What is a patent?

“Learn How to Protect Your Intellectual Property Rights”

A patent is a grant from a governmental entity giving an inventor the rights to control the use of his invention. In the United States, the governmental authority to grant the right comes from the United States Constitution, Article 1, Section 8, Clause 8, which states:

….The Congress shall have the power ….. To promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right of their respective writings and discoveries.

From that Constitutional directive, Congress enacted federal laws which define the various exclusive rights and manner in which they can be protected. Congress also created federal agencies to control the issuance of these rights to the entities seeking them.

Who issues patents?

The U.S. Patent and Trademark Office (USPTO) controls the issuance of patent rights and rights in trademarks and services marks. The Copyright Office serves as a registry and depository of certain artistic and creative works.

What is Intellectual Property?

In the industry, the term “intellectual property” is used to refer collectively to the types of works that are the product of the human intellect and creative artistry, most typically, patents, trademarks and copyrights.

While some states have enacted laws that further protect these or other aspects of intellectual property, the federal law, federal courts and the U.S. Patent and Trademark Office are the sole authority on U.S. intellectual property rights and supersede state authority on these matters.

Protecting U.S. Intellectual Property in Other Countries

Each foreign country has its own laws related to copyright, trademark and intellectual property rights. There are some coalitions and organizations that exist in which the patent laws, among other laws, are sought to be harmonized among nations, such as the Patent Cooperation Treaty and the European Patent Office. Foreign patent protection, both in obtaining the patent and in asserting rights in foreign jurisdictions) is very complicated and very expensive. Specific questions regarding these matters should be directed to your intellectual property lawyer.

First-to-Invent Vs. First-to-File

The United States still adheres to the first-to-invent patent system as opposed to the first-to-file systems of most foreign countries. In most other countries, one need only be the first to file for an invention to be entitled to the patent monopoly or patent rights. In the United States, inventorship, and thus patent validity, can be challenged by one claiming to have invented before the patentee, i.e., first to invent.

What Do Patents Protect?

“Statutory Subject Matter”


Not all things are patentable. Mere ideas are not patentable and are not protected intellectual property rights. The patent laws require that patents are granted only on inventions that are, in fact, appropriate. Typically, patents protect:

  • a process,
  • a machine,
  • an article of manufacture, or
  • a composition of matter.

Inventions that occur in nature (i.e., “products of nature”) are typically not patentable. They exist without any human input or ingenuity 35 USC § 101.

Qualities of Patentable Subject Matter

“Statutory Requirements ”

Inventions must meet statutory requirements. Patents must be new or novel, useful, and nonobvious (35 USC Sec. 101).

  • Any new or novel invention is one that did not exist nor was publicly known at the time of invention. In order to determine this factor, the USPTO and the patentee look to what is labeled “prior art.” Prior art includes any publicly known or knowable information, including printed publications, patents; a public use or sale; or general knowledge. 35 USC § 102.
  • For an invention to be useful, it must provide some benefit or advantage to society and actually work. If the invention’s purpose is immoral, against public policy, frivolous or illegal, then it is generally denied as not useful. Whether the invention is commercially sound or successful is not a factor in determining utility. 35 USC § 102.
  • An invention must also be nonobvious. This factor can be troublesome and difficult for intellectual property examiners to determine. The factors considered in the inquiry are often the subject of patent infringement cases. As a result, the test can often change. The purpose behind the requirement is to prevent exclusive patent rights from being granted to someone who makes only minor or obvious changes to what existed before. The theory is that if anyone could have come up with the change, then one person should not get the privilege of solely controlling the public use of that change. 35 USC § 103.

