| Nanotreatise | Patent |
What is a patent?
The usual, most well-known kind of patent is what is technically called a “utility patent.” It’s a government-granted exclusive entitlement on a certain invention.
When someone says “patent,” without specifying otherwise, they are almost certainly referring to a utility patent. Under U.S. law, however, there are two other kinds of patents: design patents, which concern ornamental designs (although “ornamental” can be interpreted quite broadly) and plant patents, which concern asexually reproducing plants. Going forward, this document will only talk about utility patents; so “patent” means “utility patent.”
Where does patent law come from?
U.S. patent law is federal law, with federal courts having exclusive jurisdiction. Congress gets its power to grant patents from the Progress Clause of the Constitution (“The Congress shall have 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.” U.S. Const. art. I, § 8, cl. 8.).
Patent law is codified as Title 35 of the United States Code. The statute that forms the basis of current patent law is the Patent Act of 1952, which starts at § 101 in Title 35. There were important substantive amendments made with the Leahy-Smith America Invents Act of 2011 (AIA). The most important effective date for the AIA is March 16, 2013. AIA changes apply to applications filed on or after that date, as well as patents that result from those applications. Pre-AIA law applies to many in-force patents and perhaps some pending applications.
Patents on inventions under Anglo-American law can be traced back to the 1623 Statute of Monopolies, which sought to shut down the practice of the English monarch handing out favors in the form of monopolies on certain products in certain territories. That statute didn't bar patents entirely, however. It carved out an exception that would allow new patents to issue to create government-granted monopolies for novel inventions.
While a U.S. modern patent can be described as a government-granted monopoly, a patent does not necessarily provide a "monopoly" in the sense in which modern antitrust law uses the term. That is to say, any given patent may or may not create market power that allows a patent holder to raise prices above competitive levels. Whether that happens will depend on consumer preferences and the existence of alternatives to the patented invention. Certainly, however, it is part of the intent of the patent system as a whole that patents can create the power to raise prices above the level that would prevail if competition were allowed. Indeed, that is crucial to the policy rationale for patent law.
What is the policy rationale for patents?
The underlying rationale for patents is generally understood to be a bargain between society and the inventor. In return for inventing something useful and disclosing exactly how to build and use it, and also to help along the invention’s development and commercialization, the government grants the inventor exclusive rights over the invention for a limited time. This allows the owner to potentially derive monopoly profits, for a time, by being the exclusive manufacturer or licensor of the patented technology.
Unlike copyrights, trademarks, trade secrets, and publicity rights, patent rights cannot arise without bureaucratic intervention. The only way patent protection comes about in the United States is if the U.S. Patent and Trademark Office (USPTO) issues a patent after favorably reviewing an application. Once issued, a patent lasts until 20 years from the date of the filing of the application. So if the application takes three years to go through, that would be an in-force patent term of 17 years. There is the possibility of certain extensions for delays in issuance attributable to the USPTO, and there are special opportunities for extensions on pharmaceutical patents having to do with the length of the approval process of the Food and Drug Administration.
What rights does a patent give you?
A patent essentially gives the owner only one right: The right to sue others for money and an injunction in an action for infringement.
A patent does not give the owner the right to practice (meaning to make or use) the invention. In fact, it is quite common that patent owners cannot make their claimed invention. Doing so might violate industrial-safety rules, run afoul of product-safety regulations, or even infringe on someone else’s patent. For instance, if someone invents an improvement on a patented invention, then the inventor of the improvement cannot practice the invention without getting a license from the owner of the patent on the underlying invention. And the owner of the patent on the original invention cannot make the improved version without a license from the owner of the improvement patent. That’s a situation frequently referred to as “blocking patents.” Thus, the legal entitlement a patent provides is really negative one: to exclude others from practicing the invention.
Anatomy of patents: the claims and the specification
A patent is a document. A common length would be around a dozen pages or so (though some are extremely long). They are public documents and easy to find online. If you like, you can download a patent, look at it, even print it out.
Each patent has a number, and the numbers are issued sequentially. To find examples of patents, you can try searching online for "us patent NNNNNNN" – but replace "NNNNNNN" with a seven-digit number. Most numbers starting with a 7, 8 or 9 should get you a fairly recent patent. You can also try an eight-digit number starting with 10. (As of the date of this nanotreatise, new patents are being issued with numbers beyond 11,000,000.)
As a document, a patent has two important parts: the claims and the specification.
Understanding the role of the claims and the specification is crucial to understanding anything else about how patents work.
Technically, the patent statute says the claims are part of the specification. 35 U.S.C. § 112 (b). But the term “specification” is commonly used in contradistinction to the claims, and that’s how we’ll use the word here.
