Patents can be very important forms of intellectual property to startup companies, as well as large corporations. However, patents are not perfect for many forms of intellectual property. Not every invention is eligible for patenting, and not every patentable invention is worth the cost to obtain or enforce a patent. Thus, it is important for inventors and entrepreneurs to understand the basics of what patents are and are not. We will address how to obtain patents and the costs for doing so in future articles.
As noted in a previous article, patents are legal grants of limited monopolies to make, use, sell or import inventions for a limited period of time (generally 20 years from the date that the application was first filed). To enforce such limited monopoly rights, the patent owner must sue an infringer in a court of law. Thus, a patent is fundamentally the right to file a lawsuit if anyone is practicing or profiting from the claimed invention. Patent infringement lawsuits are expensive and often unpredictable. Patents can be very valuable property for companies with the resources to enforce them in litigation. The costs of litigation mean that patents are often of less value or usefulness to individuals.
Countries only granted patents for inventions that are new and involve an “incentive step” over what is known to the public. The novelty requirement may vary slightly from country to country, but generally countries examine patent applications to determine whether the claimed invention was known or would have been obvious to one fully apprised of the state-of-the-art at the time the patent application was filed. In terminology embodied in United States patent laws, a claim must be “new” and “not obvious” to receive patent protection. Patent claims determined after examination to be neither new and not involve some inventive step–some flash of inspiration–over what was known are rejected. We will explain more about the examination of patent applications in the next article on how to obtain a patent.
As explained in the previous article, there are three types of patents that can be obtained: utility patents, design patents and plant variety patents.
Most patents are utility patents, which encompass methods, materials, machines, software programs stored on a computer-readable storage medium, chemicals, specific DNA sequences, and genetically modified plants and animals.
Design patents cover only the ornamental design of an article; basically the visible features of a product. As the USPTO examiner’s manual expresses it, the ornamental design that can be patented “is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.” Design patents are similar to trademarks, with the exception that they are valid for a limited period of time (e.g., 14 years in the United States) and can only be obtained on novel artistic designs.
Plant variety patents are awarded to those who invent or discover and asexually reproduce a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
The types of inventions that are patentable vary somewhat from country to country, but most practical innovations are eligible for patent protections. In the United States, for example, with few exceptions “anything new under the sun made by man”[1] may be patented. The breadth of patentable subject matter is quite extensive and encompasses most innovations that one would expect to be patentable. Without attempting to be comprehensive, clearly patentable subject matter includes: new forms of materials (e.g., thermoelectric materials); practically any form of machine, mechanical device, electronics or device with a usable function; chemicals, including the organic chemicals of life; industrial methods, such as methods of making various chemicals or materials; and certain types of computer implemented methods as discussed below. Generally, if an invention concerns something that is tangible or in a tangible form involves machines, then patent protections are available provided the invention is new and not obvious in view of what is known.
Nevertheless, there are some limitations that countries impose on the types of inventions that can be patented. As new technologies have been developed, countries have modified their patent laws through legislation or court action to keep up with technology. The implementation of computer-based systems has also stretched the boundaries of what is considered to be an “invention.”
The boundaries of what is patentable can be difficult to define when the invention involves software executing a series of method steps or operations. This is particularly the case when the method steps could be performed by a person or a machine. In general, methods of making things, such as new methods of manufacturing or formulating materials, are patentable because the result is a transformation of the raw materials. However, methods that do not transform a raw material into a new form or are not involved in industrial processes may not be patentable in all countries. In many countries, such as in the European patent office (EPO), a method must have industrial application in order for it to be patentable. In the United States, a method that does not transform material should be tied to a machine. In other words, a machine must perform at least one of the steps of the method. Also, the invented method must be substantially more than an abstract idea for the invention to be eligible for patent protections.
Many countries do not permit patents on methods of treating a human patient. These prohibitions are premised on the basis that it is improper to give someone the right to prevent a doctor from curing a patient.
In the United States there has been an evolution in the law restricting patents to inventions that are more than an abstract idea. This has proven to be a tricky restriction because, at some level every invention can be boiled down to an abstract idea. The boundary between methods that are unpatentable because they are merely abstract ideas, and patentable method inventions is evolving and can appear subtle. Therefore, it is best to consult with a knowledgeable patent attorney regarding whether a method invention is eligible for patenting as well as how to craft claims to fall within the boundary of patentability. This is particularly true for inventions that are business methods. Applications for such inventions are given extra scrutiny in the US Patent Office. Future articles will delve more deeply into these issues.
In addition to restrictions on patentable subject matter, patent claims must be directed to tangible articles or methods. Non-tangible inventions, such as software code and electronic signals are generally not patentable because they lack a physical form, even though such signals can have significant economic value and be the result of real inventive efforts. Instead, patent claims must recite a tangible form or their physical manifestations. For example, software can be claimed in the United States using claim language like “a non-transitory computer-readable storage medium having stored thereon processor-executable instructions configured to cause a programmable processor to perform operations comprising” a recited method. Thus, it is the memory chip, compact disk or hard drive on which the software is stored that is claimed, not the software itself. In practice, this restriction is not particularly burdensome, but is an example of nuance requirements imposed on patent claim language. Of course, the software instructions are protected from copying by copyrights as will be discussed in later articles.
Intangible signals, such as a particular type of wireless signal or Internet data message are not patentable, and therefore must be covered by claims to circuitry that generates the signal or methods tied to a computer or transceiver. Thus, the transmitter or receiver circuitry that is configured to generate, receiver or process novel signals could be patented, but not the signals alone.
Another subject for which patent protection are prohibited in most countries is human beings. This prohibition comes up most often in the biotechnology arts where an invention might comprise some biological aspect of a human being, such as certain types of tissue genetic sequences. However, the law in this area is also rapidly evolving with the development of new medicines and gene-based therapies.
A final point to consider when deciding whether to pursue patent protections for an invention is whether infringement of the patent claims could be proven in a court of law. This consideration will be addressed further in the next article on how to obtain a patent, because this often turns on how claims are worded. However, occasionally there are inventions that involve a necessary step, process, intermediate state, or element that simply cannot be proven in a court of law. Patent examiners are not tasked with evaluating whether it is possible or easy to prove infringement of a claim, only whether the claim is new and not obvious. An invention for which it is difficult or impossible to prove infringement in a court of law is of little if any economic value, and therefore most likely not worth the cost and effort to patent.
[1] Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)
