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Under
United States law The law of the United States comprises many levels of codified and uncodified forms of law, of which the most important is the nation's Constitution, which prescribes the foundation of the federal government of the United States, as well as va ...
, a
patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time (usually, 20 years) from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an
FDA The United States Food and Drug Administration (FDA or US FDA) is a federal agency of the Department of Health and Human Services. The FDA is responsible for protecting and promoting public health through the control and supervision of food s ...
approval, and/or offering a product specially adapted for practice of the patent. United States patent law is codified in Title 35 of the United States Code, and authorized by the
U.S. Constitution The Constitution of the United States is the supreme law of the United States of America. It superseded the Articles of Confederation, the nation's first constitution, in 1789. Originally comprising seven articles, it delineates the nationa ...
, in Article One, section 8, clause 8, which states: Patent law is designed to encourage inventors to disclose their new technology to the world by offering the incentive of a limited-time monopoly on the technology. For U.S. utility patents, this limited-time
term of patent The term of a patent is the maximum time during which it can be maintained in force. It is usually expressed in a number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent ...
is 20 years from the earliest patent application filing date (but this term can be extended via patent term adjustment). After the patent term expires, the new technology enters the
public domain The public domain (PD) consists of all the creative work to which no exclusive intellectual property rights apply. Those rights may have expired, been forfeited, expressly waived, or may be inapplicable. Because those rights have expired, ...
and is free for anyone to use.


Substantive law

Some of the most important patent law is found under
Title 35 of the United States Code Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections (149 of which a ...
. The "patentability" of inventions (defining the types things that qualify for patent protection) is defined under Sections 100–105. Most notably, section 101 sets out "subject matter" that can be patented; section 102 defines "novelty" and "statutory bars" to patent protection; section 103 requires that an invention must not only be new, but also "non-obvious". Other patent law is found in a variety of sources, including federal court decisions that have accumulated over more than 200 years. The U.S. Patent and Trademark Office also has its own court system, the Patent Trial and Appeal Board (formerly known as the Board of Patent Appeals and Interferences), that specifically handles appeals of examiners' refusals to grant patents, and various other matters pertaining specifically to the USPTO. Some Patent Trial and Appeal Board opinions will be considered precedent, and will affect future patent applications.


Patentable subject matter (§101)

To be patent eligible subject matter, an invention must meet two criteria. First, it must fall within one of the four statutory categories of acceptable subject matter: process, machine, manufacture, or composition of matter. Second, it must not be directed to subject matter encompassing a judicially recognized exception: laws of nature, physical phenomena, and abstract ideas.


Novelty (§102)

Section 102 of the patent act defines the "novelty" requirement. The novelty requirement prohibits patenting a technology that is already available to the public. Specifically, 35 U.S.C. 102 states: For a technology to be "anticipated" (and therefore patent-ineligible) under 35 U.S.C. 102, the prior art reference must teach every aspect of the claimed invention either explicitly or impliedly. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." ''Verdegaal Bros. v. Union Oil Co. of California'', 814 F.2d 628, 631 (Fed. Cir. 1987).


Obviousness (§103)

To be patentable, a technology must not only be "new" but also "non-obvious." A technology is obvious (and therefore ineligible for a patent) if a person of "ordinary skill" in the relevant field of technology, as of the filing date of the patent application, would have thought the technology was obvious. Put differently, an invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. Specifically, 35 U.S.C. 103 states: The non-obviousness requirement does not demand that the prior art be identical to the claimed invention. It is enough that the prior art can somehow be modified in order to teach the claimed technology. So long as the modification of the prior art (or combination of several prior art references) would have been obvious to a person of ordinary skill in the art (PHOSITA) at the time the application was filed, the applied-for technology will be considered obvious and therefore patent-ineligible under 35 U.S.C. §103. As the practice of the USPTO and US Federal Courts showed later, the PHOSITA criterion turned out to be too ambiguous in practice. The practical approach was developed soon by the US Supreme Court in Graham v. John Deere Co. in 1966 and in KSR v Teleflex in 2006.


Patent application procedure

Patent applications can be filed at the
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Al ...
. The application process is somewhat slow and generally expensive. Depending on the complexity of the invention and on the number of claims $10,000 to $30,000 in the USPTO and lawfirm fees. Pharmaceutical patents may cost significantly more. Prior to passing
Leahy–Smith America Invents Act The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the ...
the duration of the US utility patent was 17 years after the patent issuance. Since 2012, the duration of the US utility patent is 20 years from the date of filing. However, extension is possible if the USPTO fails to issue a patent within 3 years after filling the full application. The rules for drafting and filing a patent application are set out in th
Manual of Patent Examination Procedure
(or "MPEP").


Pre-grant publication (PG Pub)

Since the
American Inventors Protection Act The American Inventors Protection Act (AIPA) is a United States federal law enacted on November 29, 1999, as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended A ...
, the
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Al ...
publishes
patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
applications 18 months after they are filed. This time limit can be extended under certain circumstances, for an additional fee. The applications may be published before a patent has been granted on them if the patent is not granted within the 18-month time frame. Applicants can opt out of publication if the applications will not be prosecuted internationally.


