Chapter 9: Definitions Patent Law

Below are definitions of the words and phrases commonly used in patent-related activities.

abandonment of patent

The U.S. Patent and Trademark Office (PTO) considers a patent application abandoned if the applicant fails to respond in a timely manner to actions or requests initiated by the PTO.

The PTO’s response to most patent applications is to send the applicant a notice (called an office action), rejecting one or more aspects of the application. The applicant must then amend the application—usually the claims, which are precise descriptions of the invention—or provide some other suitable response within three months to keep the application alive.

In the event an application is treated by the PTO as abandoned, the applicant may:

• petition the director of the PTO to set aside the abandonment decision

• file a substitute application—which means paying additional fees and being given a later filing date (harmful if another applicant files an application for a similar invention between the first and second filing dates), or

• forget about the patent and utilize another available method of protection such as trade secrecy or trademark (that is, you can use a clever name for the invention to capture market share, such as “pet rock”).

  Related terms: claims, defined; prosecution of a patent application; substitute patent application.

abstract

This paragraph in the patent application concisely summarizes the general nature, structure and purpose of the invention. When a patent is issued, the abstract appears on the front page of the patent.

Related terms: Official Gazette (OG); patent application.

actual reduction to practice

See reduction to practice.

admissions by inventor

Statements by an inventor about his or her invention may be used by the U.S. Patent and Trademark Office (PTO) to reject a patent application or cause a court to rule against the invention’s validity. An inventor should never write anything in a patent application or in correspondence with the PTO that derogates the invention, since the statement will constitute an admission that can later be introduced by the PTO or by a competitor to fight the patent.

Related terms: certificate of correction; duty of candor and good faith; file wrapper estoppel.

algorithms

An algorithm is a mathematical procedure that can be used to solve a problem or class of problems. Common examples of algorithms are mathematical formulas, geometry axioms and algebraic equations. Algorithms as such are not patentable because the patent would create a huge and fundamental monopoly over laws of nature.

EXAMPLE: The Heisenberg uncertainty principle, a well-known law of nature, states that you cannot design an apparatus to simultaneously determine the location and momentum of a subatomic particle. This principle is relevant to many scientific and electrical engineering applications, thus a patent on it would give exclusive control of the development of these applications to the owner of the patent. Effectively, a patent on the Heisenberg uncertainty principle would either halt progress in any field where the principle applies, or force all would-be developers to pay license fees to the patent holder.

Until recently, the rule against patenting algorithms was applied to computer software, because software largely consists of procedural instructions in mathematical form that make a computer accomplish a certain and definite result. Now, however, the U.S. Patent and Trademark Office will allow patents on that aspect of software that accomplishes a useful, concrete and tangible result.

Related terms: laws of nature exception to patents; software patents.

Note

See also Part 2 (Copyright Law: computer software, copyright of).

allowance

The decision by the U.S. Patent and Trademark Office (PTO) to award a patent to an applicant is referred to as an allowance (the application is “allowed”). The applicant is sent a notice of allowance by the PTO; this usually occurs after the initial claims were amended at least once during the prosecution of the patent application.

Related terms: certificate of correction; prosecution of a patent application.

amendment of patent application

A patent application may be amended (changed) in response to an initial rejection by the U.S. Patent and Trademark Office. Patent examiners often reject the initial application as filed, most commonly because the scope of the patent being applied for is too broad in light of previous developments in that field (the prior art). Other common reasons for rejection are noncompliance with certain rules governing how the invention must be described in words or portrayed in drawings.

This initial rejection includes an explanation and copies of any patents that seem very similar (called prior art references) and have contributed to the rejection. Upon receiving a rejection, an applicant usually files an amendment, in one part changing the application in accordance with the examiner’s requirements and in the other part contesting such requirements. Alternatiavely, an applicant may contest the examiner’s decisions completely or file an amendment that completely conforms the application to the examiner’s requirements.

Related terms: office action; prosecution of a patent application.

anticipation

An invention is said to be anticipated when it is too similar to an earlier invention to be considered novel. Because novelty is a requirement for patentability, anticipated inventions are not patentable.

An invention may be anticipated in any of the following ways:

• prior publication in such writings as a news article, trade journal article, academic thesis or prior patent. For example, Fred Jones invents a low-cost kit that permits a car’s driver to monitor ten different engine functions while driving. If all of the primary characteristics (elements) of this kit had been described by someone else in a publication or patent before Fred invented his kit, the invention would be considered anticipated by the published reference, and would be barred from receiving a patent.

• by existence of a prior invention, if all significant elements of the later invention are found in an earlier one prior to the date of invention or the application’s filing date. Suppose Sammy “invents” an electric generator that is driven by the kinetic energy of a car’s moving wheels. If all basic elements used by Sammy in his “invention” can be found in a prior invention (whether patented or not) by Jake, who used his invention openly—without suppressing or concealing it—Sammy’s generator has been anticipated.

• by placing the invention on sale more than one year prior to an application’s being filed. “On sale” means not only an actual sale, but any offer of sale. For example, if Sammy offers to sell his invention to a major car manufacturer more than one year previous to his filing a patent application on it, the offer will anticipate the invention even if the sale never takes place.

• by public use or display of the invention more than a year prior to filing the patent application. For example, if Fred publicly demonstrated his kit a year or more prior to filing for a patent, the invention would be considered “anticipated” because the earlier public display would render the invention no longer “novel” at the time of filing the application. However, if the public demonstrations were predominately for experimental purposes, the one-year period might not apply. In fact, anticipation through public use or display rarely occurs.

Anticipation by a prior invention or printed publication—that is, a prior art reference—can only occur if all of the later invention’s basic elements are contained in a single invention or a single publication. For example, if a news article describes some elements of an invention, and a prior invention shows the rest, no anticipation has occurred, because no single reference contained all the elements.

Related terms: novelty, defined; printed publication as statutory bar; prior art reference; public use.

anti-shelving clause

This provision in a licensing agreement makes permission to use a patented invention contingent on the willingness of the party receiving the license to use the patent commercially within a designated period of time (rather than “putting it on the shelf”). For obvious reasons, this type of provision is especially important when a license is granted in exchange for the payment of royalties based on the number of products sold.

antitrust law (federal) and patents

Federal antitrust laws generally prohibit businesses from engaging in monopolistic activities—that is, to engage in practices purposely designed to give the business dominant control over a particular market segment. However, by definition, a patent is a legal monopoly over the production, use and distribution of an invention. In an attempt to reconcile these conflicting legal goals, the U.S. (and most countries) restricts the ways companies holding patents may use them in the marketplace.

In addition to preventing monopolistic activities, antitrust laws prohibit business practices that restrain the free flow of commerce (called restraint of trade). Among the more common types of patent-related activity that may potentially cause antitrust violations are:

• price fixing—for example, a patent owner requiring licensees of a patent to charge certain prices for goods manufactured under the patent

• exclusive dealing agreements—for example, a patent owner encouraging patent licensees not to deal with certain customers

• “tying agreements”—that is, requiring a customer who wishes to purchase the patented invention to also purchase other goods or services as a condition of the purchase. For instance, putting a provision in a license agreement that requires the licensee of a mainframe computer to use the licensor to service the computer would tie the purchase of the computer to the purchase of the service

• requirements contracts, whether mandatory or encouraged by price reductions—for example, prohibiting a purchaser of goods covered by a patent from purchasing comparable items from another source

• territorial restrictions—for example, restricting licensees to certain geographical areas in their marketing of goods covered by the patent, and

• concerted refusal to deal—for example, excluding some potential customers from use of the device or process covered by the patent while including others.

Practically speaking, antitrust laws should not be a concern for most patent owners, as few patents have a large enough impact on the related market or industry to raise the antitrust warning flag. If, however, a patent is so broad in its coverage that the actual ebb and flow of commerce might be affected by it, there is no substitute for good knowledge of antitrust law. This is especially true when important inventions are involved in patent infringement lawsuits, because defendants often charge that the plaintiff committed an antitrust violation and therefore cannot enforce the patent.

Related terms: defenses to a patent infringement claim; misuse of patent; price fixing.

appeals

See Board of Patent Appeals and Interferences.

application filing fees

Fees must be paid to file a patent application with the U.S. Patent and Trademark Office. The fees are twice as much for large entities as for small entities. Generally, independent inventors, nonprofit corporations and businesses with fewer than 500 employees qualify for small entity status. However, if an assignment has or will be made by a small entity to a large entity, large entity fees must be paid.

Patent application fees are currently (as of March, 2003):

• for utility patents, $750 for large entities and $375 for small entities

• for design patents, $330 for large entities and $165 for small entities, and

• for plant patents, $520 for large entities and $260 for small entities.

  Related terms: issue fee.

application issue fees

See issue fee.

assignment of a patent

Because a patent is a type of property, it can be sold (assigned) to others. An assignment is a document that transfers a patent owner’s rights in exchange for money payable in a lump sum or royalties on future sales of the invention.

Many inventors assign their invention, either to the company they work for under an employment agreement or, in the case of independent inventors, to outside development or manufacturing companies. These assignments typically transfer ownership of any patent that issues on the invention and may provide for compensation for the inventor, although employed inventors often receive little or no additional compensation because they are getting paid to invent.

Related terms: licensing of an invention; patent owner.

attorney fees, infringement action

See infringement action.

Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office

See patent attorneys.

Bayh-Dole Act

The Bayh-Dole Act, enacted in 1980, permits universities to claim patent rights in inventions created at the university with federal funding. The university may license these discoveries to private industry—a practice some critics have likened to corporate welfare.

As a result of Bayh-Dole, university patent acquisition and licensing has expanded dramatically in the last two decades. Before 1980, U.S. universities acquired less than 150 patents per year. In 2000, the University of California, alone, obtained 324 patents (and earned $261 million in licensing revenue). Regulations for the Bayh-Dole law (35 United States Code Sections 200-212) can be found at 37 C.F.R. Part 401.

The key regulations are as follows:

• The university must have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions.

• The university has an obligation to disclose each new invention to the federal funding agency within two months after the inventor discloses it in writing to the university.

• The decision whether or not to retain title to the invention must be made within two years after disclosing the invention to the agency.

• The university must file a patent application within one year, or prior to the end of any statutory period in which valid patent protection can be obtained in the United States.

• Any company holding an exclusive license to a patent that involves sales of a product in the United States must substantially manufacture the product in the U.S.

• In their marketing of an invention, universities must give preference to small business firms (fewer than 500 employees), provided such firms have the resources and capability for bringing the invention to practical application. However, if a large company has also provided research support that led to the invention, that company may be awarded the license.

• Universities may not assign their ownership of inventions to third parties, except to patent-management organizations.

• Universities must share with the inventor(s) a portion of any revenue received from licensing the invention. Any remaining revenue, after expenses, must be used to support scientific research or education.

• Under certain circumstances, the government can require the university to grant a license to a third party, or the government may take title and grant licenses itself (these are called “march-in rights”).

  Related terms: march-in rights.

best mode disclosure requirement

See disclosure requirement for patents.

biotechnology and patents

See genetic engineering and patents.

Board of Appeals

Formerly, this administrative body within the U.S. Patent and Trademark Office handled appeals from decisions by patent examiners to disallow one or more claims in patent applications. Appeals are now handled by the Board of Patent Appeals and Interferences.

Related terms: Board of Patent Appeals and Interferences.

Board of Patent Appeals and Interferences

A tribunal of administrative judges of the U.S. Patent and Trademark Office handles appeals of rejected applications and decides who is entitled to a patent when an interference occurs (when two or more inventors lay claim to the same invention). This administrative body combines the former functions of the Board of Appeals and the Board of Patent Interferences.

Related terms: Court of Appeals for the Federal Circuit (CAFC); final office action; interference, defined; interference proceeding; prosecution of a patent application.

Board of Patent Interferences

Formerly, this administrative body within the U.S. Patent and Trademark Office decided who was entitled to a patent when an interference occurred (when two or more inventors laid claim to the same invention in pending patent applications). Interference decisions are now handled by the Board of Patent Appeals and Interferences.

Related terms: Board of Patent Appeals and Interferences.

breaking a patent

To break a patent means to establish that an existing patent is invalid or unenforceable because:

• it was improperly issued by the U.S. Patent and Trademark Office in the first place, or

• it was legally misused by the patent owner.

Patents are normally broken in the course of defending against a patent infringement charge brought by the patent owner.

Related terms: antitrust law (federal) and patents; defenses to a patent infringement claim; infringement action; misuse of patent.

building and testing an invention

After conceiving of an invention, an inventor’s next step is usually to build and test a working model (called “actually reducing an invention to practice”). Although not necessary to get a patent, building and testing an invention before applying for a patent on it is strongly advised, because a working model will:

• more definitively establish the exact nature of the invention

• make it much easier to describe the invention in the patent application

• help to sell the invention to a company, and

• prove a crucial date in case of an interference or a prior use reference having a date up to one year before the applicant’s filing date.

  Related terms: experimental use of an unpatented invention; interference, defined; reduction to practice.

  

business methods as statutory subject matter

For many years it has been assumed that methods of doing business are not patentable subject matter. This assumption has been strained in recent years by the PTO’s practice of allowing patents for computer programs that carried out complex business functions. Finally, in the case of State Street Bank and Trust v. Signature, 149 F.3d 1368 (Fed. Cir. 1998), the Court of Appeals for the Federal Circuit ruled that there is no logical basis for the business methods exception, and that a business method constitutes statutory subject matter if it produces a useful, concrete and tangible result. The business method approved of in the State Street case was part of a computer program that facilitates mutual fund investing. The principle established in the State Street case—that business methods are suitable patent subject matter—was affirmed in AT&T Corp. v. Excel Communications, Inc., 179 F.3d 1352 (Fed. Cir. 1999).

The term “business method patent” has also been used to describe a group of utility patents whose inventions combine software programs and methods of doing business, most of which relate to Internet uses. These are also sometimes referred to as “Internet Patents” and the most well-known example is Amazon.com’s “One-Click” system, a method that allows a repeat customer to bypass address and credit card data entry forms when placing an online order. (U.S. Pat. No. 5,960,411).

Although the terms “business method patent” and “Internet patent” have been used interchangeably in the media, these patents may deal with mutually exclusive concepts. For example, a patented method of doing business does not have to pertain to an online application. Likewise, a patent for a process used on the Internet may be more accurately described as a software patent than a business method.

Regardless of their categorization, all of these patents seem to have one thing in common: They expand ways of doing business in new technologies. Since the State Street case, the number of applications filed in the principal class for business methods (Class 705) has exploded. (In 1997 there were 927 filings; in 2001 there were 8,700 filings).

Following State Street, patents have been issued for business methods such as:

• an online shopping rewards program, referred to as the “ClickReward” (U.S. Pat. No. 5,774,870)

• a system that provides financial incentives for citizens to view political messages on the Internet (U.S. Pat. No. 5,855,008)

• an online auction system by which consumers name the price they are willing to pay and the first willing seller gets the sale (also known as “name your price” or as a “reverse auction,” U.S. Pat. No. 5,794,207),

• a process that supposedly blocks the auction practices described in the previous patent (U.S. Pat. No. 5,845,265)

• a method for facilitating anonymous communication among multiple parties—that is, an online dating service (U.S. Pat. No. 5,884,272)

• a system for automating airline seat upgrades (U.S. Pat. No. 6,112,185), and

• an online grocery shopping method (U.S. Pat. No. 6,246,998).

Sometimes a business may have been using a particular business method prior to another company acquiring a patent on that method. For example, if Business A files for a business method patent, but Business B can show that it implemented and commercially used the method publicly more than a year prior to the filing. Business B has a good defense against the patent. This defense was created under a 1999 amendment to the patent law. (35 United States Code, Section 273(b).)

Related terms: software patents; statutory subject matter.

CCPA (Court of Customs and Patent Appeals)

Formerly, this court handled appeals from determinations by the U.S. Patent and Trademark Office. Appeals are now heard by the Court of Appeals for the Federal Circuit (CAFC).

Related terms: Court of Appeals for the Federal Circuit (CAFC).

certificate of correction

The U.S. Patent and Trademark Office (PTO) issues a certificate of correction form when an inventor wishes to make minor technical or clerical corrections in an application after the PTO has decided to issue the patent. These corrections may not, however, consist of new matter that changes the invention covered by the patent.

Related terms: new matter; prosecution of a patent application.

chemicals as patentable subject matter

See composition of matter.

CIP

See continuation-in-part application (CIP).

claims, defined

Claims are statements included in a patent application that describe (or “recite”) the structure of an invention in precise and exact terms, using a long established formal style and precise terminology. Claims serve as a way:

• for the U.S. Patent and Trademark Office (PTO) to determine whether an invention is patentable, and

• for a court to determine whether a patent has been infringed (someone has made, used or sold a patented device without the patent owner’s permission).

Most patent applications contain more than one claim, each of which describes the invention from a slightly different viewpoint. Claims may be “independent” (standing on their own) or “dependent” (referring to other claims on which they depend for some or all of their elements). Examples of independent and dependent claims are below.

Each claim must “particularly point out and distinctly claim” the invention for which the patent is being sought. To this end, the PTO requires that each claim be:

• stated in one unit (a sentence fragment which can and almost always does have numerous clauses and subclauses)

• very specific

• clear

• distinct from other claims, and

• consistent with the narrative description of the patent contained in the patent application.

Claims may be broad or narrow in terms of the scope of the invention they address. The greater the scope of the invention defined in the claims (that is, the broader the claims), the wider the reach of the patent. Similarly, the narrower the scope of a patent claim, the more restricted is the reach of the patent—and the easier it is for another inventor to come up with a somewhat similar invention that does not infringe the claim.

EXAMPLE 1: A claim to a new type of writing implement states that the invention is “a hand-held device containing means by which marks may be made on a surface.” Because the language of this claim literally reaches every writing implement that ever has been or ever could be manufactured, it would be considered extremely broad. If a patent were issued (extremely unlikely, as discussed below), any subsequent invention that was held by hand and made marks on a surface would infringe the claim and therefore the patent.

EXAMPLE 2: Suppose the inventor of a type of writing implement claims the invention as follows: “A 3-inch by 1/2-inch plastic tube containing liquid and for making an indelible 1/32-inch line on a flat paper surface.” If another company makes a 4-inch by 1/4-inch metal tube containing a charcoal substance capable of making variable width lines on any flat surface, the claim is not infringed because it recited very specific elements that are different from the elements of the later invention.

Although broad claims promise to give the inventor more protection, there is a rub: they may preclude the issuance of a patent. To qualify for a patent, an invention must be both novel (different in some way from previous inventions) and nonobvious (produce an unexpected or surprising result). The broader the claims, the more likely that they overlap with previous developments and the greater risk that the invention described in the claims won’t be considered novel and nonobvious. (The writing implement discussed above is a good example.) Conversely, narrower claims for an invention provide a greater chance that the invention will be considered novel and nonobvious, because the claims are less likely to overlap with previous developments.

Example of Independent and Dependent Claims

Independent Claim

I claim: 1. A target comprising substrate means and target pattern means formed on one side of said substrate means in a layer substantially covering said one side of said substrate means, said substrate means and said target pattern means being mutually contrasting visually, said substrate means and said target pattern means being arranged such that when struck by a high-speed projectile, a substantially larger-than-projectile-size portion of said target pattern means at the projectile’s point of impact will be physically separated and remove from the rest of said target pattern means, and a hole, of a size smaller than said removed portion of said target pattern means, will be made in said substrate means, whereby a portion of said substrate means around said hole will be exposed by the impact of said projectile.

Dependent Claims

2. The target of claim 1 wherein said substrate means is contrastingly colored to said target pattern means by means of a fluorescent dye. 3. The target of claim 1 wherein said substrate means comprises a transparent film backed by a layer of material having a contrasting color to said target pattern means. 4. The target of claim 1 wherein said substrate means comprises an ionomer resin and said target pattern means comprises an ink layer. 5. The target of claim 4 wherein said ionomer resin is transparent and is backed by layer of material having a contrasting color to said target pattern means. 6. The target of claim 4 wherein said ionomer resin has a contrasting color to said target pattern means. 7. The target of claim 1 wherein said substrate means has a target pattern congruent with the target pattern on said target pattern means. 8. The target of claim 7 wherein said substrate means comprises a transparent film backed by a layer of material having contrasting color to said target pattern means, said congruent target pattern being formed on said layer of material. 9. The target of claim 8 wherein said layer of material is paper which is dyed with a brightly-colored fluorescent ink. 10. The target of claim 1 wherein said target pattern means comprises at least one substantially larger-than-bullet-size flat member adhesively secured to said substrate means. 11. The target of claim 1 wherein said target pattern means comprises a mosaic of substantially larger-than-bullet-size flat members adhesively secured to and covering said substrate means and carries a target pattern thereon.

EXAMPLE: The first writing implement claim described earlier was so broad that it clearly read on (described) prior inventions (such as pencil, chalk, pen, quill, crayon). This fact should preclude the issuance of a patent and would make invalid any patent that did issue on the invention described in that claim. The narrower version of the writing implement claim, however, tended to exclude many prior inventions. For instance, by limiting the claim to a liquid means, the claim excluded pencils and chalk. The narrower claim would therefore have a better chance of being considered novel and nonobvious.

