This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.

The United States patent system was created to help achieve various socially desirable goals. By providing an inventor with an exclusive right to exclude others from making, using, or selling an invention for a limited period of time, a patent rewards an inventor for the time and effort expended in developing the invention, thereby encouraging further creative efforts. Also, most new inventions have uncertain commercial value, and the patent system provides a degree of protection from competition for a limited period of time, thus encouraging investment in new technology. Additionally, the patent system encourages inventors to make their inventions known rather than to maintain them in a state of secrecy, thereby increasing the amount of technological knowledge available to the public. Finally, the patent system helps to aid in the sale or transfer of technology both within the United States and in foreign countries, by giving a commercially tangible form to otherwise intangible ideas.

At the outset of the patent discussion, it must be emphasized that the U.S. Congress passed a number of significant changes to U.S. Patent Laws in September 2011.

The law is commonly referred to as The America Invents Act. Notable changes included by way of The America Invents Act include:

  • First To File System (rather than the U.S.’s previous first to invent system)
  • Post Grant Oppositions – Effective for patent applications filed on or after March 16, 2013
  • Inter Partes Review
  • Supplemental Examination
  • Third Party Submissions of Prior Art

These changes to U.S. Patent Laws, as well as a basic overview of the U.S. Patent Law system, follow.

Requirements For Patentability

There are several major hurdles an inventor must overcome before patent protection can be obtained. First, the applicant for patent must be able to demonstrate that he or she has developed a new, useful, and not obvious process or product. Since a patent cannot be obtained unless the invention is new, the invention must not have been known or used by others in the United States or patented or described in a publication in the United States or any foreign country before the invention was made by the applicant. In addition, if the invention was patented or described in a publication anywhere in the world or in public use or sale in the United States more than one year prior to the date of filing the application, the patent will be denied. The invention must also be capable of some beneficial use, and cannot be “frivolous, fraudulent, injurious to morals, health or good order.” The invention must also not be obvious, which is the most common reason for Patent Office rejection. It may well be that the invention is something that has never before existed; but, if the Patent Office determines that a mythical person having access to all the available information concerning that particular field of technology would have “known” how to make the invention, then the invention is rejected as being obvious.

A simplified example of an obviousness rejection is as follows:

Suppose a person invents a coffee cup having a square rather than a rounded handle. It may be that such a product has never before existed. However, if the Patent Office finds that a square handle has been used previously on some other device, such as a suitcase, it may well determine that putting a square handle on a coffee cup would have been obvious to an imaginary person who is knowledgeable about all publicly available information.

The invention must also fit into one of the categories of patentable subject matter. Thus, the invention must be new, useful, and nonobvious, and be either a:

  • Process;
  • Machine;
  • Manufactured article;
  • Composition; or
  • An improvement of any of the above.

The term “process” means a process, art, or method, and it includes a new use of a known process, machine, manufactured article, composition of matter, or material. A process may also be defined as one or more steps or acts performed on materials to produce a result. An example of a process would be the use of DDT to kill insects.

The term “machine” includes mechanical devices or combinations which perform some function and produce a certain effect or result. Examples of machines include carburetors, vacuum cleaners, and lawn mowers. A “manufactured article” refers basically to any product or thing made by industry or man. Examples of manufactured articles would be carpets, toothbrushes, and purses.

A “composition” is matter formed by the mixture of two or more ingredients. Examples of compositions are drugs, insecticides, adhesives, and electroplating solutions.

An “improvement” is an addition, simplification, or variation relating to an existing machine, process, manufactured article, or composition of matter. Several Court decisions have provided further guidance on subject matter which is included in the categories of patentable subject matter. For example, the Courts have determined that both software and certain types of business methods are patentable.

Although software and business methods are currently eligible for patent protection, such protection is typically premised not on their being a “method” or “process” under the statute, but an underlying tangible result of that method or process. One test which is useful, but is not the sole test, is whether the claimed invention is tied to a particular machine or apparatus; or if the claimed invention transforms a particular article into a different state or thing.

In other words, in addition to being new, useful, and not obvious, software and business method inventions generally must be (1) tied to a particular machine, or (2) include a transformation of a physical article or material from one state or thing into another. For example, a business method invention that involves the operation of processing steps on a computer may be considered patentable subject matter if the invention is specifically tied to steps performed by the computer, especially if that computer is specially-constructed for a particular purpose – because the inclusion of the computer ties the process to a particular machine.

If the software or business method invention does not include a particular machine or involve a transformation, it is possible that the invention could still be patentable, but the current laws somewhat disfavor these types of inventions and a patent may be difficult to obtain.