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Patent Misconceptions

Posted in Patent Law

by Audrey Millemann

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by Patent and Trademark Office examiners and federal courts.  Patents themselves are often almost unintelligible and, if intelligible, require many hours of reading and comparing drawings in order to understand.  It is no wonder that clients (and non-patent attorneys) have a lot of misconceptions about patents.  Here are a few of the most common ones.

1.         Ideas Are Not Patentable.

Clients often want to patent an idea. Ideas are not patentable – inventions are patentable.

To be patentable, an invention must fall within one of four categories. They are: a process (also referred to as a method), a machine, an article of manufacture, and a composition of matter. 

Process patents include patents for methods of doing just about anything, including methods of doing business and computer software. Machine or apparatus patents include traditional types of machines as well as computer systems. Articles of manufacture are devices such as tools or just about any non-machine. Compositions of matter include chemical compositions, genes, and genetically engineered (non-natural) living organisms, including bacteria, plants, and animals. 

The above four categories are the categories of inventions for which a utility patent can be obtained. There are two additional types of patents: design patents and plant patents. 

Design patents protect ornamental designs for articles of manufacture, such as chairs, dishes, and glassware. A design patent protects only the appearance of the article, not any aspect of its functionality. An article may be the subject of both a design patent and a utility patent, however, if it has both ornamental design and function. 

Plant patents protect distinct, new varieties of asexually reproducible plants (i.e., plants that can be reproduced without seeds, such as by budding or grafting).  They include such plants as certain types of roses, nuts, flowering plants, and fruit trees. 

There are several things that are specifically not patentable. They are: pure mathematical algorithms that do not include the steps of a process, printed matter, natural compounds, and scientific principles. 

Even if a client’s idea fits within one of the four categories of statutory subject matter, it still is not patentable if it is in its infancy. The idea must be an invention. The inventor need not have actually made the invention (reduced it to practice), but must have a complete and operative understanding of the invention. The patent application must contain a detailed written description of the invention and must describe how to make and use the invention without undue experimentation. Thus, an idea that is not fully fleshed out, even if it is patentable subject matter, is not ready to patent. The inventor must be able to describe what the invention actually is

2.         The Inventor Cannot Withhold Details of the Invention to Prevent the Public from Copying.

In addition to a detailed description of how to make and use the invention, a patent application must also include the “best mode” of carrying out the invention. The best mode is the best way of using the invention known to the inventor at the time the application is filed. 

This requirement prevents the inventor from keeping the best way of using the invention a secret. A patent is a trade-off: in exchange for the Government giving the inventor the rights to exclude others from making, using, or selling the invention, the inventor must fully disclose the invention to the public in the patent. This is so that the public may practice the invention after the patent expires.

If an invention is easy to reverse-engineer, trade secret protection is essentially useless and patent protection is the better choice. This is because patents, unlike a trade secret, protect against reverse engineering. On the other hand, if an invention is difficult to reverse-engineer, trade secret protection may be preferable to obtaining a patent because, unlike a patent, a trade secret does not expire. 

3.       You Cannot Tell What a Patent Protects by Looking Only at the Text or the Drawings.

A utility patent contains several parts: a specification or disclosure, a drawing if necessary, and at least one claim. The specification is a detailed description of the invention that tells a person of ordinary skill in the art how to make and use the invention and describes the best mode of carrying out the invention. The drawings (which include flow charts) must illustrate all essential elements of the invention. Drawings are typically necessary for inventions that fall within the subject matter categories of machines, articles of manufacture, and processes; drawings are usually not necessary for compositions of matter. 

The specification and drawings describe the different versions (embodiments) of the invention or examples of the invention. They do not define what the patent owner may enforce with the patent. This is determined by the claims.

The claims must contain the patentable elements of the invention. It is the claims that are used to determine whether there is infringement. The claims must be read in light of the specification and the drawings, but the claims define what the patent protects. Typically, the claims are much broader than what is described in the specification and the drawings, so one must read and interpret the claims to know what the patent protects.