Because claims must be narrow enough to distinguish the invention from previous developments, but broad enough to provide meaningful protection, the primary goal of all patent claim drafters is to draft claims as broadly as possible, given the constraints of the state of prior knowledge or art (inventions and developments).

Related terms: dependent claim; independent claim; infringement of patent; limiting reference; means plus function clause; multiple claims; patent application; prior art, defined; specification, defined.

Class Definitions manual

See classification of patents.

classification of patents

The U.S. Patent and Trademark Office (PTO) assigns numbered classes and subclasses to inventions for the purpose of classifying patents issued on them and facilitating retrieval of these patents in the course of a patent search. To conduct a search for prior patents relevant to an invention, one must first determine its proper classification.

There are roughly 300 main classes, and an average of more than 200 subclasses under each main class. An invention will fall within at least one of the 66,000 separate classifications, and sometimes several.

Fortunately, the PTO publishes resources, available at the PTO website (www.upto.gov) and in all patent and trademark depository libraries, to help a patent searcher find the correct classification(s):

• Index of U.S. Patent Classification. All 66,000 categories (classes and subclasses) used to classify patented U.S. inventions are listed alphabetically. To conduct a patent search for prior patents relevant to an invention, it is useful to first determine the class and subclass within which the invention falls.

• Manual of Classification. This loose-leaf manual lists by number the 66,000 classes and subclasses used by the PTO to categorize inventions.

• Class Definitions. This loose-leaf manual contains brief definitions of each classification and subclassification used to categorize patents. The manual helps a patent searcher determine the appropriate categories to search in.

  Related terms: patent search.

co-inventors

In situations where an invention is attributable to the creative effort of more than one person, everyone who makes a creative contribution to the invention (as described in at least one claim in the patent application) is considered a co-inventor.

EXAMPLE: Tom Haberfeld and Bonnie Rand jointly conceive of and design a miniature EEG machine (a machine that measures brain waves), which allows its wearer to monitor his or her own brain waves via a wristwatch-like device. To make sure the concept is viable, Tom and Bonnie get their engineer friend, Clark Bromsky, to build a test model according to their specifications. Bonnie and Tom would be listed as “co-inventors” of the invention because they were the sole creative contributors to the invention’s structure. Clark would not be considered a co-inventor, assuming his model was made according to set specifications and did not encompass creative additions to the invention. If, on the other hand, Clark had significantly altered the invention’s basic specifications and design while building the test model, he also might qualify as a co-inventor.

When filing a patent application, it is extremely important to accurately identify the inventor or co-inventors. Leaving an inventor out or listing someone who doesn’t qualify may later cause an issued patent to be declared invalid and unenforceable (if an action is brought in court to enforce the patent) because an accurate description of the true inventors in the patent application is one of the basic requirements for a valid patent.

Related terms: inventor, defined; patent application.

combination patent

This is a colloquial phrase for patents on inventions that are combinations of prior existing inventions or technology. Suppose an inventor combines a public domain bicycle frame with a public domain movable tread design previously utilized on a snowmobile, and creates a new type of device that travels efficiently on sand. Because the invention combines two public domain inventions, a patent issued on it will commonly be referred to as a “combination patent.”

Earlier court decisions in patent cases suggested that a combination invention must demonstrate a new or surprising result, called “synergism,” before it could qualify for a patent. However, the Court of Appeals for the Federal Circuit has ruled that the phrase “combination patent” has no operational meaning under the patent laws, and that virtually all inventions can be said to be combinations of prior existing technology. In short, under the reasoning of this decision, an invention need only meet the basic requirements for a patent (statutory subject matter, novelty, nonobviousness and utility). The fact that it is a combination of prior developments has no legal effect, and no showing of synergism is required.

Commissioner for Patents

The Commissioner for Patents is the title of the person who manages the patent division of the U.S. Patent and Trademark Office. The previous title for this position was “The Assistant Commissioner for Patents.”

Related terms: Director of the U.S. Patent and Trademark Office; U.S. Patent and Trademark Office.

community patent

See European Patent Convention.

composition of matter

A composition of matter is one of the five categories of things (collectively, statutory subject matter) that qualify for a patent. Generally, compositions of matter consist of chemical compositions, conglomerates, aggregates or other chemically significant substances that are usually supplied in bulk, in liquid, gas or solid form. They include most new chemicals, new forms of life created by gene splicing techniques (the genetic mixing constitutes the composition), drugs, road-building compositions, gasoline, fuels, glues and paper.

Related terms: non-statutory subject matter; statutory subject matter.

compulsory licensing of a patent

In some countries, a patent owner is legally required to allow others to utilize his or her invention in exchange for reasonable compensation. Compulsory licensing of a patent doesn’t happen in the U.S., because a U.S. patent owner has the right to not produce, manufacture, create or implement his or her invention. This, of course, means that the public may never benefit from the invention—at least until the patent has expired.

Under the General Agreement on Tariffs and Trade (GATT), compulsory patent licenses are disfavored and will probably disappear from the countries that used to provide for them.

Related terms: GATT (General Agreement on Tariffs and Trade); licensing of an invention; working a patent.

computer programs and patents

See software patents.

computerized patent search

See patent search, computerized.

conception

There are two foundations of patent rights: conception and reduction to practice. Conception is the mental part of inventing, including how an invention is formulated or how a problem is solved. Reduction to practice means that the inventor can demonstrate that the invention works for its intended purpose. These two events and the dates upon which they occur can affect determinations of prior art and the date of invention.

Inventors can document conception by maintaining a notebook or by filing a document disclosure under the PTO’s Disclosure Document Program. It is a common myth that an inventor can document conception by mailing a description of the invention to him or herself by certified or registered mail and keeping the sealed envelope. The PTO has ruled that such “Post Office Patents” have little legal value.

Related terms: reduction to practice; Disclosure Document Program, date of invention.

concerted refusal to deal

If two or more businesses jointly boycott (discriminate against, refuse to buy from or refuse to sell to) one or more other businesses, such activity can be an antitrust violation if commerce has been significantly affected. If a concerted refusal to deal stems from the selective use of one or more patents, these patents may be declared invalid if the antitrust laws have been violated.

EXAMPLE: The three largest genetic engineering laboratories agree to share their patents through a patent pool arrangement. Competitors are not allowed to use the patents. This exclusion of competitors may constitute a concerted refusal to deal, resulting in the patents being unenforceable.

Related terms: antitrust law (federal) and patents; breaking a patent.

confidentiality of patent application

The U.S. Patent and Trademark Office (PTO) treats patent applications as confidential, making it possible to apply for a patent and still maintain the underlying information as a trade secret, at least for the first 18 months of the application period. Unless the applicant files a Nonpublication Request at the time of filing and doesn’t file for a patent outside the U.S., the PTO will publish the application within 18 months of the filing date. Because an application is published by the PTO, all of the secret information becomes public and the trade secret status of the application is lost.

However, if an applicant files a Nonpublication Request at the time of filing the application, the information in the patent application will become publicly available only if and when a patent is granted. If the applicant is not filing abroad and the patent is rejected, confidentiality is preserved because the PTO does not publish rejected applications. If the PTO approves the patent application, it will be published in the Official Gazette. Inventors are willing to accept this trade-off—loss of trade secrecy for patent rights—because the patent can be used to prevent anyone else from exploiting the underlying information.

If an applicant files a Nonpublication Request and then later files abroad, the applicant must notify the PTO within 45 days of the foreign filing. The PTO will then publish the application 18 months after the U.S. filing date (or as soon as possible after the 18-month period) and the applicant must pay a publication fee. If the PTO is not notified within 45 days, the application will be abandoned unless the applicant can demonstrate that the delay was unintentional and a stiff fee is paid.

Related terms: patent search; submarine patent.

Note

See also Part 1 (Trade Secret Law): patent application, effect on trade secrets.

constructive reduction to practice

An invention may legally be considered to have been reduced to practice even though no actual building and testing has occurred.

An invention is considered reduced to practice when any one of the following three events occurs:

• the inventor actually builds and tests the invention (actual reduction to practice)

• the inventor files a patent application on the invention (constructive reduction to practice), or

• the inventor files a Provisional Patent Application (PPA) on the invention (also a constructive reduction to practice).

The timing of when an invention was reduced to practice is important because in the event of a conflict between inventions, it is necessary to identify the first inventor, who is entitled to the patent. This determination depends on a number of important factors, including:

• who first conceived the invention

• after conception, who was most diligent in developing the invention, and

• who first reduced the invention to practice.

  Related terms: building and testing an invention; diligence in reducing to practice; interference proceeding; reduction to practice.

continuation application

This type of patent application may keep an original patent application alive after the patent examiner has issued a final office action rejecting one or more of the claims. A “continuation application” must be filed within three months after a patent application is rejected, unless an extension is obtained by filing an extension application and paying the appropriate fee.

A continuation application requires a new fee and new claims and will receive a new serial number and filing date. However, in the event an interference occurs (a conflict between two pending applications), and for purposes of determining the existence of prior art, the inventor will be entitled to the benefit of the original filing date. In other words, if someone else comes up with the same invention between an applicant’s original filing date and the continuation application filing date, the original filing date will control and the corresponding invention will be given priority.

The term “continuation application” is often used interchangeably with a “file wrapper continuing application (FWC).”

Related terms: continuation-in-part application (CIP); prosecution of a patent application; Request for Coninued Examination.

continuation-in-part application (CIP)

A continuation-in-part application (CIP) is an application filed subsequent to an original application which includes new material not covered in the original application. A CIP provides a way for an inventor to supplement an earlier patent application with new matter to cover improvements made since the first application was filed. The CIP receives the same filing date for matter that it and the original (or parent) application have in common. However, any claim in the CIP that covers the new subject matter is treated as being filed as of the date of the CIP.

Note that a continuation-in-part application should be distinguished from a continuation application, where the applicant reformulates his or her claims after a rejection by the PTO.

Related terms: continuation application; final office action; prosecution of a patent application; Request for Continued Examination.

contributory infringement of patent

The sale of an item that has been especially designed to work as a material part of a patented invention may be considered an infringement of the patent, called a contributory infringement, if the item itself lacks independent non-infringing use. Contributory infringement can occur even when the item being sold is itself not patentable. In essence, the contributory infringement doctrine recognizes that items especially modified for a patented invention will not generally be sold unless they are being used for an infringing purpose.

EXAMPLE: Bionics, Inc., a manufacturer of artificial human organs, patents and manufactures an artificial kidney containing several unique (but non-patentable) valves. If Empire Hospital Equipment Ltd. starts selling the modified valve separately, they may be held to be a contributory infringer of the kidney patent, unless they can show that the valves have an independent use that does not infringe the kidney invention.

Related terms: infringement action; infringement of patent.

Convention application

A patent application may be filed in accordance with the Convention for the Protection of Industrial Property, sometimes known as the Paris Convention. Under this treaty, a patent application must be filed in every country where patent protection is desired, within one year of the date that an application is first filed in any other member country. So, if a U.S. patent application has a filing date of February 5, 1997, all additional Convention filings in other countries or jurisdictions, including the Patent Cooperation Treaty and the European Patent Office, must be made by February 5, 1998.

Each Convention filing must be made in the language of the country where it takes place, and separate filing and search fees must be paid. Generally speaking, Convention applications in individual countries utilize a different and more costly procedure than do Convention applications under the Patent Cooperation Treaty.

Related terms: international patent protection for U.S. inventions; Patent Cooperation Treaty (PCT).

Convention for the Protection of Industrial Property

See Convention application.

Court of Appeals for the Federal Circuit (CAFC)

Often referred to as “Kafka,” this special federal court of appeals is responsible for hearing and deciding all appeals from patent infringement actions decided in the U.S. District Courts, as well as all appeals from decisions by the Board of Patent Appeals and Interferences (a branch of the PTO). The CAFC convenes in Washington, D.C., and also hears cases in other parts of the U.S.

cross-licensing

In a cross-licensing arrangement, two or more owners of separate patents cooperate so that each may use the other’s inventions. Because technologies such as automobile manufacturing, genetic engineering and semiconductor chip fabrication depend heavily on many inventions owned by a number of different companies, these companies commonly share their patents through cross-licensing agreements. By doing this, they can benefit from the state-of-the-art improvements in the particular field without having to pay royalties to all the relevant patent owners.

Related terms: improvement inventions; patent pools.

damages for patent infringement

See infringement action.

date of invention

In order to decide what prior art is with respect to any given invention, it’s first necessary to determine the date of invention. Most inventors think it’s the date on which one files a patent application. However, the date of invention is the earliest of the following dates:

• the date an inventor filed the patent application (provisional or regular)

• the date an inventor can prove that the invention was built and tested (known as “reduction to practice”) in the U.S. or a country that is a member of North American Free Trade Association (NAFTA) or the World Trade Organization (WTO) (35 United States Code, Section 104) or

• the date an inventor can prove that the invention was conceived in a NAFTA or WTO country, provided the inventor can also prove diligence in building and testing it or filing a patent application on it. Most industrial countries are members of the WTO and a listing of WTO signatories is provided at the PTO website (www.uspto.gov).

An inventor who maintains proper records and is diligent afterwards in the invention process will be able to use the date of conception, which is usually several months before the filing date. Once the date of invention is determined, the relevant prior art comprises everything available before that date or anything available about the invention more than one year prior to filing the application.

Related terms: reduction to practice.

declaratory judgment of non-infringement, invalidity and unenforceability of patent

This is a court ruling that allows a business to proceed making or using a device without fear that it might later be held to infringe a particular patent. This type of ruling is commonly sought when a business desires to commercially utilize a device or process arguably described in a patent owned by someone else, but is unable to reach a satisfactory licensing agreement with that party. The business files an action in court, requesting a judge to declare (issue a declaratory judgment) that the patent is either invalid or unenforceable, or that it doesn’t apply to the device or process in question. If the business wins, it can go ahead to develop the invention unless the patent owner appeals the case. If the business loses, it can appeal, but most likely will end up having to license the invention from the patent owner.

Related terms: infringement of patent; licensing of an invention.

defenses to a patent infringement claim

When a patent owner takes legal action to enforce a patent by alleging that it has been infringed (that is, the invention described in the patent has been made, used or sold without the patent owner’s permission), there are a number of possible defenses.

Depending on the facts in dispute, some defenses attempt to render the patent unenforceable; others challenge its basic validity. The primary difference between an unenforceable patent and an invalid one is that an unenforceable patent’s owner can usually take steps to make it enforceable, whereas an invalid patent cannot be made valid. In either event, if a party accused of infringement can establish that at that time the patent is either invalid or unenforceable, the alleged infringer will win the lawsuit and may continue to use the invention without paying the patent owner.

Because of the variety of potential defenses to an infringement action, many observers feel that a patent is not worth a great deal if there’s significant economic motivation to infringe it. According to this view, the more valuable a patent, the more likely it is that large economic interests will mount a fierce and expensive court challenge to the patent’s validity. And the more difficult it is to enforce a patent, the less it is worth to its rightful owner. (Sound like a paradox? Welcome to patent law.)

On the other hand, billions of dollars are awarded to patent owners every year as a result of successful infringement actions, and numerous inventors (both small and institutional) make good money from licensing others to use the inventions covered by their patents.

Related terms: infringement action; infringement of patent; intervening right; statute of limitations, infringement action; unenforceable patent.

defensive disclosure

Publishing the details of an invention legally transforms the invention into prior art, which in turn precludes others from obtaining a patent on it. A defensive disclosure consists of publishing a description of an invention in the Official Gazette or another publication that is likely to be noticed by the U.S. Patent and Trademark Office (PTO), prior to a patent being issued.

A defensive disclosure is often used after an inventor files a patent application and decides not to pursue it further, but also doesn’t want a subsequent filer of an application on the same or similar invention to have monopoly rights. Defensive disclosures are also used by companies that don’t think a particular area of technology (such as software) should be subject to the patent laws, and therefore disclose their technology to prevent others from patenting it and extracting royalties.

There are two basic approaches to making a defensive disclosure: a Statutory Invention Registration procedure offered by the PTO and a preemptive private publication. The PTO procedure is much more expensive than the private approach.

To publish defensively under the Statutory Invention Registration program, an inventor can file a document with the PTO that:

• requests the PTO to publish the patent application’s abstract in the Official Gazette

• formally abandons the patent application, and

• authorizes the PTO to open the patent application to public inspection.

  EXAMPLE: Lou Swift invents a new form of portable energy source that allows most residential users of electricity to disconnect from the common electrical grid. After Lou applies for a patent, she comes to believe that the cause of peace and freedom would best be served by the invention being placed in the public domain, therefore becoming unpatentable. She utilizes the procedures described above to turn her application into a prior art reference that precludes anybody else from obtaining a patent on her invention. (This example is based on a theme developed in Ecotopia Emerging, by Ernest Callenbach.)

The private and less expensive approach to making a defensive disclosure is to publish the invention in journals published just for this purpose, such as International Technical Disclosure and Research Disclosure. Also, the Software Patent Institute (www.spi.org) provides a defensive disclosure program for software-based inventions.

Related terms: confidentiality of patent applications; Official Gazette (OG); prior art reference; Software Patent Institute; Statutory Invention Registration (SIR).

dependent claim

The scope of a patent is determined by the way the underlying invention is described in the patent claims (precise single sentence statements that articulate the exact nature of the invention). There are two basic types of patent claims: independent and dependent. Independent claims are statements that stand by themselves. Dependent claims are statements that rely on another claim for part of their description. In other words, each dependent claim must be read (interpreted) by incorporating the wording of each claim to which it refers, which may be an independent claim or another dependent claim.

The typical patent application contains several independent claims, each of which are referred to by several additional dependent claims. (Samples of dependent and independent claims are provided in “claims, defined.”)

Related terms: claims, defined; independent claim.

design around

To design or build a device or process that is similar to but doesn’t infringe on an invention protected by a patent is referred to as “designing around” the patent. The scope of protection acquired under a patent is determined by the wording of the patent’s claims. Thus, any device, process, or substance containing the same elements described in a patent’s claims can be said to infringe the patent. Conversely, a device or process that contains fewer or different elements does not infringe the patent (technically, the patent’s claims do not “read on,” or literally describe, the infringing device). Therefore, by studying the claims associated with a specific patent, it is often possible to build or design a device or process very similar to that described in the patent without legally infringing the patent’s claims.

EXAMPLE: Fred Akama invents and patents a small radiator-type device that uses hot water to dry and warm towels. One of the claims for his invention describes it as consisting of plastic. Bonanza Bathroom Products (BBP) creates a similar device, but uses a metal alloy that doubles the ability of the device to retain heat. BBP probably has not infringed Fred’s patent, because it designed around the invention by using a different element that produces a different result.

To try to prevent such “designing around” activity, Fred’s patent claim should have been broader to start with. Instead of limiting his invention to plastic, Fred’s claim might have described “an inflexible means through which hot water can be channeled at normal domestic water pressures, the heat retained over a period of time, and towels folded over for the purpose of drying.”

There is one important legal restriction on the ability to design around a patent claim. A court can decide that the differences in the basic elements of the two inventions—in the previous example, the type of substance used and the extra heat retention—are immaterial (unimportant) to the overall invention. In that event, infringement will have occurred under the doctrine of equivalents, which allows infringement to be found when two inventions work in the same way to produce substantially the same result.

Related terms: claims, defined; doctrine of equivalents.

design patents

A design patent will be issued by the USPTO for any “new, original and ornamental design for an article of manufacture” (35 United States Code Section 171). This includes three types of designs:

• surface ornamentation—that is, a design applied to or embodied in an article of manufacture

• a product shape or configuration, and

• a combination of the first two categories.

Courts have limited design patents to one sense, vision—that is, the appearance presented by the article. A design patent will not be granted for sounds, smells or tastes that ornament products. In addition, the design must be capable of reproduction and not merely the chance result of a method. A water fountain display—the combined appearance of the water and the underlying sculpture—is suitable subject matter for a design patent because it is definite (even though not permanent) and can be reproduced.

The protected design must be ornamental, not functional.

EXAMPLE: A personal computer designed to resemble a classical robot might qualify for a design patent as long as the robot characteristics were purely ornamental. But if the robot characteristics were functional in some way—for instance, they provided the computer with mobility—a design patent on these characteristics would be precluded.

Often, two patents will be submitted for the same device: a utility patent covering the device’s functional characteristics, and a design patent protecting the device’s ornamental characteristics. In our robot-computer example, it might be possible to obtain both types of patents if they cover different aspects of the device.

Although design patents are relatively easy to obtain, the fact that the design by definition lacks utility normally makes it easy to create another design that will also be novel and interesting without violating the design patent.

Related terms: design around.

diligence in reducing to practice

An inventor’s diligence in reducing an invention to practice consists of steady progress toward the goal of either:

• actual reduction to practice—building and testing a working model of the invention, or

• constructive reduction to practice—filing a provisional or regular patent application on it.

If two inventors come up with the same invention about the same time, the first inventor who can also show diligence in reducing the invention to practice, usually through documentation of building and testing activity or activity related to the preparation of a patent application, is most likely to get the patent.

