General Patent Information

What are Patents and Why Do We Have Them?

Patent Requirements



What are Patents and Why Do We Have Them?
What is a patent anyway?  A patent is a government issued grant which confers on the inventor the right to exclude others from making, using, offering for sale, or selling the invention for what is now a period of 20 years, measured from the filing date of the patent application.  Patent protection for a U.S. patent extends only throughout the United States and its territories and possessions.  Thus, a U.S. patent, taken alone, will not give an inventor the right to exclude those in foreign countries from making or using the invention.  Rather, patent protection generally must be sought in each individual country in which protection is desired.  However, as will be discuss further in the readings below, the Patent Cooperation Treaty has greatly simplified this process.

You can also analogize a patent as being a contract between the inventor and the government.  In particular, the inventor is given a limited term monopoly on the invention, and in return, the government obtains and places the invention in the public domain.  With that said, it is also important to understand what a patent is not.  As mentioned above, a patent enables the inventor to block others from her invention, but it does not give the inventor an affirmative right to make or use the claimed invention since such acts may actually infringe a prior-issued patent that has not expired.

Why do we have a patent system in the first place?  Article I, Section 8 gives Congress 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."  So as a starting point, you can say that our patent system is designed to "promote the progress of science."  However, there are probably an infinite number of ways of achieving this end.  The question really should be, "why have we adopted the current form of our patent laws?"  Although this question has generated a plethora of responses over the years, it is generally recognized that one of the major principles underlying the patent system is that of incentive creation.  Namely, the patent system provides a set of necessary incentives for an inventor to bring his or her idea to the marketplace.  The first and perhaps foremost incentive proffered over the years is that the patent system provides an incentive to invent.  Under this rationale, an inventor will not adequately be compensated unless she is given an “exclusive” right to her invention.  By virtue of not being adequately compensated, the inventor may choose not to spend the resources required by the inventive process.  Next, the patent system creates an incentive to disclose.  Here, the carrot of exclusivity we just mentioned is used to strike a “bargain” with the inventor under which the inventor is afforded legally enforceable rights to her invention in exchange for the public disclosure of the invention.  The public benefit to disclosure is simply the free and relatively immediate dissemination of information on which others in the scientific community can then build.  A third incentive that has been proffered by some legal commentators focuses on the creation of an incentive to commercialize the invention.  The theory underlying this third incentive is that, assuming the invention is valuable, either the inventor will commercialize the invention or license it to someone who in turn will commercialize it.  Whereas the incentive to disclose results in a benefit to the scientific community through information dissemination, the incentive to commercialize envisions the benefit being that the invention will be put to its most efficient use by those in the best position to do so.

Patent Requirements
What are the requirements of obtaining a patent?  The Patent Act (35 U.S.C.) and 37 C.F.R. impose a number of hurdles which must first be overcome in order for one to obtain patent protection for their invention.  As we discuss the requirements for patentability, you should keep in mind that there are numerous refinements and intricacies to these general principles that are beyond the scope of this discussion.  With that caveat in mind, perhaps the most onerous requirement imposed by the Patent Act is that the invention must be novel, as defined in Section 102 of the Patent Act, which essentially requires that the inventor invented the claimed invention before anyone else.  Additionally Section 103 requires that the invention not be obvious (at the time the invention was made) when viewed through the eyes of one of “ordinary skill in the art.”  Next, the invention must be of proper subject matter.  In particular, abstract ideas or laws of nature are not considered patentable subject matter.  Rather, the invention must be a process, machine or composition of matter.