could implement the functions. In software patenting, there are many differences between the EU, US, China, Korean, and Japanese patent offices, so it is best to work with attorneys in each country to get the best coverage.
#5. Architectural Building Design
It is possible to patent an architectural building design as well as obtain a copyright for the building design. You may want to do both because the damages are different for copyright violations and for patent infringement.
Both utility and design patents can be obtained. Utility patents protect the functional characteristics of useful objects. Patentability requires that the object be novel, useful, and not obvious. Non-obviousness requires that a person of ordinary skill in the art (architecture in this instance) wouldn’t have been motivated to combine prior artwork references (e.g. existing buildings or publications) in order to attain the claimed building.
#6. Plant Patents
A Plant Patent is a government-issued right that grants a person the exclusive right to make, sell, import, or cultivate a certain plant. Plants can only be patented if they are asexually reproduced, but there is an exception for pollinated seeds. There are several steps in applying for a Plant Patent. In order to get the rights, applicants must first demonstrate that their plant is an improvement over existing varieties.
In the US, a plant patent is available for new strains of asexually reproduced plants. This means that they can reproduce themselves without seeds or bulbs. Any person can file a plant patent application if they discover a new species or strain of a plant. New plants cannot have been cultivated previously. Furthermore, only one claim may be granted per plant. The patent is valid for 20 years, so you must act quickly.
Before filing a plant patent application, it is necessary to carefully examine the details of the new plant. A complete description of the plant must include information about its parentage, genealogy, and asexual reproduction. The plant’s color should also be precisely identified, as a color code sheet will be included with the patent application. The seedling conditions should be clearly described, to establish that the plant was not grown in an uncultivated area.
New plant patent laws affect the ability of New Zealanders to obtain protection for their new plant varieties. The new plant patent law is not aligned with other countries’ plant variety rights laws and therefore requires the New Zealander to carefully consider if he or she wants to protect his or her new varieties overseas. Moreover, it is important to ensure that the protection is obtained early, as it can be difficult to overcome a claim for patentability if it has already been published.
The novelty of a plant patent is destroyed by use, publication, or availability to the public in any country more than 12 months before the US filing date. A plant patent is limited to one plant and a single genome, so a plant derived from a sport or mutant is unlikely to have the same genotype as the original plant. Regardless of its source, it expires 20 years after the date of filing.
In order to qualify for a plant patent, the new variety must not be readily visible to the public. The USPTO issues plant patents to those who have discovered or invented a new strain of a plant. New varieties of a plant must be genetically and asexually reproducible. The new plant variety must be cultivated or discovered in nature, and it cannot have been created by a plant breeder.
Types Of Patent
There are many types of patents that can be obtained depending on what item you want to patent.
#1. Utility Patents
In order to qualify for a utility patent, an inventor must have created a new product or process that is not already on the market or publicly described. The subject matter of a utility patent must be useful to people in the present. For example, perpetual motion machines will be scrutinized for utility. Utility patents can cover new biological or chemical formulas, processes, or procedures. A prototype is not necessary, but you must be able to convey enough information about your idea to make it clear to skilled artisans that you are in possession of the invention.
#2. Design Patents
A design patent protects ornamental features or the look of an object, rather than its function. It protects only the appearance of the article and not the structural or utilitarian features of the object. For instance, an application for a design patent for a computer mouse would cover the shape and contour of the mouse device rather than its functionality in moving a cursor.
#3. Plant Patents
A plant patent protects a new variety of asexually reproducing plants. Asexual reproduction has been defined by the USPTO as the propagation of a plant without the use of fertilized seeds to assure an exact genetic copy of the plant being reproduced.
What Can’t Be Patented?
The government does not grant patents for writings, illustrations, or naturally available processes. Likewise, you cannot patent substances or processes that are found in nature. Neither can a drug that puts the safety of its user at risk. Ideas that serve criminal purposes cannot be patented because they lack utility.
Before you can patent an idea, you need to go through the US patent application process. Patents are only granted if an idea meets certain criteria. To get a patent, your idea must be new, useful, and unique. Basically, the ideas which cannot be patented are:
#1. Abstract ideas
An abstract invention is not patentable, but implementations and applications of such abstract ideas may be patentable. Abstract ideas can be mathematical concepts, methods that organize a human activity, or methods that can be executed by the human mind, among others.
Other examples of abstract ideas can include social activities, following instructions, and mental processes such as evaluation, observation, and decision-making. Taken to an extreme, a patent examiner could interpret an invention as an abstract idea in certain technical areas, such as user interfaces, artificial Intelligence, and machine learning. Fortunately, patentability is possible if the ideas have a technical effect as we will discuss next.
