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Patent
Law
USPTO
U.S. Patent & Trademark Office
Patent
A United States patent is basically a grant from the United States government
to the owner of an invention to exclude all others in the U.S. from making,
using or selling the invention for a limited time (.i.e., extending from
the date of issuance of a utility patent for a period which may extend
up to 20 years from the date on which an application for the patent was
filed, provided that specified maintenance fees are paid at certain intervals
after the patent's issuance date: 3.5, 7.5 and 11.5 years). 35 U.S.Code
§ 154(a)(2) and § 271.
Alternatively, a patent is the name used for the document that is crafted
from the information contained in the inventor's patent application and
published by the U.S. government. The specification (text) and drawings
of a patent must enable one skilled in the technology of the invention
how to make and practice the invention, and must set forth the best mode
contemplated by the inventor for carrying out the invention. The specification
must conclude with one or more claims that particularly point out and
distinctly claim the subject matter which the inventor regards as his/her
invention. 35 U.S.C. § 111 and § 112.
Claim
A claim is a listing of the minimum elements of an invention. A Patent
claim has nothing to do with an assertion of properties or performance
of the invention; it is not at all like an "advertising claim."
Rather, a patent claim is a set of words which defines an invention in
its minimum terms, e.g.,
A fastening device comprising:
(1) a threaded bolt,
(2) a threaded nut mounted on said bolt, and
(3) a washer mounted on said bolt inward of said nut.
The specification portion of the patent might show a lock washer as the
preferred kind of washer in this combination. But the claim is not limited
to devices which include lock washers; the combination of a bolt, nut
and flat washer would also be covered by the claim. Similarly, the specification
might show, as the preferred embodiment of the invention, a steel bolt
and a steel nut. However, the claim is not thus limited; it will cover,
for example, threaded aluminum bolts and nuts, threaded plastic bolts
and nuts, etc., so long as they are used in combination with the recited
washer.
A patent claim is roughly analogous
to a criminal statute:
- it proscribes conduct (i.e., determines what is infringement),
- it does this by reciting what are the minimum elements necessary to
constitute the offense;
- its terms can be met by a nearly infinite variety of specific occurrences
of human conduct, a host of different scenarios, each one meeting the
minimum element set forth;
- the offense is not made to go away by the fact that the minimum elements
are accompanied by other additional acts/elements.
A patent will usually have a number of independent and dependent claims
(recognizable by wording such as "as recite in Claim 1" appearing
in the preamble of the claim). Each claim then serves as a sort of mini-patent,
in that its coverage is independent of the coverage of any of the other
claims in the patent. For infringement, all that is required is that the
accused infringing product or process have all of the elements recited
in any one of the patent's claims. The validity of each claim is judged
independently of the other claims in the patent.
The reason why good patent attorneys put many claims in a patent is that
no one is ever sure whether a given claims will be held valid by the courts.
This problem is partly due to the subjectivity of some claim validity
issues; partly due to the uncertainty in predicting how a court will rule
on any given proposition, and partly due to the attorney's lack of knowledge,
at claim-drafting time, of the full extent of the prior art.
Comprising
The word "comprising" in a patent claim means "including
at least …" Thus, the above claim covers every arrangement in
the world which has at least these three recited elements, regardless
of whether the arrangement has additional elements present.
Narrower Claim
Adding more recited elements to the claim has the effect of narrowing,
not broadening the claim's coverage. If we were to add a fourth element,
for example, "a second washer mounted on said bolt inward of said
first washer," the claim would now be narrower, because it would
cover all things in the world which have all four elements - a smaller
subset of things than that covered by the previous claim.
Claim "Reads On"
A claim is said to "read on" some physical thing when each element
or phrase recited in the claim is found in that thing.
A claim reads on a prior patent when each element of the claim corresponds
to or is to be found in the disclosure (specification and drawings), not
the claims, of the prior patent.
A claim reads on a prior non-patent publication, such as a technical journal
article or paper, when each element of the claim is found in the article
or paper.
Since all publications can sometimes use broad and non-specific language,
we have to be careful not to take too cavalier a view of whether a later
claim "reads on" such disclosure. The rule is: An element or
phrase of a claim reads on a publication if the publication discloses
the element at least as specifically as the claim recites it. Thus, a
claim recitation of "metal" reads on a publication that discloses
"copper." But a claim recitation of "copper" does
not read on a publication that says: "Any metal will suffice."
Anticipation: "Claim reads on the prior
art"
In the USPTO, it is the claims, not the drawings or the rest of the specification,
that are examined and allowed or rejected by a Patent Examiner. To be
novel, and "not anticipated" by the prior art, a claim must
not read on any arrangement of elements appearing in a single prior product
or in a single prior publication (i.e., the "prior art").
Infringement: "Claim reads on the accused
infringing device/method"
To be infringed, a claim must read on the accused infringing product or
process.