4.         A Provisional Patent Application is Not a Quicker, Cheaper Way of Getting a Patent.

A provisional patent application cannot become a patent. Despite its name, a provisional patent application is not really a patent application at all because it cannot mature into a patent. Rather, a provisional patent application acts as a placeholder for a utility application – it is a mechanism for allowing an inventor to obtain an earlier filing date for a utility application. 

A provisional patent application requires a specification and a drawing, but no claims. It must satisfy the same requirements as a utility application (written description, enablement, and best mode). A provisional application is not ever examined by the PTO and no patent ever issues directly from it. An inventor has one year from the filing date of the provisional application in which to file a non-provisional utility patent application for the same invention, claiming the benefit of the filing date of the provisional application.    Because a provisional application requires the same level of detail as a utility application, it is typically not much quicker or less costly than a utility application. 

If a client has limited time or funds, however, a provisional application may be better than no patent application. For example, a provisional application may be advantageous if the inventor needs to disclose the invention on short notice and does not have enough time to have a utility application prepared. In that situation, the provisional application provides the inventor with an earlier filing date than might otherwise be obtained, as long as what is later claimed in the utility application was disclosed in the provisional application. 

5.         A Patent Does Not Give the Patent Owner the Right to Practice the Invention.

Inventors and patent owners often assume that a patent gives them rights to practice the patented invention, i.e., freedom from infringement. This is not true.

A patent is a grant to its owner of the right to exclude others from making, using, offering to sell, and selling the patented invention in the United States, or importing the invention into the United States. These rights are called exclusionary rights. A patent does not provide its owner with the rights to do these things. An invention may be patentable but still infringe another patent. In such a case, the patent owner may have a patent on the invention but cannot make or use the invention unless they obtain a license from the owner of the patent that is infringed.

6.         Patents Do Not Infringe Other Patents.

A patent cannot infringe another patent. Only a machine, article of manufacture, composition of matter, or process can infringe a patent. 

As stated above, a patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the patented invention. The patent is infringed if any of these acts are committed in the United States without the patent owner’s permission. Thus, there is no infringement unless someone makes, uses, offers to sell, or sells the invention in the United States, or imports the invention into the United States. An invention described in a patent may infringe another patent, but only if it is made, used, offered for sale, sold, or imported. The patent itself is not an act of infringement.

7.         Patentability and Patent Infringement are Not the Same Thing.

Inventors often think that if their invention is patentable, then it cannot infringe other patents. This is not the case. Patentability and infringement are two different things. An invention may be both patentable and infringe an existing patent. In both cases, the starting point of the analysis is the claims. 

To determine if an invention is patentable, the invention, as it is claimed, is compared to what is known in the field (the prior art). In general, prior art includes written documents (such as other patents, published articles, catalogs, and websites), as well as actions by the inventor and third parties, that exist either before the date of invention or over one year before the date the patent application is filed. 

The first requirement of patentability is that the claims must be novel (new or different) over the prior art. The test for novelty is performed by looking at each element of the invention as claimed. If all of the elements of the claimed invention are present in a single prior art reference, then the invention is not novel and is said to be anticipated by the prior art. The invention is not patentable.

The second requirement of patentability is that the claims must be nonobvious over the prior art. The invention is obvious if the differences between the invention and the prior art are such that the invention, as a whole, would have been obvious at the time it was made to a person with ordinary skill in the art. Unlike the test for novelty, the test for obviousness is not limited to a single prior art reference – any number of references can be combined to render an invention obvious. For obviousness to be found, every element of the claimed invention must be present or suggested in the prior art, although not necessarily in the same reference.

To determine if an invention infringes an existing (not pending or expired) patent, the claims of the patent in question are compared to the invention (in a patent infringement action, the district court first interprets or construes the claims to determine their meaning and scope). If each element of a claim is present in the invention, that claim is infringed. Only one claim need be infringed for the patent to be infringed.

Thus, although it sounds counter-intuitive, an invention can be patentable over a prior art patent and, at the same time, infringe the same patent.