Understanding Patents
A patent is an intellectual property right granted to an inventor by the United States Patent and Trademark Office (USPTO) government that provides the inventor (or joint inventors) the right to exclude others from making, using, selling or importing the claimed invention into the United States while the patent is still valid. The purpose of granting this exclusive right is to reward and incentivize creativity when the inventor(s) publicly disclose their innovations. Patents are utilized in multiple industries, with technologies ranging from hardware and software, medical devices, Internet of Things (IoT), pharmaceuticals / biosimilars, and chemical compositions.
The Role of Patents in Business
One primary function of patents is to provide inventors and businesses with a competitive advantage. By securing exclusive rights to their inventions, businesses can capitalize on their innovations, preventing others from exploiting the same ideas for the duration that the patent in question is valid.
A second function of patents is to act as strategic assets, fostering investment and partnerships. A robust patent portfolio can enhance a company’s valuation, attracting investors and collaborators eager to capitalize on the protected inventions.
Finally, a third function of patents is that they can serve as bargaining chips in licensing negotiations by allowing businesses to forge advantageous licensing agreements or cross-licensing deals with competitors.
Patent Types: Utility, Design, and Plant Patents
There are three categories of patents: utility patents, design patents, and plant patents. Each type of patent serves a specific purpose, which are discussed in greater detail below.
Utility Patents:
Utility patents are the most common type of patent and they protect the functional aspects of an invention (rather than the ornamental aspects). 35 U.S.C. § 101 defines what can be protected by a patent – including a new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof. These utility patents grant the patent owners (assignees or exclusive licensees) the exclusive right to make, use, sell, and import into the United States the claimed inventions, thereby providing a comprehensive shield against competitors seeking to exploit similar functionalities.
Design Patents:
Design patents protect the ornamental or aesthetic aspects of an invention. Design patents are essential to safeguarding the unique visual characteristics that contribute to a given product’s appeal. From the sleek dimensional outline of a smartphone to the iconic look of a classic lifestyle shoe, design patents ensure that the distinct visual features are protected, thereby preventing others from replicating the protected design for a set period while the design patent is still valid. This period is 15 years from the date of grant, provided that the design application was filed on or after May 13, 2015 (see 35 U.S.C. § 173 and Manual of Patent Examining Procedure (MPEP) 1505).
Plant Patents:
Plant patents are fairly self-explanatory. These are patents that protect “any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state” (see MPEP 1601). The two essential requirements for protecting these types of plants are: (1) they must be invented or discovered in a cultivated state; and (2) they must be asexually reproduced. Plant patents encourage innovation in the cultivation of new and distinct plant species, ensuring that the efforts of plant breeders are recognized and protected.
Navigating the Patent Application Process: Statutory Rejections
The patent application process involves thorough examination by patent examiners, and applicants may encounter statutory rejections based on several grounds.
Patent Eligible Subject Matter (35 U.S.C. § 101): The question asked here is whether the applied for invention is even eligible for patent protection. Patent eligible subject matter is broadly defined as a new and useful “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Laws of nature, natural phenomena, and abstract ideas are excluded from patent protection.
Novelty (35 U.S.C. § 102): The question asked should not be a surprise – Is the invention actually new?
Obviousness (35 U.S.C. § 103): The question asked here is whether a “person having ordinary skill in the art” (often referred to as a “PHOSITA”) would have found the claimed invention “obvious” if he or she were to combine multiple prior art references (essentially various aspects of different inventions – either disclosed as patents or printed publications) to obtain the claimed invention.
Written Description and Enablement (35 U.S.C. § 112(a)): The question asked here is whether the specification of the patent application provided enough written detail to: (1) allow a PHOSITA to be able to “make and use” the invention without having to resort to any secondary materials; and (2) provide written support for the claimed invention (in order to show that the inventor had possession of the invention at the time he or she filed the patent application).