EXAMPLE 1: In March 2000, Joe Vermont conceives of an invention that produces heat from a car heater the instant the car is started. Joe steadily applies himself during the next six months to building a working model of the insta-heater, and in October 2000 applies for a patent on it. Sal Fortuna independently conceives of the same invention in June 2000, but rather than building and testing a working model, Sal files a patent application on the invention in July 2000. Under these facts, Joe should get the patent because he was first to conceive of the invention and was diligent in reducing the invention to practice, even though his patent application was later than Sal’s. Although Sal was also diligent in reducing the invention to practice (called constructive reduction to practice in this case) by filing the patent application a month after he conceived of the invention, he wasn’t the first to invent, so he would lose out to Joe.

EXAMPLE 2: Using the same insta-heater invention, assume now that Joe didn’t get around to building and testing his working model until September 2000. He then filed a patent application in December 2000. Under these facts, the patent would probably go to Sal, because Joe was not diligent in reducing the invention to practice, while Sal was.

Related terms: constructive reduction to practice; interference proceeding; reduction to practice.

direct infringement of patent

See infringement of patent.

Director of the U.S. Patent and Trademark Office

This is the title of the person who runs the U.S. Patent and Trademark Office, a branch of the U.S. Department of Commerce. The full title is actually: Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Prior to 2000 the title for this position was the Commissioner of Patents and Trademarks.

Related terms: Commissioner for Patents; U.S. Patent and Trademark Office.

Disclosure Document Program (DDP)

This U.S. Patent and Trademark Office (PTO) program allows inventors, for a nominal fee, to file a signed document, called a disclosure, that preliminarily describes their invention. Later, when the inventor applies for a patent on the invention, the disclosure can be used to prove the date of conception of the invention, should this become necessary because of an interference with another patent application.

There are other ways to document inventive efforts, such as keeping a notebook or producing disclosures that are signed and witnessed. Some experts prefer these other methods and think the Document Disclosure Program should not be used unless an inventor has no witnesses.

The DDP should not be confused with a Provisional Patent Application (PPA), which may be filed with the PTO on an invention for an $80 fee ($160 for large entities). A PPA is the legal equivalent of constructive reduction to practice as long as it meets the standards for disclosure required in the specification portion of a regular patent application.

Related terms: disclosure requirement for patents; interference, defined; interference proceeding; notebook; Provisional Patent Application (PPA).

disclosure requirement for patents

A patent application must disclose enough about the invention to enable a person with ordinary skill in the art (technology used in the invention) to build or develop it. The reason for the disclosure requirement is simple. A disclosure that is detailed enough to enable the invention to be built enhances the public’s knowledge of the technology and ideas involved in the invention. In exchange for this public benefit, an inventor earns the right to a statutory monopoly over the right to make, use and sell the invention.

If the information necessary to build the invention is not sufficiently disclosed in the application, a patent that is issued on the invention may be declared invalid and the patent therefore not enforceable. As a practical matter, the fact that the U.S. Patent and Trademark Office approved the application in the first place is generally relied on by courts to reject this particular defense.

Related terms: patent application.

divisional application

If a patent examiner rejects a patent application because it claims two or more inventions (a patenting no-no), the common inventor response is to restrict the application to one invention of the inventor’s choosing. But if the inventor doesn’t wish to abandon the other “nonelected” invention, he or she can file a separate divisional application to cover it. The divisional application will be entitled to the filing date of the original application (which is referred to as the parent application, once a divisional application is filed).

What happens if the patent examiner was wrong, and a court later finds that there was, in fact, only one invention, even though the U.S. Patent and Trademark Office (PTO) issued two (or more) patents on it? Although this violates another patenting rule (the statutory rule against double patenting), both patents will be upheld because the restriction of the original patent application was imposed by the PTO.

Related terms: abandonment of patent; double patenting; nonelected claims; prosecution of a patent application.

doctrine of equivalents

A secondary method for deciding whether a patent is being infringed, the doctrine of equivalents considers whether a later device or process does the same work in substantially the same way, to accomplish the same result as a patented invention. If it does, then patent infringement will be found to exist.

The primary method used by the courts to assess possible patent infringement is to compare the literal language of each element of the patent’s claims with each element of the device or process claimed to be infringing. (In patent jargon, do the patent claims “read on” the infringing device or process?) However, even if a patent’s claims don’t literally “read on” an allegedly infringing device or process, infringement may be found under the doctrine of equivalents so long as the element of the device is the “equivalent” of the claimed element. A device element is equivalent if it performs the same function in the same way to achieve the same result as the claim element, or the role of the device element is substantially the same as that of the claim element.

The doctrine of equivalents is intended to prevent designing around a patent on hyper-technical grounds. Unfortunately, there is no logical dividing line between (1) non-infringement based on legitimate designing around an invention, and (2) infringement based on the doctrine of equivalents. It is up to the courts to decide, on a case-by-case basis, if inventions are substantially equivalent.

In 2000, a federal appeals court barred the use of the doctrine of equivalents for any amended patent claims. In 2002, the U.S. Supreme Court struck down this absolute bar to the doctrine of equivalents and replaced it with a less arbitrary standard. Under the Supreme Court’s standard, all amended claims are presumed to be narrowed so as to bar the doctrine of equivalents. But this presumption can be rebutted if a patent owner can demonstrate that the amendment involved a feature that was “unforeseeable at the time of the application” or “for some other reason” could not be included in the original claim. In that case, the patent owner can use the doctrine of equivalents. (Festo Corp. v. Shoketsu Kinzoku Kabushiki Co. Ltd. 122 S.Ct. 1831, (2002).)

Related terms: design around; infringement of patent; negative doctrine of equivalents; Festo.

double patenting

If two patents are obtained on (or claim) a single invention, it’s referred to as double patenting. Double patenting is not allowed under the patent laws and both patents can later be invalidated. However, if double patenting results from a divisional application required by the U.S. Patent and Trademark Office (PTO) because of the PTO’s misperception that two inventions were being described in the original patent application, under a special statute (35 United States Code, Section 121) this rule does not apply and the patents will be considered valid.

Related terms: divisional application.

drawings, patent application

Visual representations of an invention must be included in the patent application. These drawings should show all the features recited (described) in the claims.

If an invention is a thing (including machines or articles of manufacture), the drawings must show features of the invention that are different from those known in the prior art. A drawing for a process should consist of a flowchart showing its sequence of steps.

Drawings are generally not required for inventions consisting of compositions of matter unless:

• the inventions consist of structures that can be shown in a cross-sectional representation, or

• a flowchart showing the process of manufacture is relevant.

  Related terms: disclosure requirements for patents; patent application.

duration of patents

Utility patents—the most common kind—expire 20 years after the filing date of the regular formal patent application. This means that the period of time the patent is actually in force will depend on how long it takes the patent to be examined. For instance, if the regular patent application is filed on December 1, 2001, and the patent issues on December 1, 2003, the patent will be in force for 18 years.

Effective June 2000, every patent is guaranteed an in-force period of at least 17 years. The patent term will be extended for as long as necessary to compensate for any of the following:

• any delay caused by the PTO failing to examine a new application within 14 months from filing

• any delay caused by the PTO failing to take any one of the following actions within four months:

  • reply to an amendment or to an appeal brief

  • issue an allowance or office action after a decision on appeal, or

  • issue a patent after the issue fee is paid and any required drawings are filed

• any delay caused by the PTO failing to issue a patent within three years from filing, unless the delay was due to the applicant filing a continuation application or buying a delay to reply to an Office Action, or

• any delay due to secrecy orders, appeals, or interferences.

Because the law creating the 20-year patent term became effective June 8, 1995, patents issued prior to that date—or which were pending on that date—will expire 20 years from their filing date or 17 years from their issue date, whichever period is longer. (35 United States Code 154(c)(1).)

Design patents last for 14 years from the date the patent issues, and plant and utility patents last for 20 years from the date of filing.

Related terms: filing date; in-force patent; patent term extension.

duty of candor and good faith

This duty is owed to the U.S. Patent and Trademark Office (PTO) by every patent applicant in connection with the information and disclosures contained in the patent application. Under rules issued by the PTO, the applicant must disclose:

• all known instances of anticipation (events or references that might cause the PTO to determine that the invention isn’t novel)

• pertinent prior art that might bear on the question of nonobviousness

• the preferred embodiment (best mode) of the invention, and

• any other information known to the applicant that bears on the patentability of the invention and the proper scope of the patent claims.

Failure to comply fully with the duty of candor and good faith can result in rejection of the patent application by the PTO, or a later finding in an infringement action that the applicant committed fraud on the PTO (if the noncompliance was willful or negligent). In the latter case, the patent may be declared invalid even if the undisclosed information would not have invalidated the patent as such.

EXAMPLE: In 2000, Patricia invented a device and a process that allowed wind velocities to be differentially measured according to very small portions of space. The results of the measurements could then be fed into a computer, and the best placement for windmills could be determined. Patricia made the invention for her own home in the country and decided not to patent it, due to the plentiful supply of centralized electrical energy at that time. Patricia let some of her neighbors use the invention on an as-needed basis, which may have constituted prior public use of the invention, which in turn could be considered prior art.
Three years later, oil prices soar and Patricia applies for and receives a patent. In her patent application, she neglects to mention the use of the device by her neighbors, a fact she should have disclosed under the applicant’s duty to disclose known relevant prior art. In 2005, a leading power company begins to market Patricia’s device across the country without a license from Patricia. If Patricia sues the company for infringement or her patent, she may find that her patent cannot be enforced. Why? Because she failed to disclose relevant prior art to the PTO, even though the information in question, if disclosed at the time, might not have barred issuance of the patent. If this information comes out at trial, the judge may find that she violated her duty of candor and good faith.

Related terms: anticipation; defenses to a patent infringement claim; disclosure requirement for patents; fraud on the Patent and Trademark Office.

elements of invention

See claims, defined.

enabling disclosure

The description of an invention included (“disclosed”) in a patent application must be in sufficient detail as to “enable” a person with ordinary skill in the art to build or develop it (“work it”) without having to apply any inventiveness of his or her own.

Related terms: disclosure requirement for patents.

equivalents, doctrine of

See doctrine of equivalents.

European Patent Convention

This treaty covers patent law relationships, primarily among the members of the European Community (the Common Market), plus a few other countries.

Under the European Patent Convention (EPC), an inventor need make only one filing and undergo one examination procedure to obtain patent protection in all member countries. Filings and examinations are conducted by the European Patent Office in Munich, Germany, and The Hague, Netherlands. A patent issued under the EPC, called a community patent, lasts for 20 years from the date of application, but must be registered in each country.

Related terms: Convention application; Patent Cooperation Treaty (PCT).

European Patent Office

See European Patent Convention.

examiners, patent

See patent examiners.

exclusive patent license

A binding agreement in which a patent owner (the licensor) grants another party (the licensee) the sole (exclusive) right to make, use and/or sell an invention covered by the patent is known as an exclusive patent license.

Sometimes the grant of rights is for all purposes, but often it is limited to a specific context. For example, sales may be restricted to the U.S., to a particular period of time, or for a particular purpose. However, the particular right is granted exclusively to the person or business receiving it. For example, a patent owner could grant one company the exclusive right to make and sell the invention in the United States and another company the exclusive right to make and sell it in the European Community.

Related terms: geographic patent license; non-exclusive patent license.

exhibiting an unpatented invention

Using or exhibiting an unpatented invention in public in an unrestricted (nonconfidential) context prior to filing a provisional or regular patent application can constitute a public use, which would qualify as prior art and later bar a patent from being issued under the anticipation doctrine.

Related terms: anticipation; experimental use of an unpatented invention; public use.

experimental use of an unpatented invention

An unpatented invention may be used or exhibited in public for experimental purposes—that is, to test or improve the invention. Experimental use is not considered a public use or a disclosure, and therefore won’t bar a patent under the anticipation rule.

Many inventions need to be tested in public one or more times before the inventor is ready to file a patent application. However, if the public use is not truly experimental in nature, such use may bar a patent unless an application for the patent is filed within one year of the use.

Related terms: anticipation; exhibiting an unpatented invention; public use.

expiration of patent

See duration of patents.

false marking of invention

See marking of an invention.

Federal Circuit Court of Appeals

See Court of Appeals for the Federal Circuit (CAFC).

Federal Trade Commission proceeding

Under this administrative process, a patent owner can get an order barring devices that infringe the patent from being imported into the U.S.

Related terms: international patent protection for U.S. inventions.

Festo v. Shoketsu

In 2000, in a case involving a patent on parts used in robotic arms, a federal appeals court ruled that a patent owner could not assert the doctrine of equivalents if the patent claim at issue had been amended during the application process. The doctrine of equivalents allows a patent owner to stop an infringer who, by using equivalent parts or elements, manages to create an invention that performs the same function in the same manner as a patented invention—for example, if an infringer uses aluminum wire when the original patent claimed the use of copper wire.

In 2002, the U.S. Supreme Court struck down this absolute bar to the doctrine of equivalents and replaced it with a less arbitrary standard. Under the Supreme Court’s standard, all amended claims are presumed to be narrowed so as to bar the doctrine of equivalents. But this presumption can be rebutted if a patent owner can demonstrate that the amendment involved a feature that was “unforeseeable at the time of the application” or “for some other reason” could not be included in the original claim. In that case, the patent owner can use the doctrine of equivalents. For example, the patentee could show that, at the time of the amendment, one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. (Festo Corp. v. Shoketsu Kinzoku Kabushiki Co. Ltd., 122 S.Ct. 1831, (2002).)

field of invention

The “field” of an invention is colloquial for the classification or subclassification into which an invention falls. For instance, an invention involving gene splicing might be said to be in the “genetic engineering field,” while an invention involving computers would fall within the “electronics field.”

These terms have no legal significance. The similar phrase “field of search” is related to how patents are categorized for search purposes.

Related terms: classification of patents; patent search.

file wrapper

The file the U.S. Patent and Trademark Office (PTO) maintains for each patent application is known as a file wrapper. This file contains the application itself, as well as copies and notes of all correspondence between the PTO and the applicant regarding amendment and issuance of the patent. For example, if a letter is sent to the PTO regarding a pending patent application, it will be added to the applicant’s file wrapper.

Related terms: continuation application; file wrapper estoppel; patent application.

file wrapper continuing application (FWC)

See continuation application.

file wrapper estoppel

This is a rule of court under which patent applicants are bound by the statements they make in their patent application and subsequent correspondence and documents filed with the U.S. Patent and Trademark Office (PTO) in the course of prosecuting the application. The term “file wrapper” is jargon for the file the PTO maintains on an invention and the term “estoppel” is a legal principle that holds people to their words even if they later want to weasel out of them.

The file wrapper estoppel rule becomes pertinent if the patent owner should ever seek enforcement of his or her patent in court. In that event, the inventor would be prevented from describing the scope of the invention differently from how it was described in earlier documents in the PTO patent file (again, colloquially referred to as the “file wrapper”). In short, an inventor is stuck with what’s already been told to the PTO—and cannot later try to broaden a patent’s coverage that has been surrendered by original claim language, or in an amendment or a written argument during the earlier prosecution stage.

Because of the file wrapper estoppel rule, it is good practice to follow these two rules:

• Do not say anything negative about an invention in a patent application (your words may come back to haunt you).

• Draft patent claims as broadly as possible in light of the pertinent prior art.

  EXAMPLE: Otto Makespence invents a medical tool that uses a fiber optic strand, laser light, specially cloned antibodies and certain chemicals to detect the presence of various substances in human tissue. In his patent application, Otto drafts his claims very broadly, without a limiting reference to his use of fiber optics. After the PTO rejects the initial claims, Otto amends his application so that the claims now specify fiber optics as the method of transmitting the laser light. In his cover letter transmitting the amendment to the PTO, Otto admits that his original claim was wildly overbroad and thanks the examiner for helping him pare his claim down to the appropriate scope. The patent is then granted. Ten years later, Lewis Opalenik, a famous heart surgeon, makes and uses a similar diagnostic tool, using a magnetic rather than fiber optic means for transmitting the laser light waves. If Otto brings an infringement action against Lewis, alleging that his patent is sufficiently broad in scope to preclude Lewis’s device, the court will hold Otto to his admission about the overly broad scope of his original claim, as found in the file wrapper, which clearly limits his patent to a fiber optic means.

  Related terms: claims, defined; prosecution of a patent application.

filing date

Assigned to every application by the U.S. Patent and Trademark Office (PTO), the filing date is indicated on a “filing receipt” that the PTO sends to the applicant. The date is usually one to four days after the patent application was mailed, or the date it’s mailed if sent by U.S. Postal Service Express Mail.

The filing date is crucial for a number of reasons, including the following:

• The filing date starts the period within which a patent application must be filed in other countries to receive patent protection. If a Convention application in Germany, for instance, is not filed within one year after the U.S. filing date, German patent protection will be precluded. If, however, the applicant files under the Patent Cooperation Treaty within one year of the U.S. filing date, the applicant is allowed a longer time period to file in Germany.

• The filing date closes the one-year period during which an inventor can publicly use, work, describe, or place the invention on sale in the U.S. without the anticipation rule being applied to bar a patent on it.

• The filing date shuts the door on all subsequent developments by other inventors from being considered as prior art. That is, any developments that occur after the filing date will not be considered as prior art that would preclude a patent (which must be novel or nonobvious).

• The filing date is when the law considers an invention to be first reduced to practice (called constructive reduction to practice), absent evidence that it was actually reduced to practice at an earlier time by building and testing it. In the event of an interference (pending applications by different inventors covering the same invention), the inventor who filed first will receive the patent unless another inventor can show that he or she conceived of the invention first and then diligently set about to reduce it to practice or actually reduced it practice first by building and testing it.

A Provisional Patent Application (PPA) may be filed up to one year prior to filing a regular patent application. The PPA filing date will count as a constructive reduction to practice, and serve as the date for deciding whether the invention has been anticipated by prior art. However, the regular patent application filing date—not the PPA filing date—will count as the beginning of the patent term, which expires 20 years from date of “filing,” and will also begin the year period in which a patent application must be filed in many foreign jurisdictions—if patent protection is sought in them.

To take advantage of the earlier filing date, the regular patent application must specifically claim that date, and the PPA must meet the rigorous standard for disclosure of the invention required of regular patent applications.

Related terms: anticipation; interference, defined; international patent protection for U.S. inventions; prosecution of a patent application; Provisional Patent Application (PPA).

filing fees

See application filing fees; issue fee.

final office action

The patent examiner’s decision as to whether or not to issue a patent is known as a final office action. Despite the name, final office actions are not necessarily “final.” A patent examiner can be petitioned to reconsider the application. And, even if the examiner refuses to budge, the applicant can:

• file a continuation application

• agree to amend the application to exclude a claim altogether (if the argument is about a particular claim), or

• appeal the decision to the Board of Patent Appeals and Interferences.

Normally, the final office action occurs after the patent applicant has been afforded at least one opportunity to amend the application (in response to a first office action which raised problems with the application). Most commonly, the applicant will be expected to revise one or more of the claims in the amendment, thereby avoiding an overlap with prior art that otherwise would preclude a patent from issuing. Also, technical mistakes in how the application describes the invention, how the claims are constructed and how the drawings depict the invention are typical subjects of an amendment.

Related terms: Board of Patent Appeals and Interferences; continuation application; prosecution of a patent application.

first office action

This term refers to the patent examiner’s first response to a patent application. Often, the first office action involves the rejection of all or most of the claims in an application (in the trade, humorously termed a “shotgun rejection”) on the ground that one or more prior art references render the invention obvious. The applicant can file a response within three months (extendable for up to six months) that either amends the claims or satisfactorily explains to the patent examiner why the prior art references found troublesome by the examiner are not pertinent.

Related terms: prosecution of a patent application; swearing behind a prior art reference.

first to file countries

Under the first to file system, an inventor who is the first to file an application for a patent on an invention is given absolute priority over other inventors. All countries except the U.S. use the first to file system.

The laws providing for this absolute priority are sometimes termed “race statutes,” because they award a patent to the inventor who wins the race to the patent office. Because the first to file is the one who gets the patent, interference hearings (to determine priority of inventorship) do not exist in first to file countries, as they do in the U.S.

Related terms: first to invent countries; international patent protection for U.S. inventions.

first to invent countries

The U.S. awards a patent to the first party to actually come up with an invention (first to invent), as opposed to the first party to file a patent application (first to file). All other countries use the first to file system.

Related terms: first to file countries; international patent protection for U.S. inventions.

fraud on the U.S. Patent and Trademark Office

Any behavior by an applicant for a patent that attempts to mislead the U.S. Patent and Trademark Office (PTO) in regard to whether the invention deserves a patent is known as fraud. The most common type of fraud is failure to inform the PTO about one or more relevant prior art references known to the applicant. This issue is usually raised by an alleged infringer as a defense to court litigation seeking enforcement of a patent. Once found to exist by a court, fraud on the PTO usually results in the patent being judged unenforceable or invalid.

Related terms: defenses to a patent infringement claim; duty of candor and good faith; infringement action; unenforceable patent.

fully met by a prior art reference

When any single previous development or publication (prior art reference) contains all of the specific elements and limitations set out in a patent claim, the claim is said to be fully met by the prior art. If a claim is fully met, the invention is considered anticipated and is therefore not entitled to a patent.

EXAMPLE: Unaware of prior developments, Gary invents a mechanical match. When he tries to patent it, however, the U.S. Patent and Trademark Office points out a patent that shows (teaches) all of the elements in the claim describing Gary’s device. Because Gary’s claims are fully met, his device has been “anticipated” and is not entitled to a patent.