Patent infringement, enforcement and litigation


U.S. International Trade Commission (ITC)

In the United States, a patent holder may wish to pursue a cause of action in the
United States International Trade Commission The United States International Trade Commission (USITC or I.T.C.) is an agency of the United States federal government that advises the legislative and executive branches on matters of trade. It is an independent, bipartisan entity that analyze ...
(ITC) instead of, or in addition to, the court system. The ITC is an agency of the U.S. federal government empowered to enforce patent holders' rights under Section 337 of the
Tariff Act of 1930 A tariff is a tax imposed by the government of a country or by a supranational union on imports or exports of goods. Besides being a source of revenue for the government, import duties can also be a form of regulation of foreign trade and polic ...
. In contrast to courts, which have a wide range of remedies at their disposal, including monetary damages, the ITC can grant only two forms of remedy: exclusion orders barring infringing products from being imported into the United States, and cease-and-desist orders preventing the defendants (known as respondents) in the ITC action from importing infringing products into the United States. In addition, the ITC can grant temporary relief, similar to a preliminary injunction in U.S. federal court, which prevents importation of allegedly infringing products for the duration of the ITC proceeding. In some cases, this may provide a quicker resolution to a patent owner's problems.


Utilization and importance

A survey of 12 industries from 1981 to 1983 shows that patent utilization is strong across all industries in the United States, with 50 percent or more patentable inventions being patented. However, this is not to say that all industries believe their inventions have relied on the patent system or believe it is a necessity to introduce and develop inventions. Another survey for the same time period show that, of those 12 same industries, only two—pharmaceuticals and chemicals—believe thirty percent or more of their patentable inventions would ''not'' have been introduced or developed without having patent protection. All others—petroleum, machinery, fabricated metal products, primary metals, electrical equipment, instruments, office equipment, motor vehicles, rubber, and textiles—have a percentage of twenty-five or lower, with the last four of those industries believing none of their inventions relied on the patent system to be introduced or developed.


See also

* Timeline of United States inventions


Concepts

*
All elements test The all elements rule or all limitations rule (often written with a hyphen after "all") is a legal test used in US patent law to determine whether a given reference shows that a patent claim lacks the novelty required to be valid. The rule is also ...
*
Assignor estoppel The doctrine of assignor estoppel is a doctrine of United States patent law barring a patent's seller (assignor) from attacking the patent's validity in subsequent patent infringement litigation. The doctrine is based on the doctrine of legal estop ...
* Continuing patent application *
Design patent In the United States, a design patent is a form of legal protection granted to the ornamental design of an article of manufacture. Design patents are a type of industrial design rights, industrial design right. Ornamental designs of jewelry, furni ...
*
Doctrine of inherency In United States patent law, the doctrine of inherency holds that, under certain circumstances, prior art may be relied upon not only for what it expressly teaches, but also for what is inherent therein, i.e., what necessarily flows from the express ...
*
Doctrine of repair and reconstruction The doctrine of repair and reconstruction in United States patent law distinguishes between permissible repair of a patented article, which the right of an owner of property to preserve its utility and operability guarantees, and impermissible recon ...
*
Duty of candor In UK public law, the duty of candour is the duty imposed on a public authority 'not to seek to win litigation at all costs but to assist the court in reaching the correct result and thereby to improve standards in public administration'. Lord ...
*
Duty of disclosure A duty (from "due" meaning "that which is owing"; fro, deu, did, past participle of ''devoir''; la, debere, debitum, whence "debt") is a commitment or expectation to perform some action in general or if certain circumstances arise. A duty may ...
*
Exhausted combination doctrine The exhausted combination doctrine, also referred to as the doctrine of the ''Lincoln Engineering'' case, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but a ...
*
First-sale doctrine The first-sale doctrine (also sometimes referred to as the "right of first sale" or the "first sale rule") is an American legal concept that limits the rights of an intellectual property owner to control resale of products embodying its intellec ...
* Flash of genius *
Incredible utility In United States patent law, incredible utility is a concept according to which, in order for an invention to be patentable, it must have some credible useful function. If it does not have a credible useful function despite the assertions of the ...
*
Inequitable conduct In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings by misrepresenting or omitting material information with the specific intent to deceive ...
*
Information disclosure statement An information disclosure statement (often abbreviated as IDS) refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution proce ...
(IDS) *
Inter partes review An inter partes review (IPR) is a procedure for challenging the validity of a United States patent before the United States Patent and Trademark Office. History The inter partes review procedure was enacted on September 16, 2012 as part of the Ame ...
*
Interference proceeding An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a proceeding unique to the patent law of the United States. Unlike in most other co ...
* Large entity status *
Markman hearing A ''Markman'' hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a plai ...
* Micro entity status * Non-provisional patent application * On-sale bar *
Petition to make special In United States patent law, a petition to make special (PTMS) is a formal request submitted to the United States Patent and Trademark Office (USPTO) asking that a patent application be examined ahead of the other pending applications in the same te ...
* Printed matter (patent law) *
Prosecution disclaimer Under United States patent law a prosecution disclaimer is a statement made by a patent applicant during examination of a patent application which can limit the scope of protection provided by the resulting patent. It is one type of file-wrapper ...
*
Prosecution history estoppel Prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded f ...
*
Provisional application Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant ...
*
Reduction to practice In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual (the invention is actually carried out and is found to work for its intende ...
* Reissue application * Small entity status * Statutory Invention Registration *
Submarine patent A submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, which can be several years, or a decade.
*
Transitional phrase A transitional phrase, in United States patent law, is a phrase that links the preamble of a patent claim to the specific elements set forth in the claim which define what the invention itself actually is. The transitional phrase acts as a limitati ...
*
United States Defensive Publication A United States Defensive Publication is a published patent application for which the inventor has elected not to get patent coverage. Defensive Publications were made between April 1968 and May 8, 1985. The program, called Defensive Publication ...
*
Utility As a topic of economics, utility is used to model worth or value. Its usage has evolved significantly over time. The term was introduced initially as a measure of pleasure or happiness as part of the theory of utilitarianism by moral philosophe ...
* X-Patent