The Federal Circuit has defined abstract ideas in the negative as:
a claim is not directed to an abstract idea if it includes at least one element that is a specific, technical improvement that is not found in the prior art.
Thus, a claim is directed to an abstract idea if its elements are non-specific, address a non-technical problem, or are known in the art. Conversely, to meet the § 101 ban against abstract ideas, the claimed invention should have three qualities: specificity, a technical problem that it solves, and some degree of novelty.
#2. Items already existing in Nature
Anyone can discover a new mineral or another valuable resource. There are protections available for the discovery. A patent is not possible because the inventor or innovator hasn’t created anything. The eligibility of a claim is determined by the extent to which a natural component has been used in the invention.
An invention that relies mainly on an item pre-existing in nature will not qualify for patent protection. However, an invention that incorporates a natural item extended with innovative modifications/extensions to achieve a result not available in nature may be patented.
An effective patenting strategy should focus on the improved properties of natural products. Patents should cover optimized formulations, new uses, or advanced preparation methods for natural products. To maximize the chances of success, claims must be written with sufficient significance and scope. Furthermore, they should not be generalized applications of natural products. This way, they can be effectively protected. It’s best to review your patenting strategy periodically to ensure that you’re maximizing your chances of securing a patent.
#3. Laws of Nature
Manifestations of laws of nature are part of the storehouse of knowledge, “free to all men and reserved exclusively to none.” Patent eligibility for new, useful inventions can be excluded if they are considered a “law of nature” or “natural phenomenon” – but not if they are more than an abstract idea. The Supreme Court has never cited any specific judicial definition of “law of nature” or “abstract idea,” and as a result, patents for these products are often contested.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the US Supreme Court found that the discovery of a law of nature was unpatentable. However, if the claimed process had additional features that provide practical assurance that the claimed process is not a drafting effort to preempt the whole filed with the law of nature, it may have been patentable.
#4. Artistic Works
A person or an organization can copyright a musical score or render thereof, a movie, or a painting. Such artistic works are not eligible for patents that protect advances in technology, not the humanities and fine arts. That is why patents and copyrights were created as separate systems.
Other artistic works can be protected with trademarks. For example, logos and unique colors or sounds that denote product sources/origins can be protected through trademark protection, and sometimes under copyright and trademark protections.
Trademarks can be made on names, logos, and packaging that point to the source of the product. In order to patent an idea, you must be able to describe it in detail and explain how it fulfills a market need. The process of patenting an idea involves a lot of documentation and you must meticulously follow the steps and gather any documentation that can support your claim.
Examination at the Patent Office
As discussed above, many inventions under the sun can be patented, including inventions of machinery, products, and processes. You just have to document the invention in-depth and claim the invention appropriately in your patent application.
Non-Obviousness Is A Requirement For Utility Patents
According to the Patent Ac, an invention must be “non-obvious,” which means that it is not a logical extension of the prior art. Non-obvious inventions are those in which the invention is more significant and different from prior art than a logical incremental improvement.
The US Patent Office considers “obviousness” in light of a person of ordinary skill in the art (POSITA). The POSITA can be a typical scientist or engineer in the field.
If an invention is not obvious to a person of ordinary skill, a patent application may be granted, subject to other requirements. To make an invention non-obvious, it must be sufficiently different from the prior art that a person of ordinary skill would not have known about it.
A simple example of this is sodium chloride and potassium chloride, both of which can be used interchangeably. However, chemists working on improving road salt would consider this substitution to be obvious, and therefore not patentable.
Another way to show that your invention is non-obvious is through commercial success. It must have a nexus, which is a legally-sufficient connection between the evidence of commercial success and the features of your invention. To bring these features into consideration, you can capture these features in a claim by defining them. Otherwise, the examiner may not consider these features in her evaluation of non-obviousness.
Motivation To Make The Combination
Examiners at the patent office typically combine two or more patents or publications to show obviousness. Examiners will then provide a motivation to make a combination patentable, typically using hindsight from your invention’s objective. The Teaching-Suggesting-Motivating (TSM) test helps assess motivation. It helps determine whether the individual inventor is genuinely motivated to pursue a combination patent. Thus, when motivation is not sufficiently strong, you can make a case for allowance.