Related terms: claims, defined; novelty, defined; prior art reference.

GATT (General Agreement on Tariffs and Trade)

The General Agreement on Tariffs and Trade (GATT) is among the most important international trade treaties in our history. And it will have a large effect on U.S. patent law.

Under GATT, for patents filed after June 7, 1995, the U.S. patent monopoly ends 20 years from the application’s filing date, regardless of when the patent issues. However, effective June 2000, every patent is guaranteed an in-force period of at least 17 years. Previously, the patent monopoly lasted for 17 years from the date of issue, regardless of when the application was filed. (Patent applications that were pending—and patents which were in force—as of June 8, 1995, expire 20 years from filing or 17 years from issue, whichever period is longer.)

Another GATT-related change involves the Provisional Patent Application or PPA. Filing a PPA will legally “reduce an invention to practice,” provided that the inventor files an actual patent application a year after filing the PPA. The reduction to practice date is crucial if an inventor is faced with a competing patent application or a prior art reference with a close date. Formerly, an invention could be reduced to practice only by building and testing it or by filing a regular patent application.

Another GATT-related change involves foreign inventors. Under current U.S. law, an inventor may establish a date of invention earlier than the filing date of the inventor’s patent application in order to:

• obtain the patent in the face of a competing application (“win an interference”), or

• show that the invention predates a particular prior art reference (“swear behind cited prior art”).

But to do this, the inventor must show conception of the invention and either:

• actual reduction to practice (building and testing), or

• diligent efforts to reduce the invention to practice or file a patent application.

Before GATT, inventors could rely on activities only in the U.S., Mexico or Canada. For applications filed on or after Jan. 1, 1996, inventors will also be able to rely on activities in any GATT country.

The final GATT-related change enhances protection against patent infringement. Prior to GATT, a patent only gave its owner the right to exclude others from making, using or selling the patented invention. GATT expanded this right to include the situation when anyone else offers for sale or imports a patented invention, or, in the case of a process patent, to imports of products made abroad by the patented process.

genetic engineering and patents

Ordinarily, patents will not be issued on “inventions” consisting of items or substances that are found to exist in a natural state. The reason for this is obvious. Something occurring in nature without human intervention cannot have been the product of inventive activity.

There are several categories of patentable inventions that do, however, involve “natural” materials. One category is novel and nonobvious plants created through asexual breeding. Plant patents for new plants involving human inventiveness (breeding skill) are specifically authorized by statute (the patent laws and the Plant Variety Protection Act) in the U.S.

Genetic engineering is another field where “natural” materials (that is, bacteria, DNA, RNA) have been manipulated by humans through gene splicing and cloning techniques (such as Polymerase Chain Reaction or PCR) to produce new organic materials and life forms. These new substances and forms, and the processes used to create them, are also considered to be patentable under authority of the U.S. Supreme Court’s decision in the case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), as long as they meet the basic patent requirements of novelty, nonobviousness and utility.

Because Congress wants basic research in biotechnology to develop as quickly as possible, federal law permits a company to utilize biotechnical inventions patented by another company if the purpose of the use is strictly for research. This is an exception to the general rule that a patent prohibits the manufacture or use of an invention covered by an in-force patent. If, however, the company doing the research desires to commercially exploit the substance or process being utilized, it must obtain permission from the patent owner (usually accomplished by paying a license fee).

Related terms: laws of nature exception to patents; non-statutory subject matter.

geographic patent license

This type of exclusive license grants its holder (the licensee) the right to make, use or sell a patented invention within a specified geographic region only. For example, one license might allow its holder to exploit the invention commercially in the U.S., while another license might provide similar rights to another company, to be exercised solely in the European Community countries.

Related terms: exclusive patent license.

Graham v. John Deere case

This 1966 Supreme Court case created the guidelines for determining when an invention is nonobvious—a statutory requirement for an invention to be patentable. (The text of this case can be located in 383 U.S. 1.)

According to the Deere case, the following steps help to determine if an invention is nonobvious:

• Determine the scope and content of the prior art.

• Determine the novelty of the invention.

• Determine the skill level of artisans in the pertinent technology (art).

• Against this background, determine the obviousness or nonobviousness of the inventive subject matter.

• Consider relevant secondary factors, such as the commercial success experienced with the invention, whether there was a long-felt but unsolved need for the invention and whether others tried but failed to produce the invention.

In practice, these guidelines boil down to whether, taking all relevant factors into account, a person reasonably skilled in the art involved in the invention would find the invention to be a surprising or unexpected development at the time it was made.

Related terms: nonobviousness, defined; obviousness, defined.

grant of patent

A patent is granted when the U.S. Patent and Trademark Office issues a patent on an invention.

group art unit

The group art unit is an internal division of the U.S. Patent and Trademark Office to which a filed patent application is assigned for examination.

Related terms: prosecution of a patent application; U.S. Patent and Trademark Office (PTO).

improvement inventions

Technically, almost all inventions are “improvement inventions”—that is, inventions that improve upon other prior inventions.

Patent protection for small improvements on existing inventions in well-developed fields (many technological developments) are relatively easy to obtain. Conversely, in relatively new fields such as genetic engineering, small improvements may be considered too trivial or obvious to be granted a patent. This is true primarily because new fields of invention are much more supportive of new developments than are established fields, where the areas of potential improvement in existing techniques are more obvious.

A patent on an improvement invention only covers the improvement itself, and is thus subject to the rights of any holders of in-force patents on the other technology involved. This means that to commercially exploit the improvement invention, its owner must license the right to use the underlying invention. Often this is accomplished by cross-licensing (you can use mine if I can use yours) the two patents. Cross-licensing is extremely common throughout the industrial world.

EXAMPLE: A computer manufacturer makes an unexpected and novel improvement on an existing patented data bus (a device included in most microcomputers to move data from one part of the computer to another in an orderly way). The value of this improvement patent will depend heavily upon the degree to which appropriate arrangements can be made with the owner of the patent on the original data bus. This may not be difficult, because the original patent owner will likely want the right to commercially exploit the improvement patent. If so, the parties can enter into a cross-license agreement permitting them to use each other’s inventions for agreed upon compensation. If there are two in-force patents covering the original data bus, the improvement patent owner would have to come to terms with both patent owners to exploit the invention.

Related terms: cross-licensing; patent pools.

independent claim

An independent claim by itself describes an aspect of the invention without reference to any other claim. By contrast, a dependent claim refers to another independent or dependent claim. (Samples of dependent and independent claims are provided in “claims, defined.”)

Related terms: claims, defined; dependent claim.

Index of U.S. Patent Classification

See classification of patents.

in-force patent

A patent is said to be in-force (in effect) if all of the following are true:

• the patent’s statutory term has not yet has expired

• appropriate maintenance fees have been paid when due, and

• the patent has not been ruled invalid by the U.S. Patent and Trademark Office or a court.

Even when a patent is no longer in-force, it still is considered prior art when determining if a later invention qualifies for a patent.

Related terms: patent term extension; reexamination of patent.

Information Disclosure Statement

A statement must be filed with a regular patent application (or within the following three months) that describes all relevant prior art references known to the applicant, and also provides actual copies of such references when they have appeared in print. Known as an Information Disclosure Statement, an IDS or PTO Form 1449, this statement provides the U.S. Patent and Trademark Office (PTO) with a head start in determining whether the invention deserves a patent. An IDS need not be filed with a Provisional Patent Application.

An applicant’s knowing failure to disclose any known and relevant prior art reference is considered fraud on the PTO. If a patent was granted in this circumstance, it may be held unenforceable in court, although the deliberately omitted prior art reference might not have resulted in any claim being disallowed.

When examining a patent application, the PTO conducts its own patent search in addition to what it learns from an applicant’s IDS, and often picks up omitted prior art references. These references may then be used to reject the application on novelty or nonobviousness grounds, but the PTO seldom presumes that the omission was intentional. If, however, the PTO fails to find the omitted prior art reference and proceeds in its ignorance to issue a patent, the reference will usually only be brought to light if an infringement lawsuit is filed. This is because the infringer, as part of its defense, can be counted on to do an exhaustive prior art search (called a validity search) to prove that the patent was improvidently issued and therefore invalid. If the prior art reference is found in the course of this search, the infringer can then be expected to argue that the omission was deliberate. If the court agrees, it will invalidate the patent because of fraud on the PTO, without regard to how the reference affects the invention’s novelty and nonobviousness.

Related terms: defenses to a patent infringement claim; patent search; Provisional Patent Application (PPA); validity search.

infringement action

An infringement action is a lawsuit alleging that one or more parties (defendants) have, without permission, made, used or sold an invention protected under a patent owned by the party bringing the lawsuit (plaintiff). Patent infringement actions must be filed in the U.S. District Court within a maximum of six years after the date the infringement occurred—or sooner, if a delay in filing would obviously cause undue hardship to the defendant.

Although it is possible to have a jury trial in a patent infringement case, the judge alone is responsible for interpreting the patent claims. (Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).) The judge or jury then examines the plaintiff’s patent and compares the elements recited in its claims with those of the accused infringer’s device or process. On this basis, the judge or jury decides whether the plaintiff’s claims, as interpreted by the judge, cover the defendant’s device or process—that is, fully describe the elements contained in the device or process. If the plaintiff’s claims cover (read on) the device or process, infringement is found. If the claims do not cover the defendant’s device or process, then no infringement has occurred.

Even if the claims don’t literally read on the infringing device, the judge or jury could find infringement by applying the doctrine of equivalents: the two devices are sufficiently equivalent in what they do and how they do it to warrant a finding of infringement. Also possible, but extremely rare, is the converse: finding no infringement because the two devices are sufficiently dissimilar in what they accomplish or how they work, even though the claims are the same (in patent speak, the negative doctrine of equivalents).

If infringement is found to exist, the judge may:

• issue an injunction (court order) preventing further infringement

• award the patent owner damages for loss of income or for profits resulting from the infringement from the time the invention was properly marked (when the word “patent” and the patent number were affixed to the invention) or from when the infringer was first put on actual notice of the infringement, whichever occurred first, and

• in the event the infringement was willful or flagrant (it continued without a reasonable defense after notification by the patent owner or infringement occurred through a direct copying without any ground to believe the plaintiff’s patent was invalid), the court may award the plaintiff three times the actual damages established in court and reasonable attorney fees.

Patent infringement lawsuits are risky for the patent owner, because the defendant will almost always attack the underlying validity of the patent on such grounds as:

• the invention was obvious or lacked novelty when the patent issued by introducing relevant prior art references not picked up by the PTO in the course of examining the patent application

• the patent application failed to fully disclose the best mode of the invention, as is required by the patent laws, or

• the patent applicant failed to disclose relevant prior art known to the applicant (fraud on the PTO).

Until the late 1980s, courts ruled against the validity of the patent in over half of all patent infringement cases. Lately, however, under leadership of the U.S. Court of Appeals for the Federal Circuit, the courts are upholding significantly more patents than they strike down.

Related terms: breaking a patent; contributory infringement of patent; defenses to a patent infringement claim; infringement of patent.

infringement of patent

Infringement occurs when someone makes, uses or sells an item covered by the claims of an in-force patent without the patent owner’s permission. If a court finds that infringement occurred, every patent infringer can be ordered by a court to stop all infringing activity. Any of the infringers who profited from the infringement may also be found liable for money damages. Only an infringer who had reason to know that a patent was being infringed can be held liable for treble damages as a willful infringer.

EXAMPLE: Owens Organic Products invents and patents a simple computerized sprinkler system that turns on and off according to the moisture level of the soil. Although Phil Prendergast has been independently working on the same invention, he failed to beat Owens to the Patent and Trademark Office and is unable to prove that he was the first to invent. However, figuring that Owens will probably never find out, Phil licenses Garden Development Corp. to construct and market his invention in exchange for royalties. Garden Development manufactures and distributes the system on a wholesale basis to a chain of retail garden-supply stores, which then sell the sprinklers to consumers, who use them in their gardens. Phil, Garden Development, the retail stores and the consumers are all guilty of patent infringement—even though none except Phil knew about Owens’s patent. Phil, Garden Development and the retail stores may be ordered to stop infringing and to pay money damages. However, only Phil would be liable for treble damages, unless Garden Development and the retail stores knew, or should have known, that their activity infringed Owens’s patent.

Related terms: contributory infringement of patent; infringement action.

infringement search

Colloquial for a type of patent search, an infringement search is conducted for the purpose of discovering whether an invention infringes any in-force patent. This type of search is typically conducted by an invention developer as a preliminary step to deciding whether to develop a particular invention. It is much narrower in scope than a patentability search, which is concerned with all prior art—including expired patents and relevant unpatented technology. It also differs from a validity search, which typically is conducted by a defendant in a patent infringement lawsuit for the purpose of discovering information that would invalidate the patent.

Related terms: patent search.

injunctions and injunctive relief

See infringement action.

inter partes proceeding

If someone—for example, another patent owner, potential infringer or the PTO—seeks to reexamine an existing patent to determine its validity, an inter partes proceeding can be brought at the PTO. This type of administrative hearing is less expensive, less formal and faster than challenging a patent owner in court. In addition, inter partes decisions are rendered by technical specialists, not juries.

Related terms: reexamination.

interference, defined

An “interference” is patent jargon for an administrative proceeding scheduled by the U.S. Patent and Trademark Office to determine who gets the patent in situations where two pending applications (or a pending application and a patent issued within one year of the pending application’s filing date) both claim the same invention.

Related terms: Board of Patent Appeals and Interferences; interference proceeding.

interference proceeding

An administrative hearing is conducted by the Board of Patent Appeals and Interferences to determine the priority of inventionship when the same invention is claimed in two or more pending patent applications, or in a pending patent application and a patent issued within a year of the application’s filing date.

The Board of Patent Appeals and Interferences determines the priority of inventorship according to the following analytical steps.

Step 1: The Board decides which inventor was the first to reduce the invention to practice. This will be the first inventor to either:

• constructively reduce the invention to practice by filing a provisional or regular patent application (the senior party), or

• actually reduce the invention to practice by building and testing a working model of the invention.

Step 2: Based on evidence introduced in the interference proceeding, the Board decides whether the inventor who was second to reduce to practice can prove both that: (1) he or she was first to conceive of the invention, and (2) he or she was also diligently attempting to reduce the invention to practice at the time the other inventor conceived the invention.

The inventor who can prove both prior conception and diligence in reduction to practice will be awarded the patent; otherwise, the inventor who was first to reduce the invention to practice (either actually or constructively) gets the patent.

How the PTO Decides a Patent Interference Proceeding

The reasoning behind these priorities is relatively simple. The patent laws attempt to balance three goals:

• get the inventor to file as quickly as possible so the invention can become known to the public

• get the inventor to come up with the best possible version of the invention, and

• reward the inventor who is first to conceive of the invention.

By initially presuming that the first inventor to reduce the invention to practice should get the patent, the patent laws serve the first two goals. But all three goals can be served by giving the patent to the first to conceive the invention if that inventor also worked diligently to reduce the invention to practice.

Because an inventor may later be called on to prove when an invention was first conceived, and what steps were taken to reduce it to practice, most inventors maintain detailed records of their inventive activities in notebooks or in disclosure documents that are signed and witnessed.

EXAMPLE: Bellingham Medical Supplies and Boca Raton Pharmaceuticals both have pending applications for a patent on a painkilling device designed to allow patients to self-medicate small doses of certain opiates without running the risk of an overdose or addictive reaction. An interference is declared and a hearing scheduled. At the hearing, the research scientists at Bellingham Medical produce their notebooks showing that they were the first to conceive of the invention. Boca Raton, on the other hand, establishes that it filed its patent application first, and was thus the first to constructively reduce the invention to practice.
If Bellingham can establish that it was the first to actually reduce the invention to practice by building a working model before Boca Raton filed its application, or that it was diligently working to reduce the invention to practice at the time Boca Raton first conceived of the invention, Bellingham will be awarded the patent. If neither of these showings is made, however, Boca Raton will be awarded the patent (even though it was the second to conceive the invention), because it was the first to reduce the invention to practice by filing the patent application, and Bellingham failed to show the necessary diligence towards reduction to practice after its initial conception of the invention.

Related terms: Disclosure Document Program (DDP); filing date; interference, defined; notebook; Provisional Patent Application (PPA); reduction to practice.

International Bureau of the World Intellectual Property Organization

This administrative arm of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, is designated by the Patent Cooperation Treaty of 1970 as the clearinghouse for international patent applications.

Related terms: Patent Cooperation Treaty (PCT).

Note

See also Part 1 (Trade Secret Law): World Intellectual Property Organization (WIPO).

international patent protection for U.S. inventions

U.S. inventors can gain patent protection in countries outside the U.S. in two ways:

• by filing separately in each country where protection is desired under certain rules established by the Paris Convention, or

• by filing an “international application” with the International Bureau of the World Intellectual Property Organization, an office established under the Patent Cooperation Treaty (PCT). This single filing establishes a filing date good in all member countries, although the patent owner must file separate “national” applications in each member country where the owner wants coverage. The European Patent Office is considered a single entity for the purpose of the PCT.

Although other treaties exist between the U.S. and certain countries pertaining to reciprocal patent protection, the two mentioned above provide the primary international protection for U.S. inventors.

Related terms: Convention application; European Patent Convention; Federal Trade Commission proceeding; Patent Cooperation Treaty (PCT).

Internet, patent searching

See patent search, computerized.

Internet patent

The term “Internet patent” has been used to describe a group of utility patents issued for software programs and for methods of doing business, most of which relate to Internet uses. The most well-known example of an Internet patent is Amazon.com’s “One-Click” system, a method that allows a repeat customer to bypass address and credit card data entry forms when placing an online order. (U.S. Pat. No. 5,960,411).

What is different about Internet patents is the subject matter—a method of doing business. For most of the 20th century, the courts and the PTO believed that business methods could not be patented. But in 1998 a federal court ruled that patent laws were intended to protect any method, whether or not it required the aid of a computer, so long as it produced a “useful, concrete and tangible result.” (State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).) Thus, with one stroke, the court legitimized both software patents and methods of doing business, opening the way for these so-called Internet patents. Regardless of their categorization, business method, software or Internet patents have one thing in common: they expand ways of doing business in new technologies.

Related terms: business methods as statutory subject matter; software patents.

intervening right

When an in-force patent is reissued on the basis of broadened claims, there exists the possibility that someone relying on the wording of the claims in the original patent developed or used a device that would not have infringed the original patent, but that does infringe the reissue patent. When this occurs, the infringing business is said to have “intervening” rights, which preclude an infringement suit under the new broadened claims. However, these intervening rights are considered personal to the business in question and cannot be transferred to another business or owner.

Related terms: defenses to a patent infringement claim; reissue patent.

invalid patent

See defenses to a patent infringement claim; unenforceable patent.

invention, defined

As defined by patent attorney David Pressman in his book, Patent It Yourself (Nolo), an invention is any thing, process or idea that:

• is not generally and currently known

• without too much skill or ingenuity can exist or be reduced to tangible form or used in a tangible thing

• has some value or use to society, and

• was thought up or discovered by someone.

In addition to this description, an invention is said to happen when the thing, process or idea being invented is first conceived of, if efforts are then continually made to build a working model of the invention or file a patent application on it—that is, reduce it to practice.

Related terms: inventor, defined; patent, defined.

inventor, defined

An inventor is a person who contributes significant creative input into an invention. An application for a patent on an invention must be made in the name of the inventor (or names of all inventors if more than one), even if a commercial or nonprofit organization actually owns the invention. Failing to accurately name the true inventor or inventors in a patent application can result in an issued patent later being declared invalid.

Related terms: co-inventors; patent applicant; patent owner; prosecution of a patent application; shop rights.

issue fee

In addition to the fees required for filing a patent application, additional fees also must be paid for the patent to issue after allowance by the U.S. Patent and Trademark Office. The fees are twice as much for large entities as for small entities. Generally, independent inventors, nonprofit corporations and businesses with fewer than 500 employees qualify for small entity status. However, if an assignment has or will be made by a small entity to a large entity, large entity fees must be paid.

Currently (March 2003), fees for a patent to issue are:

• for utility patents, $1,300 for large entities and $650 for small entities

• for design patents, $470 for large entities and $235 for small entities, and

• for plant patents, $630 for large entities and $315 for small entities.

  Related terms: application filing fees; prosecution of a patent application.

joint inventors

See co-inventors.

junior party in interference proceedings

When an interference is scheduled by the U.S. Patent and Trademark Office, the inventor who was last to file a patent application is known as the junior party.

Related terms: interference proceeding; senior party in interference proceedings.

jury, role of in patent infringment cases

See infringement action.

laboratory notebook

See notebook.

large entity

A for-profit company that has over 500 employees is considered a large entity by the U.S. Patent and Trademark Office (PTO). When a large entity owns the patent rights to an invention, or is entitled to have ownership of these rights transferred to it, the fees payable to the PTO for various aspects of the patent application and prosecution process are double those for small entities.

Related terms: issue fee; maintenance fees; small entity.

laws of nature exception to patents

This rule states that general scientific and mathematical principles are not patentable, even if they meet the other required statutory requirements for patentability (such as utility, novelty and nonobviousness). Laws of nature are considered to be part of the public domain rather than products of human inventiveness.

