Patents - Straight Up™

What is a Patent?

© 1998, 1999 Green & Green All Rights Reserved

1. The U.S. Patent laws are not original with the U.S. They are ancient as are trademark and copyright law and long a part of Common Law.   The U.S. version of patent law began with The English Statute of Monopolies of 1623 which referred to patents for ``new manufactures.”

   [Note that Copyrights are "original" works of authorship in graphical, film, multimedia, music, text.  Trademarks are marks or "brands" that distinguish goods and services as originating with a certain person or business.]

   a. The Constitution of the United States, in Article I, § 8, clause. 8 provides that 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 to their respective writings and discoveries.'' Thus it provides for the copyright act, and combines this with promotion of the sciences for patent protection.

   b. The United States Patent Act, is cited as 35 U.S.C. § 101 et seq. When sections of the act are cited they will all be found in this Part of the U.S. Code. i. The section provides, ``Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.''

   CAUTION: NOTES

   a.  If you believe an item such as software may be copyrightable and also be the subject of a patent, you may apply for the copyright protection (be sure to watch the maintenance of trade secrets).  Don't leave out rights you may obtain by thinking these are mutually exclusive protection methods.  Though most patentable useful articles are denied copyright, in the software realm especially, many rights may attach.

   b.  THE ONE YEAR "On Sale Bar" Rule: It is a complete bar to registration of patents that the invention has been "sold" or "in use" for over 1 year.  There are cases that say that the mere application of an inventor for a loan in which the inventor states (supposedly privately) that the invention is "ready for market" can defeat a registered patent if later it is discovered (usually by a sued infringer) that this application was made more than a year from the application. NOTE that in EUROPE and most other countries, use of the patent in any way can invalidate the patent there.  There is also the possibility of International Patent protection.

   c.  The SOFTWARE PATENT BOOM:  After the case of State Street Bank & Trust Co., v. Signature Financial Group, Inc., (United States Court of Appeals for the Federal Circuit, No. 96-1327)(1998) the federal Circuit (patent court) issued a ruling that has caused there to be a flood of patent applications for a "Data Processing System for Hub and Spoke Financial Services Configuration."  This patent ultimately issued and was upheld in this case, and it was a "pure software" patent.  This opened the flood gates for thousands of patent applications for any software that, "we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"-a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades."  Summed up the court reasoned that even though mathematical algorithms are generally "unpatentable, namely "laws of nature, natural phenomena, and abstract ideas," IF software that causes a computer ("machine") to use as its instructions mathematical calculations that constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result", the software is patentable subject matter.  BE CAUTIOUS TO EXAMINE any new, unique or result oriented processes in software and Internet sites and processing applications for rights you otherwise may lose, unnoticed.

   d.  PATENTS NEED MAINTENANCE:   The rights in a patent are provided even though there are also laws against monopolies.   For a full explanation of the many fees, dates and maintenance requirements, beyond the scope of this article, see the U.S. Patent and TM Office link.

   e.  THE LAW:  35 U.S.C. Section 102 explains that “A person shall be entitled to a patent unless—

   1. PRIOR ART: the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
   2. ON SALE BAR: the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
   3. ABANDONMENT: he has abandoned the invention, or
   4. FOREIGN REGISTRATION: the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or
   5. PUBLIC DOMAIN: the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of title  35  before the invention thereof by the applicant for patent, or
   6. NOT THE INVENTOR: he did not himself invent the subject matter sought to be patented, or
   7. PRIORITY OF INVENTION DATE: before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

d. Note that unless the inventor himself (itself) applies for the patent, a patent attorney is necessary to apply for a patent for the inventor and to appeal denials and represent an inventor in the PTO and TTAB and in some specialized patent courts like the Federal Circuit. An attorney registered to practice before the Patent & Trademark Office has to have earned a degree in engineering or demonstrate a background in science or engineering to be allowed to even take the “Patent Bar Exam”. The Registered Patent Attorney is a specialist.  Any attorney familiar with patents may sue, in federal courts to enforce, prosecute infringements or defend a patent and rights under patents and prepare patent licenses.

2. What is the subject of a valid patent? A patent is the right to prevent others from using, manufacturing, importing or selling an invention in the US during the patent grant term.

a. A PATENT DOES NOT grant rights; rather it allows the grantor the right to exclude others for a limited time.35 U.S.C. Sec 271.

b. TERM of a patent:

i. A patent confers the right to exclude others from making, using, or selling the claimed invention in the United States for a term of 20 years from the issue date.  NOTE that since many patents can take up to 3 years to process, and under the "old law" patents life start date refers back to the date of application, a new Law is going through the U.S. Congress to guaranty the 20 year term.

ii. A utility Patent lasts for 20 years from the issue date if registered under the new amendments.

1. CLAIMS: Patents can be infringed but they are NOT like copyrights that protect the EXPRESSION of  works FIXED in tangible media from COPYING. To learn more about copyrights, see Copyright Basics and the Copyright Office Link
2. Patents can protect the processes, ideas and methods. In the software field, patents were once thought not to protect mathematical algorithms as those used in encryption systems. This has changed, see above under CAUTIONS.
3.   No need for a “copying,” as infringement can take place without any copying or “access” argument, since the same way of DOING something is not always arrived at by copying and
4. It is not a defense, however to an infringement suit that the patented item was independently invented.
5. Where copyright and patent may collide is when an item has mostly functional aspects with some small or incidental items of decoration. Generally useful items that look nice will not make of a lamp a copyrightable sculpture. (See the case of Sears vs. Compco ).  
6. So too, a Website that contains no interactive elements, no data processing may contain copyrights but generally few if any patents. A site that searches, processes, has buying shortcuts, "bot", shows movies and the like may have many patentable software items as well as copyrightable ones.  Since a user interface of a really complex retail and "back end" web site is generally a template into which data is displayed, there may be both patentable and copyright as well as a mix of TM and trade dress. 
7. Most web sites contain and use many different forms of IP and one must be aware of ALL the rights, including Trademarks, Copyrights, Trade Secrets (that you may not want to patent) and other rights: privacy, publicity and other property that can be exploited and protected.

Patents are difficult and relatively expensive to obtain compared with copyrights. This is especially true for software patents that may take up to two years to obtain. Thus if your company needs rather quick protection apply for copyrights and patents; the copyright will most likely register and benefit the owner for such things as customs enforcement, injunctions, damages and even statutory damages.

Patents have certain maintenance costs on a recurring basis.  Be sure you understand all the costs.

• Basic Definitions:
•     The term "invention" means invention or discovery. 
•     The term "process" means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. 
•     The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
• To learn more about patents: See the Link to the Patent & Trademark Office on the LINKS page.