Whether a combination has the required motivation depends on whether the primary reference is an essential element of a combination. A primary reference must be sufficiently related to the secondary reference to be considered sufficient motivation. However, if the primary reference is not used in combination with the secondary reference, the combination may not be patentable.
Combination Inventions
Several factors play a role in determining whether combination inventions are patentable. In a recent case, the court held that a simple juxtaposition of two properties prior to the priority date does not qualify as a combination invention. The patentability of a combination invention is therefore dependent on whether there is functional reciprocity between the two components. The combination invention may be a combination of one or more features that enhances the activity of another.
In order for a combination invention to qualify for a patent, it must have an extraordinary outcome. Both of the components of the combined inventions must function in a unique and harmonious way. The combination of two patents cannot be a patentable idea unless the new invention brings out the most relevant aspects of each of the other patents. The combined invention must meet the criteria of novelty and non-obviousness in order to be eligible for a patent.
Novelty
One of the requirements to patent an idea is a novelty. A patent is only granted if it embodies a new, inventive idea. It is not patentable if the invention was known to the inventor or others before the filing of the patent application.
A new invention is one that no one else has made before, hasn’t been published, or hasn’t been offered for sale anywhere in the world. However, even the most promising inventions are inevitably going to have some prior art. Besides evaluating the novelty of an invention, the examiner will also consider other factors. The patent office will conduct a patent search and check prior art to see whether the invention has already been patented. This is why it’s so important to submit your ideas as early as possible under the first-to-file regime. You can use software to help you quickly document your invention, you’ll be able to submit your ideas ahead of your competitors and enjoy a competitive advantage.
Steps To Filing A Patent
Step 1: Know Your Invention
You must first understand your invention. What unique feature makes your invention useful and new?
After identifying these elements, you can consider the scope of your invention. Is your invention feasible in another way?
Step 2: Perform a Patent Search
Next, use one of the many patent databases to conduct a patent search for your idea. As mentioned above, this will allow you to determine whether your invention is truly original. You can also find out if there are any other patents for similar inventions.
Searches can be made within the United States Patent and Trademark offices with many patent databases. This search is not without limitations. It is important that you take the time to understand these limitations. The search may not be comprehensive and might not prove your idea is valid. You can save time and money by looking for a similar patent before you submit your application.
Step 3: Choose the type of protection you want for your invention
A utility patent is what most people call a patent. The prototype you have created can be tested and refined. You cannot, however, add anything. You must file a patent request to get super-sensitive pressure sensors for your prototype.
The formal application is the non-provisional, also known as Utility Patent Application. To begin the patent process, one must submit the application to the United States Patent and Trademark Office. The provisional application must be filed within one year of the initial filing. This application will grant you patent-pending status for your idea.
Step 4: Prepare and file your patent application
It can be challenging to create a patent request. Your chances of getting patent rights are higher if you do it right. Your patent may not be issued if you do not follow the correct procedure. An application can include patent claims and drawings as well as specifications. These may be rejected due to technical or formal reasons. To protect your invention, it is best to seek the advice of a skilled professional.
A professional cannot do everything, but they can help you put your ideas into writing. You need to collaborate closely with your patent professional to capture the essence and value of the invention that you wish to protect.
Step #5: Patent Prosecution
The examiner will confirm the uniqueness of the invention after the patent application has been filed. This means that it has not been claimed by anyone else to have invented it before your patent filing. This requires that you search for prior disclosures online and in printed forms.
A judgment will be rendered by the patent examiner regarding the patent’s non-obviousness. This can be difficult to understand. It is possible to find a simpler, but not necessarily exact, alternative for non-obviousness. Your invention must be unique to be eligible for exclusive IP rights of more than 20 years. It should also be substantial and advance existing knowledge.
The patent examiner will also assess whether the application for a patent is complete and contains sufficient disclosure to allow the applicant to understand the method used in the invention. All requirements must be met before a patent can be issued to the applicant. For a period of twenty years, you will have exclusive intellectual property rights to his invention.
Patent protection at a fixed-fee
We help clients identify new markets and strategic partners to add value during our consultations.
We will do everything we can to lower costs for our clients. We offer most of our services for a fixed price to ensure that clients have clear objectives and can meet their budgets. Our fixed fee approach applies to:
- Preparing, filing, and prosecuting patent applications at USPTO
- Opinions on patentability, validity, and infringement.
- Enforcement of patent rights in U.S. District Courts and on appeal
- Post-issuance Proceedings of the USPTO
We encourage you to request our list of typical patent fees. For more information about our services, call us at 800-234-3032 or schedule a strategy call with us.