Related terms: algorithms; genetic engineering and patents; naturally occurring substances as nonpatentable; non-statutory subject matter; statutory subject matter.

lay judge

This term is used by patent law practitioners to refer to any judge sitting in a patent case who is not a patent attorney or especially experienced in patent law.

lay patent searchers

See patent searcher.

letters patent

See patent deed.

licensing of an invention

The process by which an owner gives permission to another party to make, use or sell his or her patented invention is most often given in the form of a written document called a license. A license of patent rights can either be an exclusive license (only the licensee is entitled to exercise the rights set out in the license) or a non-exclusive license (the licensee may exercise the rights set out in the license but cannot prevent others from exercising the same right under a different license).

Related terms: assignment of a patent; exclusive patent license; non-exclusive patent license.

limiting reference

A limiting reference consists of any element in a patent claim that operates to both define the invention and, by defining it, limit its scope.

Related terms: claims, defined.

machines as patentable subject matter

Generally any devices with moving parts, machines are one of the five categories of inventions (called statutory subject matter) that can be patented. Electronic circuits are also considered machines, even though their parts, strictly speaking, don’t move.

Related terms: statutory subject matter.

maintenance fees

Fees must be paid to the U.S. Patent and Trademark Office (or the patent office of another country where a patent has been obtained) to keep an issued patent in effect. Currently (March 2003), the maintenance fees for U.S. utility patents (there are no maintenance fees for design or plant patents) are as follows:

• to keep a patent in-force for the fourth through eighth year, $890 for large entities and $445 for small entities

• to keep a patent in-force for the ninth through the 12th year, $2,050 for large entities and $1,025 for small entities

• to keep a patent in-force for the rest of the patent term (20 years from the filing date), $3,150 for large entities and $1,575 for small entities.

Effective with applications filed after June 7, 1995, the patent term changes from 17 years from the date of issue to 20 years from the date of filing. This means that the final maintenance fee may extend beyond the seventeenth year until the patent term actually expires. The PTO will accept credit card payments online for maintenance fees at its website (www.uspto.gov).

A number of other industrialized countries require inventors to pay even larger maintenance fees, reaching into the thousands of dollars per renewal period, in order to maintain the validity of their patent.

Related terms: large entity; small entity.

Manual of Classification

See classification of patents.

Manual of Patent Examining Procedure (MPEP)

The MPEP is a large, loose-leaf manual of internal procedures followed by U.S. Patent and Trademark Office (PTO) examiners in processing patent applications. Many large libraries carry this volume (often termed “The Examiner’s Bible”), which will answer most questions that arise in the course of applying for a patent. Also, the MPEP is available online at the PTO website (www.uspto.gov) and may be obtained from the PTO, for a fee, in both hard copy form and on CD-ROM.

Related terms: classification of patents; patent application.

manufactures as patentable subject matter

Relatively simple objects that don’t have working or moving parts, “manufactures” are one of the five categories of inventions (statutory subject matter) that can be patented. Sometimes called “articles of manufacture,” there can be some overlap between the “machine” and “manufacture” categories—especially in the case of inventions involving electronic circuits, which lack moving parts but which are frequently classified as machines because of how they operate.

Examples of more typical manufactures include: erasers, desks, houses, wire, tires, books, cloth, chairs, containers and transistors.

Related terms: statutory subject matter.

march-in rights

The U.S government retains the right to use an invention that has been developed as a result of a government contract if the actual inventor fails to develop and exploit the invention sufficiently.

Related terms: Bayh-Dole Act; patent owner; shop rights.

marking of an invention

Affixing the marks “Patent Pending” or “Pat. Pend.” to an invention after a patent application or provisional patent application has been filed, or affixing the patent number after a patent has issued, is known as marking the invention.

The marks “Patent Pending” or “Pat. Pend.” have no immediate legal significance, but do place potential infringers on notice that, should a patent ultimately issue, they will not be allowed to make, use or sell the invention without the patent owner’s permission. During the patent pending period, an inventor cannot stop an infringer or collect damages. However, under the new 18-month publication statute (see confidentiality of patent applications), an inventor whose application is published prior to issuance may obtain royalties from an infringer from the date the application is published. There are two requirements: (1) the application later issues as a patent; and (2) the infringer had actual notice of the published application. (35 United States Code, Sections 122, 154.) An infringer will have actual notice of a publication if he or she sees the published application. This can be accomplished by sending a copy to the infringer by registered mail. Otherwise, the inventor has no rights whatsoever against infringers during the pendency period—only the hope of a future monopoly, which doesn’t commence until a patent issues.

Marking an invention with a patent number (for example, “patent #5,040,387” or “pat. #5,040,387”) after a patent is issued puts infringers on notice that any use of the invention may result in an injunction and damages. If an infringement action is later filed, the patent owner will be able to collect damages from the date he or she began properly marking the invention. By contrast, if the invention is not marked, damages may be collected only from the time the infringer received actual notice (usually a demand letter from the patent owner) or the date the patent infringement suit was first filed, whichever occurred earlier.

Many inventors prefer not to place the patent number on their invention. Why? Because marking the invention makes it easier for a competitor to obtain a copy of the patent and design around it. A competitor may have a much more difficult time locating the patent on an unmarked invention. In an attempt to avoid this problem, some patent holders just use the mark “patent,” without an accompanying number. This doesn’t have any legal clout, however, since this type of notice is not legally sufficient to start the period running for which damages may be recovered. As with an unmarked invention, damages on an inadequately marked invention are recoverable only for the period after the infringer received actual notice, or after the suit was filed.

Related terms: confidentiality of patent applications; infringement action; patent pending.

Markman v. Westview Instruments

This U.S. Supreme Court case (517 U.S. 370 (1976)) ruled that the judge rather than the jury is responsible for interpreting patent claims in a patent infringement case. Since the scope of the claims can often determine the outcome of an infringement case, the power of the jury in such cases has been sharply diminished.

mathematical formulas

See algorithms.

means plus function clause

This jargon refers to a way of defining an invention in a patent claim that describes an element of the invention in terms of its function (as the means by which a specific function is performed), rather than in terms of its specific structure.

The use of a means plus function clause broadens the claim, and makes the claim harder to design around (and therefore easier to infringe), since a patent on the “means” will then support all possible structures that can perform the specified function. A means plus function clause must include the term “means” followed by the specific function of the element.

EXAMPLE: One of the claims in a patent application filed on fundamental multimedia search technology begins by stating: “A computer search system for retrieving information, comprising: ... means for storing interrelated textual information and graphical information.”

In this claim element, the words “means for storing ... information” theoretically are broad enough to include CD-ROM, a computer hard disk or any other information storage method that exists now or may exist in the future. However, the scope of this or any other claim using a means plus clause is not as unlimited as the words may suggest. When determining the scope of a claim containing a means plus function clause, the U.S. Patent and Trademark Office (PTO) and courts look to other references to the invention contained in the patent or patent application and limit the reach of the claim to those references. Also, because historically there has been some dispute as to how broadly means plus function claims can read (that is, how many devices/processes they can cover), it is often wise to draft one set of claims using means plus function clauses and a duplicate set of claims citing specific devices and processes so that the patent will be both as broad and specific as the PTO will allow.

Related terms: claims, defined; prosecution of a patent application.

methods as patentable subject matter

See processes (or methods) as patentable subject matter.

misuse of patent

Use of a patent in a manner that violates federal patent or antitrust laws may result in the patent being declared invalid or unenforceable by a court. Most often, the issue of patent misuse is raised as a defense to a patent infringement action. If the court in such an action finds that the patent was misused, it will not enforce the patent unless the owner can show that the misuse was voluntarily and completely cured (“purged”). If the misuse was an antitrust violation, however, no such cure is possible and the patent will simply be declared invalid.

Related terms: antitrust law (federal) and patents; breaking a patent; defenses to a patent infringement claim; infringement of patent.

multiple claims

A single patent application may contain two or more claims describing a single invention. A patent application typically contains more than one claim, because there is often more than one way a single invention can be novel and/or useful.

EXAMPLE: A robotics invention that keeps a running account of a kitchen’s ingredients can be viewed as a device for maintaining general inventory, a specific process of managing a kitchen’s stock of food and a new physical manifestation of certain robotics principles. At least three different independent claims might be used to describe the invention in these different ways.

Related terms: claims, defined; dependent claim; independent claim.

narrowing a claim

A claim in a patent application that was initially rejected by a patent examiner as being too broad (over the prior art) may be redrafted (narrowed) so that the claim no longer overlaps with the prior art, and therefore describes a novel and nonobvious invention. Narrowing can be done by adding more elements to the claim or by reciting the existing elements more specifically.

Related terms: claims, defined; first office action.

naturally occurring substances as nonpatentable

Items or substances that are found to exist in a natural state are not eligible for patent protection (they are non-statutory subject matter). In other words, the discovery of natural substances and processes does not by itself qualify as an invention. However, if natural substances are manipulated and repackaged to meet specific human needs—as is true with many drugs—they may qualify as patentable inventions.

The rule prohibiting the patenting of naturally occurring substances previously was used to bar patents on most living matter. However, the late twentieth century has seen the development of technologies that allow the genetic alteration of living plants and animals into something different from a “naturally occurring substance.” Accordingly, patents have issued on such items as genetically manipulated DNA molecules, enzymes, proteins, bacteria, viruses, plants and even a mouse, as well as on the processes of manipulation themselves.

Related terms: genetic engineering and patents; non-statutory matter; plant patents.

negative doctrine of equivalents

Under this doctrine, a later device or process may be held to not infringe the patent on an earlier invention, even though the patent’s claims fully cover (read on) the later device or process, if the structure, function or result of the two inventions are substantially different.

This is the rarely used converse of the doctrine of equivalents, which requires a finding of infringement when an invention and a later item are basically the same, even though the patent’s claims do not, strictly speaking, cover the later item.

Related terms: doctrine of equivalents; infringement action.

new combinations of old inventions

See combination patent.

new matter

Technical information about an invention that was not included in the original patent application is referred to as new matter. Once an application has been filed, the U.S. Patent and Trademark Office (PTO) does not allow an applicant to add new matter that would change the scope and nature of the invention. This is because the filing date often determines the date of the invention, and if new matter could continually be added to an application, the filing date would no longer serve this purpose.

However, an applicant for a patent who wants to bring new matter before the PTO may do so by filing a special supplementary application, called a continuation-in-part application.

Related terms: continuation-in-part application (CIP); filing date; patent application.

new-use invention

A new-use invention consists of a new way to use an old device or process, such that the new use is nonobvious—generally remote or surprising to one skilled in the art.

EXAMPLE: Utilizing a known physical property of color dyes that causes them to expand at a different rate when applied to cloth, Tony invents a new process for transferring color patterns into textiles. Assuming that the process is considered nonobvious, it will be entitled to a patent as a “new use” of an old principle.

Related terms: nonobviousness, defined; statutory subject matter.

nondisclosure of patent applications by U.S. Patent and Trademark Office

See confidentiality of patent application.

nonelected claims

A patent may only claim one invention. An applicant may voluntarily choose (elect) not to prosecute a claim or claims in a pending patent application in response to a patent examiner’s decision that the application impermissibly claims two inventions. However, an applicant can file a “divisional application” on the nonelected claims, so that they are not abandoned.

Related terms: abandonment of patent; divisional application; double patenting.

non-exclusive patent license

A non-exclusive patent license is an agreement by which a patent owner (the “licensor”) authorizes (licenses) another (the “licensee”) to make, use and/or sell the patented invention, but retains the right to license it to others as well. For example, the inventor of a new, more efficient fuel injection system would most likely grant non-exclusive licenses to all the major car companies able to utilize the system, rather than just license it to one company on an exclusive basis.

Related terms: anti-shelving clause; exclusive patent license; infringement action.

nonobviousness, defined

The quality of nonobviousness refers to the ability of the invention to produce unexpected or surprising new results—results that were not anticipated by the prior art. (The statute that sets forth the nonobviousness requirements is found in 35 United States Code, Section 103.)

To be patentable, an invention must be nonobvious to a person with ordinary skill in the art. Thus, an invention involving video technology would need to be considered nonobvious to a video engineer thoroughly familiar with prior art in the video field.

Analyzing an invention for nonobviousness is difficult primarily because it is a subjective exercise. In addition, whether or not an invention is nonobvious is supposed to be determined as of the date of invention—which in most cases is considered to be the date a provisional or regular patent application is filed. This means that the U.S. Patent and Trademark Office (PTO) usually must decide whether an invention is nonobvious well after the date of the invention, because of delays inherent in the patent prosecution process. If the issue of nonobviousness is raised as a defense in a patent infringement lawsuit, the court must look back over an even longer period of time to decide whether the invention was nonobvious as of the date of invention.

The initial determination of whether an invention is (was) nonobvious is made by the patent examiner in the course of deciding whether a patent should issue. The patent examiner generally approaches this task by examining all pertinent prior art references that existed as of the date of invention. Because the patent examiner is usually knowledgeable in the area of the patent being examined, his or her expertise may also be brought to bear as a person with ordinary skill in the art.

However, once a patent issues, the patent may be attacked (usually in court) on the ground that the patent examiner made a mistake on the question of nonobviousness. In this situation, both sides will typically produce experts who provide opposing opinions (“Yes, it was nonobvious”; “No, it absolutely wasn’t”). The inventor will also attempt to establish that the invention enjoyed commercial success or solved an unperceived need and should therefore be considered to be nonobvious on the basis of actual developments in the marketplace, regardless of what the experts say. In addition to this evidence, the court will evaluate from scratch the prior art existing at the time of the invention.

EXAMPLE: In August 1998, Future Enterprises invented a machine that could analyze chromosomes for multiple types of genetic damage and abnormalities. A patent application was filed in October 1998. In April 2000, the PTO examined the prior art existing as of October 1998. That prior art indicated (“taught” in patent jargon) that gene identification procedures at that time only allowed one identification at a time, so the PTO determined that the invention was nonobvious in October 1998 and issued a patent on the invention in August 2000, without concern for intervening developments.
In October 2000, by which time multiple analysis procedures were in common use, Future Enterprises sued NewGene Inc., a molecular biology laboratory, for patent infringement, claiming that NewGene was using the multiple analysis procedure without Future’s permission. NewGene defended the suit by alleging that multiple analysis procedures were obvious at the time of the invention, and that the PTO’s decision to issue the patent should be overturned and the patent invalidated on obviousness grounds.
When the suit goes to trial in August 2002, Future and NewGene both introduce testimony by molecular biologists regarding the state of knowledge in October 1998, the date the of the challenged invention. One set of biologists testifies that the multiple analysis procedures described in the invention were the obvious next step and that their development was not a new and surprising result. Another group of biologists testifies that in October 1998, the molecular biology field was stuck in its single analysis mode and that the invention was a significant breakthrough that allowed molecular biologists to identify faulty genes at a much faster pace. In addition to presenting expert testimony, both sides also introduce reams of documents that try to prove their competing contentions. The court then considers all this evidence over four years after the date of the original invention and decides whether the invention was nonobvious.

One danger of relying on this type of retrospective analysis is that the experts and judge will be unconsciously affected by the intervening technical improvements, and the invention might later be considered obvious even though it wasn’t at the time of invention.

Related terms: Graham v. John Deere case; obviousness, defined; person with ordinary skill in the art; statutory subject matter.

non-statutory subject matter

To qualify for a patent, an invention must fit into one or more categories established by the federal patent laws (statutes). The categories are compositions of matter, processes, machines, manufactures and new uses of inventions falling within any of the first four categories. Inventions that don’t fall within any of these classes are said to be “non-statutory subject matter,” and are not patentable. Examples of non-statutory subject matter are:

• processes done entirely by human motor coordination, such as choreographed dance routines

• printed matter that has no unique physical shape or structure associated with it

• naturally occurring matter, even though its external characteristics may be modified, and

• abstract scientific principles, mathematical formulas and natural laws (algorithms) or ideas that don’t produce a useful, concrete or tangible result.

The term “non-statutory subject matter” has a second, less obvious meaning: any invention that doesn’t qualify for a patent for any reason is also termed non-statutory subject matter. So even if an invention fits within one of the five statutory categories above, it would still be considered non-statutory subject matter if it failed to meet the additional basic patent qualifications of novelty, non-obviousness and utility.

Related terms: algorithms; genetic engineering and patents; laws of nature exception to patents; naturally occurring substances as nonpatentable; statutory subject matter.

not invented here (NIH) syndrome

A handicap to inventors trying to market their inventions is the refusal by many companies to buy, develop or distribute inventions owned by outside inventors—inventions that are “not invented here.”

This all too common policy is often attributable to corporate ego: if it wasn’t invented here, it can’t be any good. But in addition, it can be the understandable result of the sincere desire to avoid potential and expensive disputes over who owns the patents held or applied for by the company. By never looking at outsiders’ inventions, a business can at least partially protect itself from such claims.

Related terms: infringement action; patent owner.

notebook, inventor’s

Many inventors maintain a journal in which they record when and how they conceived of an invention and specify all procedures, dates, actions, failures, successes, contacts and other events that occur in the course of building and testing the invention.

This information may be very important if there is a conflict between patent applications pending in the PTO. Every inventor is therefore well advised to maintain such a journal, diary or notebook, and to have the notebook entries signed, dated and witnessed as they are made.

Two statutory alternatives to the patent notebook method of documenting an invention are:

• the Disclosure Document Program, a procedure in which an inventor can disclose the conception of his or her invention to the PTO for a nominal fee, and

• the Provisional Patent Application (PPA), a program effective June 8, 1995, under which an inventor may submit a full disclosure of his or her invention to the PTO up to a year prior to filing the actual patent application. A properly filed PPA operates as a (constructive) reduction to practice in case of an interference or conflicting prior art.

  Related terms: Disclosure Document Program (DDP); interference proceeding; Provisional Patent Application (PPA).

notice of allowance

A notice of allowance is sent to an applicant when a patent examiner decides that a patent should issue on an invention (technically, the claims are allowed).

Related terms: office action; prosecution of a patent application.

notice of references cited

This form is sent by the U.S. Patent and Trademark Office (PTO) to a patent applicant citing the various prior art references used by the PTO as a basis for rejecting the application’s claims. Copies of the references are also enclosed, so the applicant can respond to the rejection by either explaining why they don’t apply or by amending the rejected claims.

Related terms: office action; prior art reference; prosecution of a patent application.

novelty, defined

An invention must have novelty to qualify for a patent. In this context, “novelty” means that the invention is different from the prior art (that is, all previous products, devices, methods and documents describing these things). An invention is considered different from the prior art—and therefore novel—when no single prior art item describes all of the invention’s elements. The statute setting out the novelty requirement is 35 United States Code, Section 102.

Even if an invention is novel in that it is different from the prior art, it can still flunk the novelty test if it has been described in a published document or put to public use more than one year prior to a patent application being filed on it (known as the one-year rule).

Although an invention may meet the novelty test, it still may be denied a patent if the patent examiner finds that the invention is obvious—that is, it isn’t innovative enough to deserve a patent.

Related terms: anticipation; nonobviousness, defined; one-year rule.

obviousness, defined

The quality of an obvious invention is such that a person with ordinary skill in the art could reasonably believe that, at the time of its conception, the invention was to be expected. An obvious invention (that is, one that lacks the quality of nonobviousness) doesn’t qualify for a patent.

EXAMPLE: A new metal that is significantly lighter and stronger than current alloys hits the market. It is “obvious” that someone will build a bicycle containing the material, since lightness is a desirable aspect of high-quality bicycles. Thus, while the inventor of the metal may be entitled to a patent, the developer of the new bicycle made from that metal will not.

Related terms: nonobviousness, defined; person with ordinary skill in the art.

office action

A letter sent by a patent examiner to an applicant regarding the pending application is called an office action. Generally, one or two office actions are sent per patent application. The first office action typically describes what’s wrong with the application and why it can’t be allowed. Most often, the first office action rejects the application because of:

• lack of novelty (35 United States Code, Section 102)

• obviousness (35 United States Code, Section 103), or

• claim indefiniteness (35 United States Code, Section 112).

The applicant is permitted to amend the application to overcome the rejection as long as no new subject matter is added. If the application is acceptable as amended, a notice of allowance will be sent (that is, a patent is granted). If the application is still not acceptable, the patent examiner will send a final office action that partially or completely rejects the application.

Related terms: final office action; first office action; prosecution of a patent application.

Official Gazette (OG)

The Official Gazette consists of two weekly publications put out by the U.S. Patent and Trademark Office (PTO). There is one for trademarks and another for patents. Each is colloquially known as the OG.

The patent edition contains official announcements concerning PTO policy and patent rules, and information on patents issued that week. For each patent, the Official Gazette contains:

• its patent number

• all inventors’ names and addresses

• the assignee (usually a company to which the inventor has transferred ownership of the patent), if any

• the filing date

• the application’s serial number

• the international classification number

• the U.S. classification number

• the main figure or drawing

• the number of claims, and

• a sample claim or abstract.

The Official Gazette contains the essence of the invention, not the entire patent. The full text of the patent contains far more technical information.