The specification is the bulk of the patent. It generally contains a fair amount of text, and that text is written in normal prose—at least sort of normal. The specification’s job is to carefully describe the invention, explain with precision how to build and use it, and point out how it is distinct from other inventions. The specification also generally attempts to “sell” the patentability of the invention, conveying how it is useful, new, and nonobvious.
The claims are the pointy end of the patent. You’ll find them as a numbered list at the end of the patent document. The claims set out in exact language what it is that others cannot make or use. In a lawsuit, the claims form the core of the test for patent infringement.
A patent typically has multiple claims. Different claims may cover different versions of the invention, and different claims tend to be purposefully designed to be narrower or broader.
Each claim is an individual legal entitlement that can form the basis for an infringement lawsuit. If a patent has 10 claims, a plaintiff might sue a defendant on claims 4, 6, and 7. And even if the defendant wins on claims 4 and 6, for instance, the plaintiff could prevail in the lawsuit and get a money award and injunction just based on claim 7.
Claims use funny language and they consist of individual elements, all of which together define a product or process what would fall within the claim’s exclusive rights and thus form the basis for an infringement action. Let's use water as an example:
I claim:
1. A molecule consisting of an oxygen atom,
a first hydrogen atom covalently bonded to said oxygen atom, and
a second hydrogen atom covalently bonded to said oxygen atom.
2. The molecule according to claim 1, wherein each hydrogen atom has a nucleus consisting of one proton and one neutron.
Notice that in this example, claim 2 is more specific and more narrow than claim 1. If a water molecule has hydrogen atoms with nuclei consisting only of protons, with no neutrons, then that water molecule would be within the scope of claim 1 but not claim 2.
Five requirements for a valid patent – for issuance and infringement litigation
It is useful to focus on five crucial things that must be present for an invention to be validly patented:
1. patentable subject matter
2. utility (usefulness)
3. novelty (newness)
4. nonobviousness
5. disclosure
These are the crucial five things that an inventor must have in order to get a patent issued in first place. And these are the crucial five things the patent owner must be prepared to uphold when the patent is attacked by the defendant in an infringement lawsuit.
Technically speaking, there’s more required than just these five things to get a patent. For instance, there are fees that need to be paid and paperwork that must be filed. But the list above is the big five for doing the substantive analysis on whether an invention is patentable.
And while there are myriad ways for a defendant to prevail in a patent lawsuit, a key battleground in litigation is the affirmative defense of invalidity. And a defendant can win on invalidity by knocking out any of those five requirements.
All claims of a patent are evaluated individually on all of these things. So in a patent with 10 claims, claim 1 might be determined to be invalid for a lack of novelty, while claim 2 might be determined to be invalid for a lack of nonobviousness. And claim 3 might be determined to be valid, while claim 4 is held invalid for not meeting a disclosure requirement. And so on. The fact that some claims might perish while others survive attack is one of the reasons inventors pursue a patent with multiple claims.
Key requirement 1: Patentable subject matter
This requirement is easy for most inventions. Section 101 provides that any “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent-eligible subject matter. The categories of “machine, manufacture, or composition of matter,” cover essentially anything that is artificially produced and is tangible. Tangible substances and devices are generally easy cases for patent-eligible subject matter.
Where the invention is claimed as a “process,” things can get more complicated. Of particular note, a number of recent U.S. Supreme Court decisions have focused on the dividing line between what is in and what is out when it comes to things like software, business methods, and medical diagnostics.
Patent-eligible subject matter can be a big issue in the fields of internet services, computer programming, biotechnology, and healthcare services. But for a huge swath of inventions, patentable subject matter is a slam dunk.
Key requirement 2: Utility
The utility requirement is that the invention must be useful. This too is an easy requirement for most inventions.
Utility can, however, be a problem for inventions that are suspected of not actually working. An invention that seems to violate known laws of physics will draw a rejection on the basis of a lack of utility. So if you are applying for a patent on a machine that endlessly produces electricity without any energy inputs – something that is inconsistent with the Second Law of Thermodynamics – you not going to get a patent. That is unless, I suppose, you can stun everyone with a successful in-person demonstration at the USPTO.
The utility requirement has been used historically to reject inventions that were deemed contrary to good morals. This doctrine of “moral utility,” however, seems to be dead letter at this point.
Of substantial economic and industrial importance is the employment of the utility requirement to reject patent applications for newly synthesized substances. If you are a pharmaceutical company or chemical company that’s synthesized a new molecule – but you don’t know what it is good for yet – the utility requirement is going to be a problem for you. Research pharma firms often use the results of animal testing to show specific pharmacological effects in order to surmount the utility requirement.
Key requirement 3: Novelty
The novelty requirement means that the invention must be new.
The key phrase used in talking about novelty is “prior art.” To be able to talk knowledgably about patents, you’ll need to get comfortable with this prhase. If a claimed invention can be found among the prior art, then it is not novel. And that means you cannot get a patent on it.
One thing that is funny – to modern ears, at least – with the phrase “prior art” is the use of the word “art.” In patent talk, “art” does not refer to the kind of thing you'd find hanging on the walls in an art museum – such as oil paintings of mythical deities. Instead, in the phrase “prior art,” the word “art” can be translated as “technology.” It is, in fact, the same sense of the word “art” that is used in the phrase “state of the art.”
Prior art, in general, constitutes all the non-concealed documents, writings, publications, public displays, public uses, etc. out there in the world – that is, the things that delineate the state of society’s technical knowledge – that were in existence before the applicant’s invention. Generally the date of the applicant’s invention is considered to be the date of filing of the patent application. Thus, to simplify, everything in the public sphere before the filing date is the prior art.
A claim that covers an invention already in the prior art is said to be “anticipated,” and thus non-novel.
Beyond anticipation, there are other senses in which an invention must be new. The inventor must not have waited too long after publicly using the invention before filing an application. The inventor must have priority if there are multiple applicants with pending applications on the same invention. And the inventor must not have derived the invention from someone else’s work.
Novelty is governed by § 102. Importantly, that section was completely re-written by the AIA. The most basic concepts of § 102 persist after the AIA, but the details differ in important ways.
Key requirement 4: Nonobviousness
Even if a claimed invention cannot be found in the prior art and is deemed novel, the invention can still be rejected by the USPTO if the difference over the prior art is so minor that the change would be obvious to a person having ordinary skill in the art.
The touchstones for nonobviousness are the prior art – discussed above with regard to novelty – and the level of ability of the hypothetical person having ordinary skill in the art, frequently referred to by the convenient acronym “phosita.” In other words, if the phosita could have or would have done what you did, then you aren’t entitled to a patent on it.
Key requirement 5: Disclosure
The disclosure requirement is more precisely thought of a multiple requirements, which are found in § 112(a). That section says, “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
Analysis of the disclosure requirement, as with nonobviousness, revolves around the hypothetical person known as the phosita.
There are at least two key reasons for the § 112(a) disclosure requirements. First, the disclosure requirements force the inventor to show that they have actually invented the invention that they are claiming. Second, the disclosure requirements force the inventor to honor the essential, implicit bargain of the patent system – that in return for exclusive rights for a limited period of time, the inventor enriches the state of the art and benefits society at large by providing clear and complete instructions on how to make and use the invention. That way, the invention will be free and useful to all when the patent expires.
Patent prosecution
The process of applying for a patent and dealing with the USPTO to get it issued is referred to as “patent prosecution.” The inventor, patent attorney, or patent agent drafts the specification and claims, and files them with the USPTO. At the USPTO, an examiner reviews the application and responds. The response can be a rejection of claims, accompanied by stated reasons. Or the response could be a notice of allowance – signifying that the application is successful. For a claim that is rejected, the applicant can amend the claim, present reasons why the examiner should allow it, or abandon the claim – perhaps choosing to pursue other claims within the application that are more promising. The text and drawings of a successful patent application end up becoming the text and drawings of the issued patent.
A final rejection from a patent examiner can be appealed to the USPTO’s Patent Trial and Appeal Board, known as the “PTAB” (pronounced “pee-tab”) Decisions of the PTAB can be appealed to the U.S. Court of Appeals for the Federal Circuit.
To practice patent prosecution – that is, to prepare patent applications for and represent applicants before the USPTO – you must be admitted to practice before the USPTO, sometimes informally referred to as the “patent bar.”
Post-issuance adversarial proceedings at the USPTO
There are litigation-like proceedings that can be brought at the USPTO after a patent has been issued. These can be used as a way for third parties to attack a patent and thus pre-empt infringement litigation. Such proceedings include “post grant review” and “inter partes review.” Representing clients in these proceedings requires admission to practice before the USPTO (the so-called “patent bar”).
Patent infringement litigation
Section 271 provides a cause of action for patent infringement against whoever “makes, uses, offers to sell, or sells … or imports” any invention covered by an unexpired patent. Patent infringement suits must be brought in federal district court. Patent infringement actions – regardless of what regional circuit covers the particular district court – are appealed to the Federal Circuit.
Attorneys representing litigants in infringement litigation need only be admitted to practice before the federal court in which the litigation is taking place – admission to the “patent bar” is unnecessary.