Understanding Patents and Patent Process 

patent definition

A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. Such right is granted to the first inventor to file the new invention. A patent allows the patent holder to exclude others from making, using and selling the invention for a period of twenty years from the filing of the non-provisional patent application. 
IP Policy

Key Questions to Ask Prior to Filing a Patent Application 

One

Has a literature search and patentability application been completed to indicate that the invention has not been invented or patented before? 

Two

Has a working prototype of the product that is to be covered under the patent been made? 

Three

Is there a realistic plan to develop, manufacture, market and sell products covered by the claims of your patent? 

Four

Is the potential for financial return for the successful commercialization significantly greater than the cost of obtaining a patent? (A U.S. patent can cost upward of $30,000 to obtain.) 

Five

What is the market outlook for the technology once a patent has been issued? 


Patentability 

Diligent and thorough review of patent applications must be completed before submitting the application to a United States or International patent office. Most often, patent attorneys are retained for their expertise in this area. The role of a patent attorney is to assist, prepare, file and prosecute patents. Prior to filing, a seasoned patent attorney or specialty firm can help inventors determine patentability based upon the knowledge of existing technology in the field by researching and performing existing patent searches. 


Statutory Classifications 

The statutory classifications are the categories identified by Congress as patentable subject matter, and are intended to cover “anything under the sun that is made by man.” The categories are: 

One

Processes include a new use of a known process, machine, manufacture, composition of matter, or material. 

Two

Machines are tangible items, and consist of parts, certain devices, or combinations thereof. Machines
include every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. 

Three

Articles of manufacture are any articles, suitable for some use, that have been produced from raw or prepared materials that have been given new forms, qualities, properties, or combinations thereof. 

Four

Compositions of matter are compositions of two or more substances and all composite articles, whether they be the results of chemical union, or mechanical mixture, or whether they be gases, fluids, powders or solids. 
Non-patentable subject matter includes: abstract ideas or their manipulation, laws of nature, and physical phenomena. 
Business methods are theoretically patentable, but the supporting law is unclear and has been disputed in court in recent years. Additional case law is needed for clarification. 


Utility   

Establishing utility is usually straightforward; the invention has to be useful, functional, moral, beneficial and operate as intended. 
Examples that do not meet the requirement are: isolations of chemical intermediates (no known use), perpetual motion machines and time travel devices.  


Novelty 

Prior art searches are performed to support invention originality. Similar inventions are usually incorporated in the description of the patent application to distinguish the difference, and/or improvement of the invention. The most valuable part of patent applications, the claims, must describe what has been invented in precise language. A patent examiner will review the language and validity of each claim as they are essential to protect the scope of the invention. If a claim is found in prior art, such as, a previous patent, it will be denied. If it is denied, it can be argued/rewritten to specify originality (see “Office Actions” in “Examination by
USPTO” (United States Patent and Trademark Office) section of diagram on the next flap). 


Non-Obviousness 

Can a person of ordinary skill, in the “art of the invention”, develop the same solution given the available prior art? If the answer is “yes”, then the invention is obvious and therefore NOT patentable. 
In order to be non-obvious, the invention must not be obvious in light of the prior art. Specifically, the following must be determined: the scope and content of the prior art; the level of ordinary skill in the art; the differences between the claimed invention and the prior art; and whether there is any objective evidence of nonobviousness. Some examples of non-obviousness are: new discoveries; combinations of known technology leading to unexpected results; and inventions which are opposite to common knowledge. 
An invention may be found obvious if all of its elements can be found in the prior art, and there is some teaching, suggestion, and motivation to combine the prior art references in order to come up with the solution provided by the invention. 
Patent Process