Anyone wishing to keep up with the patents being issued in his or her field should regularly read the Official Gazette. Many major libraries subscribe to this publication and file back issues. It is now also possible to track issued patents by subscribing to an online new-patent service available through the Internet on the PTO’s Internet site (www.uspto.gov).

Related terms: abstract; Internet, U.S. Patent and Trademark Office site; Patent and Trademark Depository Library; patent search.

on sale statutory bar

Part of the one-year rule, the on sale statutory bar holds that any invention that is placed on sale more than one year before a patent application is filed on it is not eligible for a patent. In this case, the patent is barred by statute from issuing. (35 United States Code, Section 102.)

“On sale” means not only the actual selling, but also any sales effort or solicitation. Such actions are considered public use in violation of the novelty requirement.

Related terms: anticipation; novelty, defined; one-year rule; statutory bar.

one-year rule

The one-year rule (35 United States Code, Section 102) requires a patent application on an invention to be filed within one year of:

• any public use of the invention by the inventor

• an actual sale of the invention

• an offer to sell the invention, or

• any description of the invention by the inventor in a published document.

Failure to file a patent application within this one-year period results in the invention passing into the public domain. An invention in the public domain is not considered novel, and is therefore not eligible for a patent.

The filing of a Provisional Patent Application (PPA) does not trigger the one-year rule for purposes of determining the invention’s novelty in the U.S., but does trigger the one-year period for filing patent applications in other countries. Also, if a regular patent application is not filed within one year of the PPA’s filing date, the PPA’s date cannot be claimed as the filing date for purposes of deciding whether the invention has been anticipated by prior art or reduced to practice (in case of an interference).

Related terms: anticipation; filing date; novelty, defined; on sale statutory bar; patent application; Provisional Patent Application (PPA).

online patent searching

See patent search, computerized.

operability

An invention must (theoretically at least) work in order to qualify for a utility patent. Although this does not mean the device must actually be built and working, it does mean that the patent application must disclose sufficient information to demonstrate the theoretical operability of the invention.

A patent examiner who believes an invention will not work (is non-operable) can require proof of its operability (such as a demonstration) before the patent application will be allowed. However, the fact that a patent has been issued on an invention is not a guarantee that the invention will work—only that it appears to work on paper.

Related terms: disclosure requirement for patents; utility patents, defined.

opposing a patent (international rules)

In most countries, a party may register its opposition to a pending patent application after it has been officially published. If the opposing party can establish that relevant prior art exists, an opposition proceeding is held to determine whether a patent should be issued. This process opens up the initial patent determination to all interested parties.

Related terms: defenses to a patent infringement claim; infringement action; reexamination of patent.

ordinary skill in the art

See person with ordinary skill in the art.

ownership of patent

See patent owner.

PAD

See Patent Application Declaration (PAD).

PCT

See Patent Cooperation Treaty (PCT).

PTDL

See Patent and Trademark Depository Libraries.

PTO

See U.S. Patent and Trademark Office (PTO).

parent application

During the prosecution of a patent, an applicant may need to file additional applications, such as a divisional application, a substitute application, a continuation application, a continuation-in-part application or an application for a reissue patent. If one of these subsequent applications is filed, the original application will be referred to as the parent application.

EXAMPLE: Rory applies for a patent for a tennis racket with an electronic device embedded in the handle that keeps track of the score. The patent examiner rejects the application because it claims two inventions—the racket/device combination and the device by itself. Rory then restricts his application by withdrawing or canceling the claims to the device itself, and files a divisional application on it. In this scenario, the application that now only claims the combination will be considered the parent application.

Related terms: continuation application; divisional application; double patenting; prosecution of a patent application; reissue patent; substitute patent application.

Paris Convention

See Convention application; European Patent Convention.

patent, defined

Legally, a patent is a right provided by a government that allows an inventor to prevent others from manufacturing, selling or using the patent owner’s invention. This right covers the invention as specifically described in the patent application’s claims allowed by the U.S. Patent and Trademark Office (PTO) or other patent examining agencies in other countries.

Physically, a U.S. patent consists of the following:

• a cover sheet bearing the patent number; the name of the invention as provided by the inventor; the name of all inventors; the name of the assignee (the person or company to whom the patent has been assigned), if any; the application filing date; a list of the prior art references found by the patent examiner to be pertinent to the invention; and the patent abstract (a concise summary of the invention)

• one or more pages containing drawings of the invention submitted by the patent applicant

• the patent specification as submitted in the patent application (a detailed narrative description of the invention’s structure and function), and

• the patent claims as finally approved by the patent examiner.

The original physical patent issued by the PTO is termed a “patent deed” or “letters patent” and has a blue ribbon and gold seal for adornment. The physical patent retained by the PTO and others interested in the patent is often termed a “patent copy” or a “soft copy” and lacks the adornment found on the patent deed. As with a college diploma or deed, the patent in any of its forms has no intrinsic value. The patent derives its value from the offensive rights it provides in the event of an infringement.

Related terms: claims, defined; infringement action; prosecution of a patent application.

patent agents

Patent agents are non-attorneys with technical training who are legally permitted—under a license issued by the PTO—to draft, file and prosecute patent applications on behalf of inventors. If necessary, a patent agent also can represent applicants before the Board of Patent Appeals and Interferences. However, if a patent becomes the subject of litigation in court, only a patent attorney may appear on behalf of the inventor.

Related terms: patent attorneys; patent searcher.

patent applicant

The inventor or organization who files the patent application (and often, who will own the patent if the application is granted) is termed the patent applicant. Patent applicants typically are independent inventors who choose to build and distribute their own inventions, companies to which independent inventors have sold (assigned) their invention, or large R&D companies that employ the actual inventor. Even if an entity other than the inventor will own the patent, the application must be filed in the name of the inventor.

Related terms: co-inventors; inventor, defined; patent application; patent owner.

patent application

A voluminous packet of papers must be mailed to the U.S. Patent and Trademark Office (PTO) to obtain a patent. Usually included in a patent application (now referred to as a regular or formal patent application to distinguish it from a Provisional Patent Application) are:

• a self-addressed receipt postcard

• a transmittal letter

• a check for the filing fee

• a fee transmittal form

• drawings

• a specification (a sample is provided in the Forms & Resources section at the end of this part of the book)

• one or more patent claims

• an abstract

• a Patent Application Declaration (PAD), and

• an Information Disclosure Statement (IDS).

A regular patent application can also include a Petition to Make Special (to speed the processing), an assignment and assignment cover sheet (if the invention was sold by its owner), a Disclosure Document Reference Letter (if a disclosure document was previously filed with the PTO) and a transmittal letter claiming the Provisional Patent Application filing date, if a PPA was filed.

One to two weeks after the application is mailed, the applicant will receive the receipt postcard back from the PTO with the filing date and number stamped on it. The filing date applies to this application and will provide the starting date for determining the patent term (20 years from date of filing). However, if a Provisional Patent Application was filed, its filing date will provide the basis for determining the invention’s novelty and deciding any interference that is declared by the PTO.

The receipt of the postcard means that the PTO has established a separate file (called a file wrapper) in which the application and all future correspondence between the applicant and the PTO is kept.

Once a regular patent application is on file, the applicant is said to be in the patent prosecution stage, which averages 18 months but which can take much longer in specific cases.

Related terms: prosecution of a patent application; Provisional Patent Application (PPA).

Patent Application Declaration (PAD)

A Patent Application Declaration (PAD) is a written statement, made under penalty of perjury, that must accompany a patent application. In the statement, the patent applicant states (avers) that:

• the applicant is the first and true inventor

• the applicant has reviewed and understands the specification and claims, and

• the applicant has disclosed all information material to the examination of the application.

  Related terms: duty of candor and good faith; fraud on the U.S. Patent and Trademark Office; patent application; prosecution of a patent application.

patent attorneys

Patent attorneys must be licensed to practice law and also be licensed by the U.S. Patent and Trademark Office (PTO) to practice before it. Patent attorneys prepare and prosecute patent applications, represent clients in interference proceedings and bring and defend patent-related lawsuits in federal court.

Patent attorneys are required to have a technical higher education degree as well as a legal background, and must pass a PTO examination in order to obtain their license. A complete listing of all licensed patent attorneys can be obtained in the PTO publication, Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office.

Related terms: infringement action; interference, defined; patent agents.

patent claim

See claims, defined.

Patent Cooperation Treaty (PCT)

This international agreement establishes streamlined procedures for obtaining uniform patent protection in its member countries. The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. U.S. inventors applying for PCT patent protection can file with the U.S. Patent and Trademark Office, which has been designated a receiving office of the International Bureau.

In addition to filing the one PCT application, an inventor must still file a national patent application in every country in which patent protection is desired. However, the primary advantages of using PCT’s procedures are:

• By filing one PCT application, the applicant obtains a filing date that is good in every member country in which he or she ultimately seeks patent protection.

• An initial international patent search is conducted on the PCT application and the member countries will rely heavily on this search. Thus, the applicant is saved the great expense and delay that can result from having to conduct separate searches in each country and convince each country’s patent examining agency that an invention is novel and nonobvious over the prior art.

• The PCT applicant need not decide whether to prosecute the international application in the individual countries until 18 months after the initial patent application filing date in his or her original country.

Currently (2003), PCT member countries or jurisdictions are: Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Barbados, Belarus, Belgium, Belize, Benin, Bosnia and Herzegovina, Brazil, Bulgaria, Burkina Faso, Cameroon, Canada, Central African Republic, Chad, China, Colombia, Congo, Costa Rica, C te d’Ivoire, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Dominica, Ecuador, Equatorial Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guinea, Guinea-Bissau, Hungary, Iceland, India, Indonesia, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malawi, Mali, Mauritania, Mexico, Monaco, Mongolia, Morocco, Mozambique, Netherlands, New Zealand, Niger, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Saint Lucia, Senegal, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sudan, Swaziland, Sweden, Tajikistan, The former Yugoslav Republic of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uzbekistan, Viet Nam, Yugoslavia, Zambia and Zimbabwe.

For more specific information on filing under the Patent Cooperation Treaty, a booklet called the PCT Applicant’s Guide can be obtained from the World Intellectual Property Organization.

Related terms: International Bureau of the World Intellectual Property Organization; international patent protection for U.S. inventions.

Note

See also Part 1 (Trade Secret Law): World Intellectual Property Organization (WIPO).

patent deed

This official document, sometimes termed “letters patent,” is sent to applicants by the U.S. Patent and Trademark Office, when their patent issues.

Related terms: final office action; notice of allowance; patent, defined.

patent examination process

See prosecution of a patent application.

patent examiners

U.S. Patent and Trademark Office examiners are employees who examine patent and trademark applications. On the patent side, the examiners correspond with applicants and decide whether inventions deserve patents. All patent examiners must have a technical degree in some field, such as electrical engineering, chemistry or physics. Many are also attorneys.

Related terms: U.S. Patent and Trademark Office (PTO).

patent infringement action

See infringement action.

patent issue fees

See issue fee.

patent license agreements

See exclusive patent license; non-exclusive patent license.

patent number

The number assigned to each patent by the U.S. Patent and Trademark Office is known as the patent number.

Related terms: marking of an invention.

patent number marking

See marking of an invention.

patent owner

The inventor is usually the patent owner unless the invention and patent rights were assigned (ownership rights were transferred to another person or entity—for instance, because the invention arose in the course of an employment relationship).

Many inventors assign ownership of their invention to development or manufacturing companies in exchange for compensation in the form of a lump sum or royalties on sales realized from the invention. These assignments typically also include ownership of the patent, whether already issued or to be issued in the future.

Large companies, and often universities and laboratories, usually require employees to assign their future inventions to the institution as a condition of employment. Under these assignments, the institution will be considered the patent owner. In some states, such requirements are prohibited for inventions that:

• were made on the employee’s own time

• did not involve the use of the employer’s equipment, supplies, facilities or trade secret information, and

• do not relate to the business of the employer and do not result from any work prepared by the employee for the employer or relate to the employer’s actual or demonstrably anticipated research or development.

Even if an inventor retains the right to the invention and is therefore considered the patent owner, employers retain the right (called “shop rights”) to make and use an invention created in the course of the employment relationship and with the employer’s tools and facilities.

Related terms: assignment of patent; co-inventors; shop rights.

patent pending

Once a patent application (regular or provisional) has been filed in the U.S. Patent and Trademark Office, the invention has patent pending status. The inventor can then mark the device “patent pending” to deter potential competitors from copying it by informing them that it may soon receive a patent. However, unless and until a patent is actually issued, an inventor has no right to prevent others from making, using and selling the invention. In other words, simply applying for a patent does not earn the applicant the right to behave like a patent owner.

However, under the new 18-month publication statute (see confidentiality of patent applications), an inventor whose application is published prior to issuance may obtain royalties from an infringer from the date the application is published. There are two requirements: (1) the application later issues as a patent; and (2) the infringer had actual notice of the published application. (35 United States Code, Sections 122, 154.) An infringer will have actual notice of a publication if he or she sees the published application. This can be accomplished by sending a copy to the infringer by registered mail. Otherwise, the inventor has no rights whatsoever against infringers during the pendency period.

The patent pending label can also provide a way for an inventor to show the invention to a potential developer without fear that the developer will rip it off and later claim to be the true inventor. This is especially useful when a developer refuses to sign a nondisclosure agreement for fear of a later lawsuit by the inventor.

Before June 8, 1995, obtaining patent pending status involved the considerable expense of preparing and filing a full patent application. Under the Provisional Patent Application program, however, patent pending status costs considerably less ($80 for small entities, current as of March 2003).

Related terms: marking of an invention; not invented here (NIH) syndrome; office action; opposing a patent (international rules); Provisional Patent Application (PPA).

patent pools

Under a patent pool arrangement between two or more companies, the companies assign (sell) their patents to a third party which, in turn, licenses any or all of the patents back to participating companies. This allows the participating companies to share their patents by providing them with access to each other’s patents on a reciprocal basis.

Patent pools run a substantial risk of violating the antitrust laws in the event they are not open to all competitors in a particular industry.

Related terms: antitrust law (federal) and patents; concerted refusal to deal; cross-licensing.

patent prosecution

See prosecution of patent application.

patent search

The term “patent search” generally means a search for documents that will help one decide whether a particular invention was novel and nonobvious when it was invented. While a patent search usually starts with the patent database (all previously issued patents), it also covers other types of documents that may describe the invention being searched, such as journal articles and scientific papers.

There are normally three discrete types of patent searches:

• patentability searches. This kind of search is normally conducted by, or on behalf of, an inventor to familiarize the inventor with previous developments in the field of invention and to help the inventor determine whether it is worthwhile to develop the invention and/or apply for a patent in the first place. Also, once a patent application is filed, the U.S. Patent and Trademark Office will conduct its own patentability search in the course of examining the application.

• infringement searches. An infringement search is usually much narrower in scope than a patentability search and is conducted for the purpose of deciding whether a particular invention will infringe an in-force patent.

• validity searches. This search is usually conducted by the defendant in a patent infringement case for the purpose of discovering documents that will adversely bear on the validity of the patent as issued.

  Related terms: infringement search; nonobviousness, defined; novelty, defined; patent search, computerized; patent searcher; Patent and Trademark Depository Library (PTDL); patentability search; prior art, defined; validity search.

patent search, computerized

All patents issued by the U.S. Patent and Trademark Office (PTO) since 1972 now are available online through a number of different public and private services. The PTO website (www.uspto.gov) is a free online full-text searchable database of patents and drawings that cover the period from January 1976 to the most recent weekly issue date. Below are several other fee-based organizations that offer computer searching of patent records.

• Delphion (www.delphion.com). Delphion’s basic services are free and have several advantages over the PTO. Delphion’s database goes back to 1971 for U.S. patents and contains the front pages of Europatents and PCT published patent applications. However, Delphion requires a signup and charges for more advanced services such as full-text patent search or foreign patent searches. Delphion also charges for downloading patent images.

• Micropatent (www.micropatent.com), a commercial database of U.S. patents searchable from 1836 to the present. It also includes Japanese and international PCT patent applications from 1983, European patents from 1988, and the Official Gazette (Patents). The U.S. patents before 1971 have been entered into the database by optical character recognition, so expect some errors.

• Patent Miner (www.patentminer.com), a commercial database of U.S. patents searchable from 1970 to the present. Copies of any patent dating from 1790 can be acquired.

• LEXPAT (www.lexis-nexis.com), a commercial database of U.S. patents searchable from 1971 to the present. In addition, the LEXPAT library offers extensive prior-art searching capability of technical journals and magazines.

• QPAT (www.qpat.com); Questel/Orbit (www.questel. orbit.com). Both commercial services access the QPAT database that includes U.S. patents searchable from 1974 to the present and full-text European A (1987–present) and B (1991–present) patents.

The services described above are all accessible from a personal computer connected to the Internet. PTO computer databases can also be accessed through the terminals at the PTO and through the APS Search terminals at 12 of the Patent Trademark Deposit Libraries (PTDLs) listed in the Forms Appendix. The PTDLs at the Sunnyvale, California; Houston, Texas; and Detroit, Michigan public libraries can display the full text and drawings of all U.S. patents back to 1790.

All prior art is relevant to a patent application, even patents that were issued decades ago and which have long since expired. For this reason, it may be necessary to search for pre-1972 patents well as the patents in the computer database—all of which were issued after that date. This would especially be true for gadget-type inventions that might resemble something invented hundreds of years ago. For instance, the finger grooves in certain types of old swords were considered relevant prior art for the finger indentations found in many modern automobile steering wheels.

Pre-1972 patents are not normally relevant to patent searches involving inventions based on modern technologies such as computers and software, integrated circuits, superconductivity, nanotechnology, artificial intelligence, robotics and bio-engineering. For these types of inventions, an online computer search should do the entire job.

Two other Internet sources of information are:

• Software Patent Institute (www.spi.org), which maintains, catalogs, and has the best software prior art database in the world. The SPI also likes to receive prior art on software inventions, such as old instruction books and manuals, and

• Source Translation and Optimization Patent Website (www.bustpatents.com), which is directed by Gregory Aharonian, one of the PTO’s most vocal critics. The site provides a free email newsletter, critiques, legal reviews, file wrappers and information about infringement lawsuits relating to software patents.

Computerized patent searches are usually carried out by typing certain key words at a computer terminal, and instructing the computer to produce a list of all patents that contain those words in the order that you specify. For example, if your search involves a bicycle chain, you might ask for a listing of all patents that contain the words “bicycle” and “chain,” where “bicycle” comes before “chain.” When the list appears on your terminal, you can then view the full text of any entry on the list or any selected portion (such as the abstract of patent, drawing, claims or specification).

If you find that no patent contains the words “bicycle” and “chain” in that order, then you will need to reformulate your request (try “bipedal vehicle” and “wheel pulling device”). Often it takes a number of attempts to cover all possible words used in all relevant patents. Unless you come up with all the correct words, you may miss patents, and thus perform an incomplete search.

A copy of a patent can be acquired by:

• contacting the PTO (703-305-8716; FAX: [phone]), ordering from the PTO website or writing a letter listing the number of the patent to Commissioner for Patents, Washington, DC 20231, with a payment for the price per patent (see the Fee Schedule at the PTO website) times the total number of patents being ordered.

• downloading a text copy or image copy of the patent, if available, from either the Delphion or PTO search sites, or

• ordering a copy from a private supply company such as Faxpat (www. faxpat.com), Optipat (www.optipat.com), Reedfax (www.reedfax. com) or Micropatent (www.micropatent.com).

  Related terms: classification of patents; Internet, U.S. Patent and Trademark Office site; patent search; Patent and Trademark Depository Libraries.

patent searcher

A number of individuals and firms specialize in conducting patent searches. In the U.S., patent searchers tend to be concentrated in Arlington, Virginia, because the Patent and Trademark Office (PTO) library is located there and it therefore is the best place to conduct a patent search.

There are three options for getting a patent search done by someone else:

• patent attorneys

• patent agents, and

• lay searchers.

Patent attorneys usually have their favorite searchers and can help you assess the results of the search. However, this is the most expensive option.

The next most expensive option is a patent agent. Patent agents are licensed by the PTO and have demonstrated their competence by passing a PTO-administered test.

The least expensive option is a lay searcher. However, lay searchers are not licensed and you should be careful when selecting one to do your search.

The Yellow Pages are a good place to locate a patent searcher. Look under “patent searcher” for lay searchers and under “attorney,” “legal” or “lawyer” for patent attorneys and patent agents.

Related terms: patent agents; patent attorneys; patent search.

patent term extension

Under 35 United States Code, Sections 155 and 156, the statutory period during which a patent is in-force can be extended if the inventor’s ability to realize gain from the invention will be adversely affected by a regulatory process. For instance, a new drug or food may be withheld from the market for a number of years because of a requirement that the Food and Drug Administration must approve such items as safe and effective.

Related terms: duration of patents; in-force patent.

Patent and Trademark Depository Libraries

Over 80 libraries around the U.S. have been designated as Patent and Trademark Depository Libraries (PTDLs). These public or special libraries contain copies of patents and the reference tools necessary to carry out a reasonably informative U.S. patentability search.

