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Tips for Young Lawyers

An Introduction to Patenting in the United States
By: Stephen S. Mosher   © 2014
Part I

WHAT IS A PATENT?
A patent is a grant for a limited time by the U. S. Patent and Trademark Office (the “PTO”) of the right to exclude anyone besides the inventor or the owner of the patent from practicing the invention defined in the patent document. The grant is provided to an inventor who discloses the invention to the Patent Office in a detailed, written Application for Patent that survives an examination when compared against the prior art.

Subject matter that is eligible for a “Utility Patent” includes things that have utility such as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. A “Design Patent” can also be granted for “a new, original and ornamental design for an article of manufacture.” 35 U.S.C. §171. Also, a “distinct and new variety of plant” that is asexually reproduced may be eligible for a “Plant Patent.” 35 U.S.C. §161. 

Several kinds of subject matter that cannot be patented include a law of nature, a physical phenomenon, or an abstract idea such as a purely mental process or an algorithm, which all lie outside of the definition of utility patent because they are either naturally-occurring concepts or something that in-and-of-itself provides “no useful, concrete and tangible result.” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373-74 (Fed. Cir. 1998).

While a patent application is pending in the Patent Office, the applicant should include the legend “Patent Pending” on the article that contains the invention to be patented. Once the patent is granted, the applicant should mark the article with the patent number or the legend “Patented,” or “U. S. Patent,” to notify the public that the article is patented.

WHAT ARE THE BENEFITS OF A PATENT? 
The basic right embodied in a patent is the right to exclude others from using the invention without prior authorization of the patent owner. This right is limited to the term of the patent, usually 20 years from the date the application for the patent was filed. Patents are a valuable asset of a company whose products are covered by patents it holds, which may include patents it owns or that are licensed from others. A patent or a portfolio of patents is evidence of a strong technological position in a market or industry. Patents can also provide a source of revenue (royalties) through licensing to others of the technology covered by the patent.

WHEN IS AN IDEA PATENTABLE?
Inventions most often occur as the result of confronting some problem for which no apparent solution is known to exist, or one that exists cannot be used for reasons of cost or that the available solution has significant disadvantages. Thus, finding a solution to the problem that is new and original and is not obvious may be eligible to be patented. Such ideas are the result of insight into the problem and its aspects. It is a creative act to see a new way to assemble several components or to arrange the steps of a process or to eliminate or replace something that is not necessary.

When this “Aha moment” happens, it is time to write down a description of the problem and the solution and the date the idea came into being. When shared with others this record is called a disclosure of invention. Before sharing the idea, however, it is recommended to consult a patent attorney to evaluate what should be done with the idea before disclosing it to others.

WHAT’S INVOLVED IN GETTING A PATENT?
A patent attorney is a licensed attorney who is also registered by the U. S. Patent and Trademark Office to represent patent applicants.  Registration means this attorney is also qualified to represent inventors because their educational background is in engineering or science and they have demonstrated competence in the complex procedural aspects of getting a patent. These qualifications are required to properly perform the preparation, filing, and responding to the examination of the application for a patent.

A patent attorney is also experienced in advising an inventor about the patent process and understanding whether their invention is ready for patenting. Often a patent search is recommended to see whether the same invention has already been patented. This is also useful for determining the potential scope of the invention that might be patented.

A patent application includes a set of drawings, a detailed written description of the invention, and a set of claims that define the invention in legal language. The application, which is similar to a technical paper, is most often written by the patent attorney.

When the application is filed in the Patent Office, it is assigned a serial number and an examiner, and placed in the queue of applications awaiting examination by the assigned examiner. Usually, the wait is 1-1/2 to 3 years. All applications remain confidential until published by the Patent Office.

When examination begins, the examiner will perform a patentability search and prepare a written opinion in an “Office Action” about the patentability of the invention. The applicant or his or her attorney must respond to the Office Action in a timely manner, typically within three months. The response usually contains carefully thought out arguments to counter the evidence in the prior art used by the examiner to justify the rejection of the claims if he or she thinks the invention is not patentable. Sometimes it is necessary to amend the language of the claims. Once allowed, the patent will be granted when the applicant pays the required issue fee. The patent will then be printed, bound, affixed with an official seal, and issued to the applicant.

Inventors and applicants should keep careful records of the development of the invention and documents associated with disclosures and efforts to obtain a patent, including confidentiality and consulting agreements with persons hired to assist in the development and preparing and filing a patent application, assignments of rights in the invention, documents regarding offers for sale or licensing of the invention, and documents evidencing the sales of the invention or products or processes that embody the invention.

CONCLUSION
Patenting an invention is a procedurally rich process. This monograph reviews (A) what a patent is, what can be patented, and outlines the process by which a patent is granted; (B) the benefits of a patent; (C) a discussion of when an idea may be patentable; and (D) what is involved in getting a patent, including the role of a patent attorney in preparing and prosecuting a patent application that leads to the grant of the patent.

Next month, Part II will review some highlights of the recent America Invents Act that made substantial amendments to the Patent Statute.

Stephen Mosher is a licensed attorney in The State of Texas, a registered patent attorney, and a partner at Whitaker Chalk Swindle & Schwartz PLLC of Fort Worth. His J. D. degree was granted by Texas Wesleyan University in 1995 and his undergraduate degree in electrical Engineering is from Iowa State University. Prior to earning his law degree, Mr. Mosher was employed for many years as an engineering manager with Tandy Corporation in Fort Worth. He is currently a member of the Dean’s Advisory Council of the Texas A&M University School of Law, and in 2010 was honored as a Distinguished Alumnus by the Texas Wesleyan University School of Law.