Finding the various individual elements of a claim in various plural pieces
of prior art is very commonplace, and does not anticipate the claim or
render it non-novel and invalid. The individual elements of a patent claim
are nearly always old. This has nothing to do with the novelty or validity
of the claim. It is the combination of the elements which is claimed,
and if this combination appears all together in a single piece of priori
art, then and only then is the claim anticipated and hence invalid.
Novel
A person is entitled to a patent if the invention is "novel"
-
1. Unless prior to one's invention date
(i.e., date on which one actually reduces the invention to practice; which
may be either "actual - makes a proto-type" or "constructive
- files a patent application for the invention):
It's described in printed publication anywhere in the world,
It's publicly known or used by others in the U.S.,
Someone else's earlier filed application, which later issues, discloses
it,
Someone else in the U.S. earlier reduces it to practice, but files a later
application which would otherwise qualify for the issuance of a patent
- Interference Proceeding
2. Unless prior to more than
1-year before filing an application for the invention:
Applicant publicly uses or sales it in U.S.
Applicant publishes an article describing the invention anywhere in the
world. See 35 U.S.C. § 102.
Nonobvious
A person is entitled to a patent if the invention is "nonobvious"
-
"the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains....", 35 U.S.C.
§ 103(a).
Enabling Disclosure and Notice
A person is entitled to a patent if he/she files an application with the
USPTO that provides "enabling disclosure and notice": "An
application for patent … shall include - a specification … contain(ing)
a written description of the invention. And of the manner and process
of making and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it pertains, or with
which it is nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor for carrying out the
invention. The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor
regards as his invention." 35 U.S.C. § 111 and 112.
Statutory Subject Matter
Not all novel and non-obvious things can be patented. In order to be patentable,
the subject matter of the invention must be "statutory subject matter".
This is defined by 35 U.S.C. § 101 as "any new and useful
process,
machine,
manufacture, or
composition of matter, or
any new and useful improvement thereof."
However, the Court of Appeals for the Federal Circuit (CAFC) instructs
that "the question of whether a claim encompasses statutory subject
matter should not focus on which of the four categories of subject matter
a claim is directed to …. but rather on the essential characteristics
of the subject matter, in particular, its practical utility. Section 101
specifies that statutory subject matter must also satisfy the other "conditions
and requirements" of Title 35, including novelty, nonobviousness,
and adequacy of disclosure and notice." State Street Bank & Trust
Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998).
UNPATENTABLE ELEMENTS
Meanwhile, the Supreme Court has tended to construe statutory subject
matter broadly, noting that Congress intended statutory subject matter
to "include anything under the sun that is made by man." See
Diamond v. Chakrabarty, 477 U.S. 303, 309 (1980), quoting S. Rep. No.
82-1798, at 5 (1952) and H.R. Rep. No. 82-1923, at 6 (1952). However,
despite this seemingly limitless expanse, the Supreme Court has specifically
identified three categories of unpatentable subject matter as:
"laws of nature,
natural phenomena, and
abstract ideas."
This decision followed many years of lower court decisions in which these
courts employed various exclusionary words to define non-statutory subject
matter. These words included:
"printed matter" for inventions
that relate merely to the meaning or significance of an arrangement of
printed matter without a reference to the process, product or machine
that is used to prepare the printed matter, See In re Miller, 164 USPQ
46 (CCPA 1969);
"naturally occurring article"
for inventions that occur in nature and are merely found; See Ex Parte
Grayson, 51 USPQ 413, for the denial of a patent for a shrimp with the
head and the digestive tract removed; "mathematical
algorithm" for those elements of inventions which were generally
expressed as mathematical equations, and where the invention was not drawn
to a practical purpose for producing a new and useful result, See In re
Walter, 618 F.2d 758 (CCPA 1980) for denial of a patent for improved mathematical
methods for interpreting the results of seismic prospecting, and
"method of doing business"
for inventions consisting of business schemes that are not related to
a physical process or method carried out in connection with a workpiece
or product, and thus not within the "useful arts," Hotel Security
Checking v. Lorraine Co., 160 F. 467 (2nd. Cir. 1908).
The use of such exclusionary words is now strongly in disfavor for resolving
statutory subject matter issues: [The business method exception] is .
. . an unwarranted encumbrance to the definition of statutory subject
matter in section 101, that [should] be discarded as error-prone, redundant,
and obsolete. It merits retirement from the glossary of section 101. .
. . All of the "doing business" cases could have been decided
using the clearer concepts of Title 35. Patentability does not turn on
whether the claimed method does "business" instead of something
else, but on whether the method, viewed as a whole, meets the requirements
of patentability as set forth in Sections 102, 103, and 112 of the Patent
Act. See In re Schrader , 22 F.3d 290, 298, 30 USPQ2d 1455, 1462 (Fed.
Cir. 1994) (Newman, J., dissenting).
To resolve "statutory subject matter" issues, one is best advised
to focus on "the essential characteristics of the subject matter,
in particular, its practical utility and whether the claimed invention
also satisfies the other "conditions and requirements", including:
novelty,
nonobviousness, and
adequacy of an enabling disclosure and notice."
Continue in part II
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