Prohibitions against Patent Grants

“Statutory Bars ”

Even if an invention is otherwise patentable, an inventor cannot receive a patent if the inventor acted in a manner that compromised the invention. These are known as statutory bars. Prohibitions against patent grants include:

  • If the inventor is not the true inventor, that is, the inventor did not contribute to the development of the invention.
  • If the inventor “abandoned” the invention, that is, the inventor expressly or impliedly failed to pursue the invention.
  • If the inventor publicly disclosed (through publication, use or sale) the invention more than one year prior to the date of the application. The invention would be deemed not new or novel. The U.S. patent laws give the inventor a one-year grace period from any such public disclosure in which to file the patent application without jeopardizing patentability. Foreign patent laws do not have this same grace period.

What is a Patent Grant?

“Learn More About Intellectual Property Rights ”

The patent grant is, in essence, a contract between the public interest and the inventor, and the patent system, in many ways (through the patent examination process and the courts), tries to balance those interests. In exchange for the inventor making his invention public so that others may learn from it and make further technological development, the “public” will grant the inventor the exclusive right for a period of time to control the use of his invention, that is, the right to exclude others from making, using or selling the invention. That exclusive right is what is known as the “patent monopoly.” The patent monopoly is often referred to as patent rights.

It should be noted that the patent (or patent rights) does not grant the inventor the right to make use or sell his own invention, only a right to exclude others. There may be other patents that impact the inventor’s own right to practice his invention.

An Inventor’s Interest in Patent Grants

What are the inventor’s interests or goals? An inventor is driven to invent typically because they see a problem that needs solving; they seek to improve the way something is done; they want to make tasks and devices easier, quicker, more efficient, more pleasing, less arduous. When the result is achieved, they want to share it so that others can benefit. In addition, the inventor wants to get credit for his invention (that is, payment).

Compensation for Inventors
An inventor is happy to share what he has developed; however, he would like to get some compensation for having developed it and get a piece of the pie if some other entity makes money using his invention. If the inventor cannot be assured that others will not freely use his invention without payment, he is less likely to make his invention known. An inventor wants to be protected from patent infringement.

The Public’s Interest in Patent Grants

What does the public want? The public wants inventions to be made public to benefit from their use and so that further development in the particular technology can occur by finding improvements in the invention or developing in new inventive areas. Additionally, the public does not want to have to “pay” for using inventions that are not worthy of the monopoly, for example, inventions that have already been known and used.

A Balance of Patent Interests

The patent grant balances those interests. The public, through its government, grants a true inventor the right (“patent rights”) for a limited period of time the right to exclude others from making, using or selling his invention, in exchange for the inventor disclosing to the public through the patent enough information about the invention to enable the public to practice the invention, so that further development on the technology can occur. In this manner, the patent laws aim to encourage and protect human ingenuity.

This goal was recognized and made of fundamental importance to the founding fathers of the United States. In their foresight, they secured a system that would prove critical in protecting the fruits of human ingenuity and, equally significant, securing a healthy economy.

Types of Patents Granted

“Patent FAQ”

The USPTO grants three types of patents.

  • The Utility Patent covers an invention that is a “process, machine, article of manufacture or composition of matter.”
  • The Design Patent covers the ornamental features of a device or product. It does not cover the utilitarian features of the device or product.
  • The Plant Patent covers new and distinct variety of plants that are asexually reproduced, excluding tuber propagated plants of a plant found in an uncultivated state.

The Patent Application

The patent application is a very detailed description of the invention. It must include many pieces of information and is required to be submitted to the USPTO in a very specific format, including the format for figures or drawings. The patent application ends in the patent claims, which are what ultimately define the invention and its scope.

Application Submission – “Submitted by Inventor or Patent Idea Lawyer”

The inventor must submit the application or the inventor’s legal representative, such as a patent lawyer. The applicant must affirm that she is the first and original inventor; that the invention has not been known or used before; that statements in the application are true; that she is aware of the duty to disclose information to the USPTO that might be material to the examination or patentability of the invention; and an acknowledgment that false statements are punishable by fine and/or imprisonment and can jeopardize the validity of the application or any issued patent. Even if the inventor has assigned her rights in the invention, she must make these declarations, not the assignee.