Although PTDLs contain enough pertinent materials to enable an inventor or other patent searcher to get a reasonably complete picture of the relevant prior art, not all PTDLs have all patents issued from the earliest days of the country. And more seriously, no PTDL has patents physically separated by classification, as does the U.S. Patent and Trademark Office (PTO) library in Arlington, Virginia. Accordingly, most professional patentability searches are conducted by patent searchers situated in the general area of the PTO.

What PTDLs do provide is access to two CD-ROM databases known as CASSIS/CLASS and CASSIS/BIB. CASSIS/CLASS allows the searcher to find the classification of any patent and the list of patents in any class. CASSIS/BIB allows the searcher to find bibliographic information about patents issued during the past 20 years as well as the field of search (class and subclass) for any type of invention. Together, these databases can be very helpful to the PTDL patent searcher.

In addition, 32 PTDLs are now providing online access to the PTO patent database, for patents issued after 1971, through a service known as APS (automated patent system), and three PTDLs—Sunnyvale, California; Rice University (Texas) and Detroit—offer access to the same database used by patent examiners.

A list of PTDLs is in the Forms section at the end of this part of the book.

Related terms: patent search; patent search, computerized.

Patent and Trademark Office

See U.S. Patent and Trademark Office (PTO).

patentability

Not all inventions qualify for a patent. To qualify for a utility patent, an invention must:

• fit within one of the five statutory subject matter classes

• have novelty

• be nonobvious, and

• have some usefulness.

To qualify for a plant patent, the plant must meet the first three of these tests. To qualify for a design patent, the novel features of a design must meet the first three qualifications and must be purely ornamental (have no practical function other than ornamental).

Related terms: non-statutory subject matter; statutory subject matter.

patentability search

Once an invention is conceived, the inventor will normally conduct (or have conducted) a search of previous and existing patents and other documents that might describe the invention, to discover whether the invention is novel and nonobvious enough over the prior art to qualify for a patent. A search conducted for this purpose is commonly termed a patentability search. The primary reason for a patentability search is to avoid wasting time and money developing an invention that is not patentable.

Related terms: classification of patents; novelty, defined; patent search; patent search, computerized; patent searcher, prior art reference.

patentable subject matter

See statutory subject matter.

patents as prior art

All patents, whether expired or in-force, and whether issued in the U.S. or in other countries, are considered prior art when determining whether an invention qualifies for a patent.

Related terms: anticipation; prior art, defined; prior art reference.

person with ordinary skill in the art

This is a hypothetical person whose educational or occupational credentials would make him or her competent in the field of the invention. For example, an electrical engineer would be a person with ordinary skill with respect to integrated circuits, whereas a prosthetics engineer would be a person with ordinary skill in the art of designing knee braces.

How this hypothetical person would view a particular invention is used as a standard to make some important determinations. Among the questions that must be answered in deciding whether a patent should issue, or whether an in-force patent is valid, are:

• whether a person with ordinary skill in the art would find the invention an obvious development in light of the relevant prior art (the technology and knowledge existing at the time the invention was first conceived), and

• whether the patent application sufficiently discloses the nature of the invention to permit a person with ordinary skill in the art to build it in a routine manner.

  Related terms: disclosure requirement for patents; Graham v. John Deere case; nonobviousness, defined.

Petition to Make Special

An applicant can, under certain circumstances, have an application examined sooner than the normal course of PTO examination (one to three years). This is accomplished by filing a “Petition to Make Special” (PTMS), together with a Supporting Declaration.

Related terms: patent applicant; patent application.

plant patents

Since 1930, the U.S. has been granting plant patents under the Plant Patent Act to any person who first appreciates the distinctive qualities of a plant and reproduces it asexually. Asexual reproduction means reproducing the plant by a means other than seeds, usually by grafting or cloning the plant tissue. If a plant cannot be duplicated by asexual reproduction, it cannot be the subject of a plant patent. In addition, the patented plant must also be novel and distinctive. Generally, this means that the plant must have at least one significant distinguishing characteristic to establish it as a distinct variety. For example, a rose may be novel and distinctive if it is nearly thornless and has a unique two-tone color scheme. Tuber-propagated plants (such as potatoes) and plants found in an uncultivated state cannot receive a plant patent. (35 United States Code, Sections 161-164.)

There is a limit on the extent of plant patent rights. Generally, a plant patent can only be infringed when a plant has been asexually reproduced from the actual plant protected by the plant patent. In other words, the infringing plant must have more than similar characteristics—it must have the same genetics as the patented plant.

A man-made plant can also be the subject of a utility patent. These plants can be reproduced either sexually (by seeds) or asexually. For example, utility patents have been issued for elements of plants such as proteins, genes, DNA, buds, pollen, fruit, plant-based chemicals, and the processes used in the manufacture of these plant products. To obtain a utility patent, the plant must be made by humans and must fit within the statutory requirements (utility, novelty and nonobviousness). The patent must describe and claim the specific characteristics of the plant for which protection is sought. Sometimes the best way to meet this requirement is to deposit seeds or plant tissue at a specified public depository. For example, many countries have International Depositories for such purposes.

Although a utility patent is harder and more time-consuming to acquire than a plant patent, a utility patent is considered to be a stronger form of protection. For example, a plant protected by a utility patent can be infringed if it is reproduced either sexually or asexually. Since the utility patent owner can prevent others from making and using the invention, does this mean the purchaser of a patented seed cannot sell the resulting plants to the public? No, under patent laws, the purchaser can sell the plants but cannot manufacture the seed line.

Related terms: genetic engineering and patents; non-statutory subject matter.

Plant Variety Protection Act

This statute authorizes the U.S. Department of Agriculture to grant patent protection for certain types of plants.

Related terms: plant patents.

practicing an invention

See reduction to practice; working a patent.

preliminary look at prior art

This preliminary investigation by inventors consists of checking stores, catalogs, reference books, product directories and similar sources to discover whether a proposed invention already exists. Such preliminary looks should be done before investing time and money developing an invention.

If a preliminary look finds no relevant previous development, then work on the invention may be initiated, with a more serious patentability search to follow before significant resources are expended.

Related terms: patent search; patentability search.

presumption of validity

In an infringement suit brought by a patent owner against an alleged infringer, it is legally presumed that the patent owner’s patent is valid. Practically, this means the legal responsibility (burden) is on the alleged infringer to prove that the patent is invalid, if he or she wants to raise this defense.

Related terms: defenses to a patent infringement claim; infringement action.

price fixing

If two or more separate businesses enter into an agreement (formal or informal) to maintain their prices at a certain level, it is known as price fixing. Price fixing is considered a restraint of trade, which is a violation of the antitrust laws. A patent owner who uses the patent monopoly for the purpose of fixing prices may also be deemed guilty of misusing the patent and accordingly lose the patent rights.

Related terms: antitrust law (federal) and patents; concerted refusal to deal; misuse of patent.

printed publication as statutory bar

Under patent law, published writings are considered prior art references, so a previous publication that discusses or describes the essential ideas, functional means or structures that underlie an invention can render that invention ineligible for a patent (the patent is barred by statute from issuing). This will happen if the article describing the invention was published:

• by someone other than the inventor anytime before the date of the invention, or

• by the inventor (or someone else) more than one year before the patent application for the patent was filed.

  Related terms: anticipation; one-year rule; statutory bar; thesis as prior art.

prior art, defined

“Prior art” refers to all previous developments that are used by the U.S. Patent and Trademark Office and the courts (in the event of an infringement action) to decide whether a particular invention is sufficiently novel and nonobvious to qualify for a U.S. patent.

Prior art relevant to a particular invention generally includes:

• any description or discussion of the invention’s essential characteristics in any printed publication anywhere in the world, in any language, that was made available to the public before the invention was conceived of

• any description or discussion of the invention in a printed publication, public use or sale of the invention occurring more than one year prior to the filing date of the patent application

• any public knowledge of the invention in the U.S. that can be shown to have existed at the time the invention was first conceived of

• any relevant expired or current foreign or U.S. patent issued at any time before the inventor conceived of the invention for which a patent is being sought, or

• any relevant U.S. patent application made prior to conception.

Any specific instance of prior art is generally referred to as a prior art reference.

Related terms: anticipation; nonobviousness, defined; novelty, defined; patentability; prior art reference.

prior art reference

Any printed publication, prior patent or other document that contains a discussion or description relevant to an invention for which a patent is currently being sought or enforced is a prior art reference.

When applying for a patent, an applicant who knows of any prior art references is required to submit an Information Disclosure Statement (IDS) in which all such references must be listed, and to which copies of these references must be appended.

In the event a patent examiner rejects one or more claims on the ground they are anticipated by (or are obvious over) the prior art, the U.S. Patent and Trademark Office sends out a Notice of Prior Art References, with copies of the actual references attached, which identifies the prior art references upon which the rejection is based.

Related terms: anticipation; Information Disclosure Statement; prior art, defined.

processes (or methods) as patentable subject matter

Ways of doing or making things (termed processes or methods) are one of the five categories of statutory subject matter—that is, types of inventions that can be patented. Processes always have at least two steps, each of which expresses some activity or occurrence. Examples of processes include heat-treatment processes, chemical reactions, surgical techniques, gene-splicing procedures, applied robotics and computer software.

To be patentable, a process must produce a useful, concrete and tangible result.

Related terms: non-statutory subject matter; software patents; statutory subject matter.

prosecution of a patent application

Once a regular patent application has been filed, the full gamut of procedures that must be followed to actually obtain the patent is referred to as the prosecution of a patent application. The patent prosecution process does not apply to Provisional Patent Applications (PPAs), which are only examined if the applicant wishes to claim the PPA filing date.

The first step in the patent prosecution process is when a PTO patent examiner who has been assigned to the application sends the applicant a written form (called the first office action), which sometimes takes place up to a year after the application is received. This form will typically deny all or most of the application’s claims on a variety of grounds.

If the rejection was due to lack of novelty (35 United States Code, Section 102), the office action will identify the reasons. If the rejection was due to obviousness over the relevant prior art (35 United States Code, Section 103), the office action will list the prior art references in a Notice of Prior Art References. In both Sections 102 and 103 rejections, the PTO will attach copies of the relevant prior art references and designate the claims to which the references pertain.

If a valid PPA was previously filed on the invention, and the PPA filing date is claimed in the regular patent application, the examiner will use that earlier date to assess the prior art and only base a rejection on prior art references that came before it.

Claims also may be rejected under 35 United States Code, Section 112, because they are too broad or are formulated incorrectly. If so, the inventor will be provided the opportunity to make amendments suggested by the examiner. On occasion, the patent examiner will determine that the application impermissibly claims two or more inventions. In this case, the applicant will be informed in the first office action that he or she must “elect” (choose to include) the claims covering one of the inventions in the original (parent) application, and optionally file one or more divisional applications for the nonelected claims (the ones that weren’t kept in the parent application) that recite the additional inventions.

Sometimes, an inventor will improve his or her invention while the application is pending or will want to broaden or better define the claims. If so, he or she can file a continuation-in-part (CIP) application incorporating the changes.

Whatever the recommendations made by the patent examiner, and the reasons given for the claims being rejected, the applicant must either file a response to the first office action within three months or pay a fee and obtain up to a three-month extension. If he or she fails to do either, the application will be deemed abandoned.

Once the applicant has responded, the patent examiner will respond again, usually with a final office action. This will either reject all of the claims with suggested modifications that would make them allowable or reject some of the claims and accept others. If amended claims are rejected on anticipation or obviousness grounds, any pertinent prior art references that were not cited the first time around will be listed (and copies sent). Suggestions may also be made for how to narrow claims that are too broad.

After the final office action, the applicant has four basic choices:

• amend the claims as suggested by the patent examiner

• request that the patent examiner reconsider one or more of the decisions contained in the final office action

• appeal to the Board of Patent Appeals and Interferences, or

• file a continuation application (essentially a new application with new claims, with the benefit of the original filing date for the purpose of determining the effect of relevant prior art references).

• file a Request for Continued Examination (RCE), which effectively removes the final action so that the applicant can submit further amendments, for example, new claims, new arguments, a new declaration or new references.

Whatever the choice, it must be done within three months of the final office action, or up to a three-month extension must be obtained. Otherwise, the application will be deemed legally abandoned. If the application has not been published by the PTO, it won’t serve as a prior art reference after being abandoned —unless a defensive publication is made by the applicant.

Assuming that the final action results in an allowance of one or more claims, either as drafted or as amended in response to the final office action, the applicant will receive a Notice of Allowability. This will be followed or accompanied by a formal Notice of Allowance and a form specifying the issue fee that is due. At this time it is still possible to file minor amendments. Also, if any amendments to claims that have occurred in the course of prosecution are not covered by the formal Patent Application Declaration signed by the applicant, a Supplemental Declaration should also be filed.

If the issue fee is sent to the PTO within three months of the formal Notice of Allowance, the applicant will receive a patent deed (a decorative document describing the patent with a PTO seal on the front) and a regular photocopy of the patent. Although the formal patent prosecution process is now over, the inventor may later wish to amend his or her in-force patent in some material way, perhaps because a new ramification is spotted or the inventor now sees that one or more of the claims could have been made broader. If the amendment broadens one or more claims, and the application is filed within two years of the patent issue date, a reissue patent may be obtained. This will carry the same issue date as the original patent, but will incorporate the claims as amended.

Prosecuting of a Patent Application

Related terms: claims, defined; continuation application; continuation-in-part application (CIP); filing date; issue fee; office action; patent application; Provisional Patent Application (PPA); reconsideration request; reissue patent; Request for Continued Examination; supplemental declaration; swearing behind a prior art reference.

Provisional Patent Application (PPA)

An inventor may file an interim patent application (called a provisional patent application or PPA) to constructively reduce his or her invention to practice. If the PPA sufficiently discloses the invention, and a regular patent application is filed within one year of the PPA’s filing date, the inventor gets the benefit of the PPA filing date for the purpose of deciding whether prior art is relevant and, in the event an interference exists, who is entitled to the patent. In addition, the inventor gets the full 20-year term from the date the regular application is filed.

The PPA only need contain a portion of the information presently required in a patent application specification—a complete description of the invention (structure and operation) and any drawings that are necessary to understand the description. The PPA need not include claims, formal drawings, a Patent Application Declaration or an Information Disclosure Statement. In order to claim the benefit of the PPA’s filing date, the applicant must file an amendment in the regular patent application referring to the earlier filed PPA.

The PPA currently (March 2003) costs $80 to file ($160 for large entities), which means an inventor can now afford to get an invention registered with the PTO and have a year to show the invention to potential developers before filing a regular patent application. An inventor who files a PPA may claim patent pending status.

Related terms: filing date; patent application; patent pending; prosecution of a patent application.

public domain

When an idea, design or expression does not belong to anyone under the patent (or copyright) laws, it is said to exist in the public domain and may be used by anyone for any purpose without permission from its originator or author.

Any invention that is published, put in public use, sold or placed on sale more than one year prior to the filing of a patent application is considered to be in the public domain. Also in the public domain are inventions whose patents are no longer in force (that is, the patent period has expired).

Related terms: anticipation; defensive disclosure; on sale statutory bar; printed publication as statutory bar; prior art, defined; Statutory Invention Registration (SIR).

public use

When an invention is worked (used by the inventor in the presence of one or more members of the public in a non-confidential context), it is considered to have been publicly used. Public use of an invention constitutes a statutory bar to a patent under the anticipation doctrine, unless the patent application is filed within a one-year period after the public use.

There are exceptions to the public use rule for:

• experimental tests (to develop and improve an invention), and

• uses that are not, in fact, public (for instance, when witnesses to the use sign nondisclosure agreements or are otherwise required to maintain secrecy).

Whether any particular use of an invention is a public use must be determined on a case-by-case basis.

EXAMPLE: Julian David, a motel keeper, invents a counterweighting device that allows a king-size bed to be easily moved on very thick carpets. Julian actually constructs a bed that uses the device and uses it in his motel for a little over a year. If Julian then attempts to obtain a patent, the PTO will probably deny it. Why? The use of the bed in the motel probably would be considered a public use, and therefore a statutory bar to the patent, because the patent application was not filed within one year of the “use.” Julian is required to disclose this use of the invention in his patent application.
What about the exception for experimental uses? If Julian can show that he was engaged in both monitoring the experiences of cleaning personnel with the bed, and actively modifying the bed’s basic design according to what he learned, he might escape the statutory one-year bar. What if Julian only allowed one customer to use the bed, and only for two nights, but he still failed to file the patent application within one year? He will be barred from the patent unless he can establish that the two nights’ use was really for experimental purposes or he had the user sign a nondisclosure agreement.

Related terms: anticipation; exhibiting an unpatented invention; experimental use of an unpatented invention; statutory bar.

race statutes

See first to file countries.

read on

In the patent context, “read on” means to literally describe. A patent is infringed if the patent’s claims read on (literally describe) all elements of the infringing device.

Related terms: anticipation; claims, defined; infringement of patent.

recite

When the claims of a prior patent literally describe or “read on” the elements of a later invention, the claims are said to “recite” such elements.

Related terms: read on.

reconsideration request

A patent applicant may request that the patent examiner reconsider an application whose claims were rejected in the final office action. If this reconsideration request is rejected, the applicant may:

• amend the claims in the manner suggested by the patent examiner, if this option was presented to the applicant in the office action

• appeal to the Board of Patent Appeals and Interferences, or

• file a continuation application.

  Related terms: continuation application; final office action; prosecution of a patent application.

reduction to practice

After conceiving an invention, the inventor’s next step is to reduce the invention to practice. This can be done in several ways:

• build and test the invention (called actual reduction to practice)

• file a Provisional Patent Application (PPA) on the invention (called constructive reduction to practice), or

• file a regular patent application (also a constructive reduction to practice).

While it’s not legally required to get a patent, many inventors find that building and testing a working model of an invention is necessary to convince others to finance the invention’s development. Also, if the invention consists of something generally thought highly improbable, such as a perpetual motion machine (a machine that will perpetually produce more energy than it uses), the U.S. Patent and Trademark Office (PTO) may ask that its operability be demonstrated.

The issue of when an invention was first reduced to practice can be extremely important if an interference occurs—that is, two or more pending applications claim the same underlying invention. In this situation, the inventor who was first to reduce the invention to practice, whether by building and testing it or by filing a provisional or regular patent application, will normally be entitled to the patent.

EXAMPLE: Babette and Alain, working independently in different states, both invent a new type of ski binding that releases when sensors on the skier’s leg muscles indicate potential for severe muscular or skeletal strain. Babette files a regular patent application one day earlier than Alain. Because there are now two pending regular patent applications covering the same underlying invention, the PTO declares an interference. Babette’s filing date is one day earlier than Alain’s, so she should be awarded priority (and the patent) unless Alain can establish that he successfully built and tested his invention before Babette filed her application. (If Alain is able to show that this occurred, the PTO will examine several additional factors when deciding who should get the patent.)

However, if the other inventor can prove that he or she was first to conceive the invention and thereafter was diligent in attempting to either build and test the invention or to file a provisional or regular patent application on it, that inventor will be entitled to the patent.

Related terms: constructive reduction to practice; interference, defined; Provisional Patent Application (PPA).

reexamination of patent

The U.S. Patent and Trademark Office (PTO) may hold a formal proceeding in which it reexamines an in-force patent to determine whether newly cited prior art references adversely affect the validity of the patent. A patent may be reexamined any time while it is in-force. The patent owner or anyone else may initiate the reexamination. Upon request, the requester’s identity will be kept confidential. (The statute establishing the reexamination process is 35 United States Code, Section 302.)

The patent reexamination process can be useful to patent owners as well as alleged (or would-be) infringers.

EXAMPLE 1: A patent owner discovers infringement and the infringer counters that the patent is invalid in light of certain prior art. The owner decides to refer the prior art in question to the PTO and request a reexamination before filing an infringement lawsuit. If the PTO upholds the claims as drafted, the owner can feel secure about bringing the infringement action, because the results of the reexamination will be admissible in court and the court will almost always honor the PTO’s determination.

EXAMPLE 2: A business wants to use an invention covered by an in-force patent that it believes is invalid because of certain prior art. The reexamination process is a relatively inexpensive way for the business to anonymously “test the water” without actually infringing the patent.

The party requesting the reexamination must pay a reexamination fee ($2,520 in March 2003). The requester must also describe the way in which prior art references specifically bear on the validity of the claims contained in the patent.

Upon request for a reexamination, the PTO has three months to decide whether a “substantial new question of patentability has been raised.” If not, the requester will be refunded the bulk of the reexamination fee, with the balance retained by the PTO.

If the requester adequately demonstrates why prior art references are relevant, the patent will be reexamined and the claims possibly rejected or amended based on the prior art. Also, the PTO may choose to invite the public into the
reexamination process by asking it to submit any known instances of prior art relevant to the reexamination.

If a reexamination finds that the patent claims are still valid, the PTO will issue a Certification of Validity. If it finds that one or more claims are not valid as drafted, the inventor will have an opportunity to redraft the claims to the patent examiner’s satisfaction. In the event of such a change, the amended claims will be entitled to the original filing date.

Related terms: in-force patent; nonobviousness, defined; prior art reference.

references

See prior art reference.

regular patent application

See patent application.

reissue patent

To revise the specification or claims of an in-force patent, the patent owner may apply for a reissue patent. If it seeks to broaden the claims, the reissue patent must be applied for within two years of the issue date of the original patent. If issued, the reissue patent takes the place of the original patent and expires when that patent would have.

Reissue patents can be used to correct any significant error in the claims of the original patent, or to narrow or broaden its claims. In fact, reissue patents are relatively rare, because the push and pull of the patent prosecution process tends to make the claims both accurate and as broad as the U.S. Patent and Trademark Office will allow.

Related terms: in-force patent; intervening right; patent application.

repair doctrine

Anyone who is authorized to make, use or sell a patented device is also permitted to repair and replace unpatented components. This right is asserted as an affirmative defense in a patent infringement lawsuit. The defense does not apply to completely rebuilt inventions, unauthorized inventions, or items that are made or sold without authorization of the patent owner.

rejection of patent application

See office action.

Request for Continued Examination

A Request for Continued Examination (RCE) is filed when a patent applicant wishes to continue prosecuting an application that has received a final office action. Filing the RCE with another filing fee effectively removes the final action so that the applicant can submit further amendments, for example, new claims, new arguments, a new declaration or new references.

An RCE must cover the same invention as the parent or basic application and the parent or basic application must be abandoned when a continuation is filed. When an RCE continuation is filed, the PTO uses the same file jacket and papers as the parent or basic filing. After an RCE is filed, prosecution of the same application simply continues as if there were no final action. The RCE is entitled to the benefit of the filing date of the parent or prior application for purposes of overcoming prior art.

It is also possible to file a continuation of an RCE. In fact, it’s theoretically possible to file an unlimited sequence of RCEs or continuation applications. However, an RCE is not an end-run around a previous objection by the PTO. The RCE or continuation will be quickly rejected unless the inventor truly comes up with a different slant on or definition of the invention that was not previously considered by the PTO. When a patent issues on an RCE, the heading of the patent will not indicate that it’s based on the RCE.

An RCE must be mailed before the period for response to the final rejection expires or before any extensions expire. The RCE can be mailed on the last day of the period for response.

reverse engineering

“Reverse engineering” is the process of figuring out how a device is built by taking it apart and studying its components.

Note

See also Part 1 (Trade Secret Law): reverse engineering and trade secrets.

search of patentability

See patentability search.

secrecy of patent application

See confidentiality of patent application.

senior party in interference proceedings

The first inventor to file a provisional or regular patent application on an invention is considered the senior party if the PTO declares an interference (when two or more inventors file separate patent applications on the same invention). One’s status as the senior party does not necessarily entitle him or her to the patent. This will depend on which inventor was first to conceive of the invention and how diligently that inventor moved to reduce the invention to practice.

Related terms: interference proceeding; junior party in interference proceedings; reduction to practice.

sequence listing

For biotech inventions, the PTO requires an attachment to a patent application that includes a sequence listing of a nucleotide or amino acid sequence. The applicant attaches this information on separate sheets of paper and refers to the sequence listing in the application (see PTO Rule 77).

shelving of invention

See anti-shelving clause.

shop rights

An employer has the rights to an irrevocable, non-assignable and non-exclusive, royalty-free license to use an employee’s invention if the invention was conceived of and reduced to practice primarily on company time, with company facilities and material. The theory is that because such inventions are developed with the employer’s funds or property, the employer should at least be able to use them in the business.

However, the employee still qualifies as the patent owner unless the patent is assigned to the company under an employment agreement, which is common. As patent owner, the employee retains the right to issue non-exclusive licenses to others to use and manufacture the invention in exchange for royalties or other compensation.

Related terms: march-in rights; non-exclusive patent license; patent owner.

shotgun rejection of claims

This slang term refers to the U.S. Patent and Trademark Office (PTO)’s habit of rejecting all claims in its first office action (its first formal response to the application) on the premise that it will deal more seriously with the application if and when the applicant submits amended claims or a more detailed explanation of why the existing claims should be allowed. Although discouraging, a shotgun rejection does not necessarily mean that an applicant should abandon trying to patent the invention. As mentioned, a shotgun rejection has much more to do with general PTO practices than with the merits of a particular patent application.

Related terms: first office action; prosecution of a patent application.

single application rule

See divisional application.

small entity

A for-profit company with 500 or fewer employees, a nonprofit organization, or an independent inventor is referred to by the U.S. Patent and Trademark Office (PTO) as a small entity. The PTO charges small entities half the fees charged large entities for filing a patent application and for issuing and maintaining the patent. A small entity qualifies for these lower fees provided that the company or inventor has not assigned or licensed, or agreed to assign or license, its patent rights to a large entity (a for-profit company with over 500 employees).

Related terms: issue fee; large entity; maintenance fees.

smart money

The colloquial phrase “smart money” is used by patent attorneys to describe the extra damages that can be imposed on defendants found guilty of willful or flagrant infringement. These extra damages—up to three times the actual damages established in court—are awarded to teach the infringers a lesson and make them “smart.”

Related terms: infringement action.

software-based inventions

See software patents.

software patents

Patents don’t issue on software itself, although they issue on inventions that use innovative software to produce a useful, concrete and tangible result—that is, “software-based” inventions.

When first faced with applications for patents on software-based inventions in the 1950s, the PTO routinely rejected the applications on the grounds that software consists of mathematical algorithms (abstract methods for solving problems not tied to a particular use or tangible structure), which were considered to be unpatentable for the same reason abstract laws of nature are unpatentable.

In the late 1980s, however, the U.S. Patent and Trademark Office began granting patents on inventions that rely heavily on innovative software. Now the PTO issues patents on software if the patent application describes the software in relation to computer hardware and related devices, and limits the software to specific uses.

Software-based inventions that have qualified for patents often involve software that connects to and runs hardware components. For example, consider a device that monitors a patient’s heart functions, feeds the raw information into a computer where a program analyzes the information according to a set of algorithms and causes the results of this analysis to be displayed on a monitor in a format that shows whether the person is at risk for a heart attack. While none of the components of this invention would qualify for a patent (the physical items have already been invented and the algorithm itself is unpatentable), the overall invention did qualify for a U.S. patent, even though the software was the key aspect of the invention.

It is also possible to obtain a patent on the process or method used by software as well as on the machine aspect of the invention—that is, the combined software and hardware. For instance, the heart monitor invention described above received a patent on a machine claim (a claim that described the structure which produced the result) as well as a method claim (a claim that described the process by which the structure worked). Other examples of software-based inventions that have received patents are a device that converts sound waves into smooth wave forms for display on an oscilloscope (a rasterizer), and software that moves the cursor on a computer screen.

In a recent case, State Street Bank and Trust v. Signature, 149 F.3d 1368 (Fed. Cir. 1998), the Court of Appeals for the Federal Circuit has moved even further in the direction of full patentability for software programs. The court ruled that a process carried out by a software program is statutory subject matter if it produces a useful, concrete and tangible result. This ruling seems to indicate that it’s no longer necessary to claim structure as part of the invention.

Despite the fact that software-based inventions may qualify for a patent, most do not because they are considered obvious over the prior art, and must therefore be protected in another manner—usually under trade secret or copyright laws.

Virtually all patents that have been obtained on software-based inventions are utility patents, although design patents have been issued on computer screen icons.

Related terms: algorithms; business methods as statutory subject matter; non-statutory subject matter, State Street Bank and Trust v. Signature.

Software Patent Institute

This independent nonprofit corporation (www.spi.org) collects and organizes nonpatented prior art references in the software field.

The purpose of the SPI is to facilitate more complete patent searches. Because most software is not patented, a search of the patent database usually produces a small fraction of the prior art in the software field. By collecting as many samples of nonpatented software as possible, SPI hopes to provide patent searchers with a truer picture of the relevant prior art.

Related terms: patent search, computerized; prior art, defined; prior art reference.

specification, defined

The narrative portion of a patent application is called a specification. A specification includes descriptions of:

• the type of invention

• the pertinent prior art (previous developments in the technology utilized in the invention) known to the applicant

• the purpose of the invention

• the invention itself (for example, how it’s constructed and what it’s made of)

• the operation of the invention (how it works), and

• any accompanying drawings.

As defined by the patent laws, the specification also includes the patent claims and an abstract—a one-paragraph summary of the specification. (A sample specification is provided in the Forms & Resources section at the end of this part of the book.)

Essentially, the specification must provide enough information about the invention so that a person having ordinary skill in the art (proficient in the particular area of expertise involved in the invention) could build it without having to be “inventive.” Because the specification is where the fullest disclosure of the invention is made, it (rather than the claims) is commonly used to determine whether a later invention has been anticipated by the patent.

Related terms: claims, defined; disclosure requirements for patents.

statement of prior art references

See Information Disclosure Statement.

State Street Bank and Trust v. Signature Financial Group

In this 1998 case, (149 F.3d 1368 (Fed. Cir. 1998)), the Court of Appeals for the Federal Circuit made it much easier to obtain a patent on computer software and on methods of doing business. The software invention at issue in this case was designed solely to make financial calculations dealing with advantageous mutual fund investing techniques. In the past, such a program would have been considered to be nothing more than a mathematical algorithm, which does not constitute statutory subject matter. However, in State Street, the court ruled that the mathematical algorithms are non-patentable only when they are nothing more than abstract ideas consisting of disembodied concepts that are not useful. In the court’s words: “Today we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces a useful, concrete and tangible result—a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”

The court also shed new light on the long-held belief that methods of doing business do not constitute statutory subject matter. The court pointed out that the patent statutes do not specifically exclude business methods from being patentable and that no authoritative case law supported the concept.

The principle established in the State Street case—that business methods are suitable patent subject matter—was affirmed in AT&T Corp. v. Excel Communications, Inc., 179 F.3d 1352 (Fed. Cir. 1999).

statute of limitations, infringement action

In patent law there is no time limit (statute of limitations) for filing a patent infringement lawsuit but monetary damages can only be recovered for infringements committed during the six years prior to filing the lawsuit. For example, if a patent owner sues after 10 years of infringement, the owner cannot recover monetary damages for the first four years of infringement. Despite the fact that there is no law setting a time limit, courts will not permit a patent owner to sue for infringement if the owner has waited an unreasonable time to file the lawsuit (this is the doctrine called “laches”). (35 United States Code, Section 286.)

Related terms: defenses to a patent infringement claim.

statutory bar

A statutory bar is any federal statutory provision that requires the U.S. Patent and Trademark Office or a court to disqualify an invention for a patent. Among the most common types of statutory bars are:

• the rule that prior patents, or other printed publications which describe the invention, may preclude the invention from being considered novel

• the rule that a later invention is precluded from receiving a patent by an earlier invention that contains all of the same elements

• the rule that a patent may not be obtained on an invention if the application has been abandoned by the inventor, or

• the rule that a description in a printed publication, public use or on sale status of the invention more than one year prior to the application filing date precludes a patent from issuing.

  Related terms: anticipation; on sale statutory bar; printed publication as statutory bar; prior art reference; public use; swearing behind a prior art reference.

Statutory Invention Registration (SIR)

A patent applicant can abandon an application and prevent anyone else from getting a patent on the underlying invention by in effect putting the invention in the public domain. This is done by converting a patent application to a SIR.

The U.S. Patent and Trademark Office in turn will publish the abstract of the patent included in the original application in the Official Gazette, thereby transforming the invention into a prior art reference effective on the original application’s filing date. No patent can issue on the invention unless another inventor has already claimed it in a pending application and is entitled to priority because of an earlier date of conception or reduction to practice.

It is also possible to turn an invention into a prior art reference (thereby placing it in the public domain) by publishing an article on it or by listing it with an invention register, but the effective date of the reference will be the date of publication rather than the filing date of the original application.

Related terms: defensive disclosure; interference proceeding.

statutory subject matter

The U.S. Patent and Trademark Office issues utility patents, design patents and plant patents. To qualify for a utility patent, an invention must fit into at least one of five categories defined in 35 United States Code, Section 101. Qualifications for a design or plant patent are not, however, governed by these statutory categories.

The statutory categories for utility patents are:

• compositions of matter

• manufactures (or articles of manufacture)

• machines (or apparatuses)

• processes (or methods), and

• new and useful improvements of any of the above categories.

Any invention that does not fall within at least one of these categories does not qualify for a utility patent, no matter how novel or nonobvious it may otherwise prove to be. On the other hand, it is not necessary to define exactly which category applies to a particular invention as long as the patent examiner concludes that at least one of them does.

EXAMPLE: A patent application on an automated database invention that answers legal questions can be viewed as claiming a machine (apparatus) or a process (method). Because the invention can fit within one or the other of these categories, it is deemed to be statutory subject matter.

To qualify for a utility patent, an invention must be novel, useful and nonobvious, in addition to fitting within at least one of the five statutory categories. The phrase “statutory subject matter” is often used to refer not only to inventions that fall within one of the five statutory classes, but to those that satisfy these other patent requirements as well.

Related terms: non-statutory subject matter; prosecution of a patent application.

submarine patent

A patent may be deliberately held up in the U.S. Patent and Trademark Office by the applicant while the technology covered by the patent is developed by companies that have no knowledge of the pending application. Then, once the patent issues, it is like a submarine, suddenly emerging from the patent office and forcing the users of the invention to pay hefty license fees. Two changes in patent law have substantially eliminated the possibility of submarine patents. In 1995 the patent laws were amended to limit the duration of patents to 20 years from the date of filing. In 1999, the patent laws were amended to require publication of patent applications within 18 months of filing unless the patent applicant will not be filing the patent application in a foreign country.

Related terms: confidentiality of patent application.

substitute patent application

Inventors sometimes file a new patent application after abandoning an earlier application on the same invention. For example, if an applicant who failed to respond to the U.S. Patent and Trademark Office’s first office action within three months refiles a duplicate application, the later application is considered a substitute of the abandoned parent application. The substitute application does not get the benefit of the original filing date, so any prior art that has surfaced in the meantime may operate to anticipate the invention and thus bar the patent from issuing.

Related terms: abandonment of patent; parent application.

supplemental declaration

When claims are broadened or changed in any substantial way in the course of a successful patent prosecution, the applicant must file a supplemental declaration with the U.S. Patent and Trademark Office after receiving a notice of allowance. Under oath, the inventor must:

• specify which claims have been altered in the course of the prosecution, and

• declare that the applicant was the inventor of the subject matter contained in the altered claims, and knows of no prior art that would anticipate the claims as altered.

  Related terms: prosecution of a patent application.

swearing behind a prior art reference

Swearing behind a prior art reference is a way of eliminating a prior art reference cited by a patent examiner against an application.

To swear behind a cited prior art reference, the applicant must show that the date his or her invention was conceived of or reduced to practice was before the effective date of the prior art reference. The evidence to establish these facts typically consists of the inventor’s testimony under oath and appropriate entries from his or her notebook or disclosure documents that are submitted to the PTO.

If the prior art reference is a publication dated less than one year before the patent application’s filing date, a showing that the invention was conceived of prior to the publication, and diligent attempts were made to reduce it to practice, will eliminate the reference as a statutory bar.

EXAMPLE: An article appearing in the November 1999 issue of a leading popular science magazine details an efficient portable photovoltaic cell, able to run various electronic devices. Lou Swift has already conceived of such a cell, and has been busy designing it so that a patent application can be filed. Lou may still be able to obtain a patent if she files a patent application within one year of the article’s publication date and shows (swears behind) that she conceived her invention prior to such publication date and was diligently engaged in reducing it to practice.

When a prior art reference is a U.S. patent with a filing date preceding the applicant’s filing date and an issue date that is less than one year before the applicant’s filing date, a showing that the inventor conceived of the invention prior to the patent’s filing date, and thereafter exercised diligence to reduce it to practice, will eliminate the patent acting as a statutory bar to the application.

EXAMPLE: Lou Swift invents a photovoltaic cell, but before she files a patent application she discovers that another inventor has patented the same invention (the patent issued on July 1, 2000). The other patent will be eliminated from consideration if Lou: (1) files her application within one year of the date the patent issued (that is, by July 1, 2001), (2) is able to prove that she conceived of her invention prior to the date the other patent application was filed, and (3) can show that she was diligently attempting to reduce her invention to practice at the time the other patent application was filed.

Related terms: first office action; interference, defined; notebook; prior art reference; reduction to practice; statutory bar.

teach

When a prior publication, invention or patent discusses the elements of, or technology associated with, an invention for which a patent is being sought, it is said to “teach” the invention.

thesis as prior art

A published college or university thesis may count as a prior art reference, even if published in an obscure publication, and thus operate as a statutory bar to a patent if it describes (teaches) the essential characteristics of an invention on which a patent is being sought. This applies to a patent sought by anyone other than the thesis author, and to the thesis author as well if he or she did not file the patent application within one year of the date the thesis was first published.

Because a thesis can count as prior art, a thorough patent search will usually cover listings of theses, as well as prior patents and publications in trade journals.

Related terms: printed publication as statutory bar; prior art reference.

Title 35 of the United States Code

This part of the United States Code (sometimes abbreviated as USC) contains the patent statutes. The entire code can be found in 35 United States Code Annotated (USCA) or 35 United States Code Service, Lawyers Edition (USCS).

transfer of patent or patent application

See assignment of a patent.

transmittal letter for patent application

See patent application.

treaties on international patent protection

See Patent Cooperation Treaty (PCT); Convention application; international patent protection for U.S. inventions.

treble (triple) damages for patent infringement

See infringement action.

tying

In some circumstances, patent owners may violate the antitrust laws by using their patents to unfairly require that companies purchasing the patented technology also purchase unpatented products as well. For example, a clothing manufacturing company patents a new machine for sewing buttons. The clothing company licenses the machine and also insists that manufacturers buy buttons from it as a condition of the license. In general, deciding whether a particular activity violates the antitrust laws involves such variables as the intent of the actors, the degree of harm done to other companies and the level of commerce that is affected (local, state, national or international).

Related terms: antitrust law.

unenforceable patent

A patent may be declared unenforceable if the alleged infringer can show that the patent owner has misused the patent. Among the specific types of misuse that can render a patent unenforceable are:

• falsely marking an invention, such as putting a patent number on it that doesn’t apply

• illegal or unfair licensing practices

• an extended delay in bringing the infringement lawsuit to the detriment of the defendant (called laches), or

• fraud on the U.S. Patent and Trademark Office (PTO), such as failing to include a pertinent prior art reference in the patent application.

• Patents may be declared invalid if a court finds that:

• the PTO didn’t discover or properly analyze relevant prior art references that affect the novelty or nonobviousness of the invention (in short, the invention really didn’t qualify for a patent)

• the invention doesn’t or won’t work

• the disclosure of the invention in the patent application contains insufficient information to teach an ordinary person skilled in the art to build the invention

• the patent claims are vague and indefinite

• the patent was issued to the wrong inventor

• antitrust violations occurred, or

• any other facts exist that operate to retroactively invalidate the patent.

  Related terms: defenses to a patent infringement claim.

unobviousness

See nonobviousness, defined.

U.S. Patent and Trademark Office (PTO)

An administrative branch of the U.S. Department of Commerce, the U.S. Patent and Trademark Office (www.uspto.gov) is charged with the responsibility
for overseeing and implementing the federal laws on patents and trademarks. Also known as the PTO, or Patent Office, this agency is responsible for examining, issuing, classifying, and maintaining records of all patents issued by the United States. It also serves as a filing agency for Patent Cooperation Treaty (PCT) applications.

The PTO publishes the Official Gazette (both the patent and trademark versions), a weekly periodical that describes newly issued patents, new regulations and other information of interest to patent practitioners. The PTO also maintains a library in which a complete patent search may be conducted by classification.

Related terms: Patent Cooperation Treaty (PCT).

usefulness, required for patents

See utility patents, defined.

utility

See utility patents, defined.

utility model

This provision in Japanese and German law states that inventions that do not qualify for a regular patent may nonetheless receive some protection for a shorter period of time.

utility patents, defined

Patents may issue on inventions that have some type of usefulness (utility), even if the use is humorous, such as a musical condom or a device to hold your big toes together to prevent sunburned inner thighs. However, the invention must work, at least in theory. Thus, a new drug that hasn’t been tested or a new chemical for which no use is now known will not receive a patent. Design patents and plant patents, the other two types of patents obtained in the U.S., do not require utility.

Related terms: design patents; plant patents; statutory subject matter.

validity search

A patent search may be conducted after a patent has issued for the purpose of discovering any fact that might be used to invalidate, and thus break, the patent. Generally conducted by the defendant in a patent infringement action, a validity search is often more thorough than the initial patentability search conducted by the inventor prior to filing a patent application, which was used to determine whether the invention was anticipated.

Related terms: defenses to a patent infringement claim; patent search.

working a patent

Actually developing and commercially exploiting the underlying invention covered by a patent is known as working a patent. In many countries outside the U.S., a patent owner’s failure to work the patent within a specific period of time may result in the owner’s being forced to grant a license (called a compulsory license), at government-set fees, to any party who desires to do so.

Related terms: compulsory licensing of a patent.

World Intellectual Property Organization (WIPO)

See International Bureau of the World Intellectual Property Organization; Patent Cooperation Treaty (PCT).

World Trade Organization (WTO)

This organization was created by the General Agreement on Tariffs and Trade (GATT) for the purpose of enforcing the intellectual property and other trade agreements contained in that treaty.

Related terms: GATT (General Agreement on Tariffs and Trade).

World Wide Web and patent searches

See patent search, computerized.