Legislation

* 28 USC 1498. This statute allows the US government to override patent protection (or contract another entity to do so) for public-use purposes. The patent owner can sue for limited compensation. *
Invention Secrecy Act The Invention Secrecy Act of 1951 (, codified at ) is a body of United States federal law designed to prevent disclosure of new inventions and technologies that, in the opinion of selected federal agencies, present a possible threat to the nat ...
(1951) *
Patent Act of 1790 The Patent Act of 1790 () was the first patent statute passed by the federal government of the United States. It was enacted on April 10, 1790, about one year after the constitution was ratified and a new government was organized. The law was concis ...
, First Patent Act - April 7, 1790 *
Patent Act of 1836 The Patent Act of 1836 () established a number of important changes in the United States patent system. These include: *The examination of patent applications prior to issuing a patent. This was the second time this was done anywhere in the worl ...
* Patent Act of 1870 *
Patent Act of 1952 A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
* Patent Reform Act of 2005 * Patent Reform Act of 2007 * Patent Reform Act of 2009 *
Plant Patent Act The Plant Patent Act of 1930 (enacted on 1930-06-17 as Title III of the Smoot–Hawley Tariff, ch. 497, , codified as 35 U.S.C.br>Ch. 15 is a United States federal law spurred by the work of Luther Burbank and the nursery industry. This piece of ...
(1930)


Other

* American Intellectual Property Law Association (AIPLA) *
Board of Patent Appeals and Interferences The Board of Patent Appeals and Interferences (BPAI) was an administrative law body of the United States Patent and Trademark Office (USPTO) which decided issues of patentability. Under the America Invents Act, the BPAI was replaced with the Pat ...
(BPAI) *
Confederate Patent Office The Confederate Patent Office was the agency of the Confederate States of America charged with issuing patents on inventions. The Chief Clerk during its entire existence was Rufus Randolph Rhodes of Mississippi who resigned his post at the United ...
*
List of top United States patent recipients The United States Patent and Trademark Office (USPTO) issues an annual "Patenting by Organizations" report on the agency's web site. This report contains a ranked list of all US and international organizations which received 40 or more US patents ...
*
Copyright law of the United States The copyright law of the United States grants monopoly protection for "original works of authorship". With the stated purpose to promote art and culture, copyright law assigns a set of exclusive rights to authors: to make and sell copies of the ...
*
United States Court of Appeals for the Federal Circuit The United States Court of Appeals for the Federal Circuit (in case citations, Fed. Cir. or C.A.F.C.) is a United States court of appeals that has special appellate jurisdiction over certain types of specialized cases in the U.S. federal court ...
(CAFC) *
United States Court of Customs and Patent Appeals The United States Court of Customs and Patent Appeals (CCPA) was a United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes. History The CCPA began as the United States Court of Customs ...
(CCPA) *
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Al ...
(USPTO) *
United States Patents Quarterly The ''United States Patents Quarterly'' (U.S.P.Q.) is a United States legal reporter published by the Bloomberg Industry Group in Washington, D.C. The U.S.P.Q. covers intellectual property cases including patents, copyrights, trademarks, and trade ...
(USPQ) *
United States trademark law A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to ...


References


External links

* United States Patent and Trademark Office (USPTO) web site: *
Consolidated laws
(pdf, 1MB) *

*
Search US patents



Sarah Burstein, Sarah R. Wasserman Rajec & Andres Sawicki, ''Patent Law: An Open-Access Casebook'' (2021)
{{DEFAULTSORT:United States Patent Law