PATENT BASICS -- (back to Patent index)

What is a patent? A patent is a property right granted by the U.S. Government to an inventor for a limited period of time. The right conferred by the patent is "the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States."

In exchange for the right conferred by the patent, an inventor must publicly disclose his or her invention when the patent is granted. In this way, when the term of the patent expires, the public has the opportunity to make use of the knowledge supporting the invention. Inventors who do not wish the public to know about the details of their invention may seek to protect their ideas as trade secrets instead of through patenting.

Who owns a patent? In the United States, patents are issued only in the name of the actual inventor(s). A patent may, of course, be sold, assigned, licensed, mortgaged, donated or otherwise transferred by the inventor. Often, then, the owner of the patent is the inventor's employer or someone who has purchased the patent rights from the inventor or her employer.

For more information about transferring patent rights, see licensing.

What may be patented? The following are appropriate subjects for patent protection, provided other requirements are met:

• Processes: industrial or technical processes, methods of doing business
• Machines: combinations of mechanical elements
• Articles of manufacture: tangible, manmade or manufactured items, generally including all products not considered "machines" or compositions of matter
• Compositions of matter: physical entities where the substance itself is the important element, such as chemical compositions, mixtures of ingredients and new chemical compounds
• Improvements on any of the above

What may not be patented? The following subjects are not entitled to patent protection:

• Abstract ideas
• Laws of nature and physical phenomena
• Literary, dramatic, musical or artistic work (may be subject to copyright protection)
• Inventions that are not useful (such as perpetual motion machines) or that are offensive to public morality

Basic requirements for patent protection. To qualify for patent protection, an invention must be new, useful and non-obvious.

• New or "Novel": An invention must not be in the public domain before the patent applicant invented the invention. The U.S. Patent Office will not grant a patent on an invention that was publicly used or "on sale" - by anyone, including the inventor - more than one year before the inventor filed a patent application.
  
  
• Useful: An invention must be useful for some purpose, and cannot be inoperative. Utility is not presumed, but must be disclosed as part of the patent application.
  
  
• Non-obvious: Even if no particular prior art anticipates an invention exactly, it can still be "obvious" and thus barred from patent protection. To determine whether an invention is non-obvious one asks, "In light of known, similar products, processes or designs, would a person of ordinary skill (but not extraordinary skill) working in the field related to the inventor's invention consider the differences between the invention and similar products, processes or designs obvious?" Obviousness may also be determined by combining what is disclosed by several pieces of prior art.
  
  

Public disclosure before filing an application. In the United States, an inventor has one year from the time she first makes public her invention to file her patent application. This is sometimes known as the "on sale" bar to patentability. Public disclosure can occur when the invention is described in any published writing, or when the invention is offered for sale, including any pre-manufacture discussion about the invention that involves describing it.

In most foreign countries, there is no one-year grace period; the inventor must file the patent application before the invention is publicly offered for sale, used or displayed.

Types of patents. There are three types of patents: utility, design and plant.

• Utility Patents: These are the most common or "regular" patents. They protect the useful or functional features of a process, machine, article of manufacture or composition of matter.
• Design Patents: Such patents protect only the ornamental design or appearance of an article of manufacture, and not its structural or functional features. Examples include packaging, game boards, furniture, fonts and similar designs.
• Plant Patents: The Plant Patent Act provides patent protection only for asexually reproduced plants. A form of patent-like protection is available for sexually reproduced plants under the Plant Variety Protection Act.

Provisional patent applications. A provisional patent application allows an inventor to establish an early filing date with fewer formalities and lower costs than a non-provisional application. The benefits to a provisional patent application are that it serves as a filing date and allows the inventor to publicly disclose the invention, provided the provisional application is later converted to a nonprovisional one. However, provisional patent applications are not examined and a patent cannot issue from them. The provisional application is maintained in confidence and automatically abandoned within 12 months after filing.

Requirements for provisional patent application:

The applicant must submit:

• a cover sheet identifying the application as a provisional application, the name of the inventor and other bibliographic data;
• a written description of the invention (claims are NOT required);
• a drawing; and
• the filing fee.

Requirements for non-provisional patent application:

The written portion of the patent application must include:

• title of the invention
• background of the invention
• description of prior art
• summary of the invention
• brief description of the drawings (if necessary)
• detailed description of the invention
• claims (at least one)
• an abstract
• oath or declaration
• sequence listing
• drawings (if necessary)
• appropriate filing fees

When can I use "patent pending"? This phrase is used to inform the public that a patent application has been filed and is pending with the USPTO. It has no legal effect, as the protection afforded by a patent does not begin until the patent issues. Penalties may be imposed if the phrase is used falsely.

How long does patent protection work? A patent grants the holder the right to exclude all others from manufacturing, selling, or using ("practicing") the patented product or process for the duration of the patent's term. For U.S. patent applications filed after June 8, 1995, the term of a patent is 20 years from the filing date of the application. Maintenance fees must be paid to the USPTO to maintain patent protection status.

How do I enforce my patent rights? Parties who make, use, sell, offer for sale or import a patented invention are called "infringers." An issued patent provides an owner with the right to bring lawsuits against infringers in federal court, which may award the patent owner damages. Patent infringement lawsuits can be very expensive. It's important to consider the costs of enforcing your exclusive rights when seeking patent protection.

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