The Patent Specification

The primary textual portion of the patent application is called the “specification.” In this section, the invention must be described in sufficient detail to allow others in the relevant art to practice the invention. It will also typically include the title, abstract, brief summary, reference to drawings, a detailed description, and ends in the patent claims.

Patent Claims

Patent claims actually define the invention and its scope; they give the boundaries of the invention for which patent rights are asserted. The claims inform the public what is within the patent monopoly. A claim will typically give a set of elements that are deemed necessary to practicing the invention.

The Patent Application Review Process

In order to receive a patent from the U.S. Patent and Trademark Office, the inventor must show that her invention passes the test. After all, the public does not want the government to grant exclusive rights to an invention that the public is already free to use.

The inventor submits the invention to the USPTO in the form of a patent application. Upon receipt, the USPTO examines the application and, after rigorous review, most of the time with inventor input, either rejects or accepts the application.

Test of Patentability

In preparation for the USPTO review, the inventor looks to the patent laws to find out what elements the invention needs to pass the test of patentability. These laws are found in Title 35 of the United States Code (35 USC) beginning in Section 101. In addition to the laws that define what is patentable, there are rules and regulations that dictate the substance and form the application must have throughout the examination process. Rules and Regulations are found in Title 37 of the Code of Federal Regulations (37 CFR).

Another helpful resource is the Manual of Patent Examination Procedure, which is the document that the USPTO uses to direct patent examiners in their review of patent applications.

Do You Suspect Patent Infringement?

“Find Out Now if Our Patent Law Firm Can Help You Protect Your Intellectual Property Rights”

A potential patent infringement case can be brought to the attention of the inventor in many ways:

  • a competing or identical product can appear in the market;
  • a disclosure at an industry trade show;
  • a statement by a salesperson about activities in the trade; or,
  • in trade literature.

How Patent Claims Affect Patent Infringement Lawsuits

In an intellectual property case involving a patent, the patent application, and the patent claims, in particular, are under tremendous scrutiny. Initially, the validity of the patent is examined and confirmed. If the patent is deemed valid, then the claims are interpreted to determine whether or not an alleged infringer’s activities fall within the scope of any of the patent claims.

This analysis is very detailed and can be tedious. Many factors can influence how the claims are to be interpreted. The specification will determine in large part what was meant by the language in the claims. What the inventor intended can impact the interpretation of the claims.

First Steps in Patent Infringement Cases

“Involve a Patent Attorney as Soon as Possible”

If you suspect your patent is being infringed, it may be important to speak with a patent lawyer about your intellectual property rights, but you need as much information as possible. The first steps to protecting your patent include:

  • Try to determine the exact activity of the potential infringer. Obtain product literature, trade intelligence, reverse engineering, and press releases.
  • Involve a patent lawyer in your case as early as possible.
  • Retain documentation of your own patent activity and product development.

If you think your patent is being infringed…

“Get an Attorney Who Protects Patents”

It is important to get as much documentation about the nature of the potential infringer and the alleged infringer’s activities through your own observation, experience, or what you have learned from others. Obtain an example of the infringing device if possible or any evidence you can obtain related to the infringing activity. (With certain inventions such as business methods, or process patents, this can be very difficult). Obtain as much information about the potential infringer as possible, official name, office locations, activities/sales surrounding infringing activity, and the like.

Why You Need a Patent Attorney

The early involvement of a patent infringement attorney in any potential infringement matter is important. The matter involves issues related to determining damages, appropriate jurisdiction and the like. The patent owner’s own activities can impact these determinations. Therefore, it is important to obtain appropriate legal advice to navigate through the potential infringement matter. Additionally, laws change and current proposed legislation could further impact jurisdictional considerations, so it is wise to seek the advice of counsel early.

For more patent information or patent help, visit the USPTO website.

Disclaimer: The content in this blog post (“post”) is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice.