1. Patent 101: What Is It?
2. Why Do You Need a Patent?
3. Types of Patents
4. The Patenting Process
5. Non-Patentable Ideas
6. Section 101 Court Cases
7. Overturning May and Alice
8. Complicating Factors
9. Frequently Asked Questions
10. Ask an Attorney Your Patent 101 Questions

Patent 101: What Is It?

Patent 101 starts with a definition of a patent. A patent is a legal way to claim ownership of an invention. To get a patent, you must follow several important steps.

Why Do You Need a Patent?

Filing for a patent is the best way to protect your intellectual property (IP). If you invent a product, getting a patent prevents other people from creating your product without your permission. If someone tries to steal your product, a patent allows you to file an infringement lawsuit.

Most people assume you can patent an idea. This is not true. You can only patent a physical invention or a process. However, you can transition your idea to an invention. This will eventually allow you to file for a patent. Thousands of people file for patents every year. This makes it important for you to patent your product before someone else patents a similar one.

Another reason to patent an invention is to be able to license it to a company who will produce it themselves. You can do so by marketing your idea to companies within the same industry that might benefit from your invention.

To receive your patent, your invention must meet four requirements:

  1. It must be useful.
  2. It should be new or novel.
  3. It must be nonobvious, meaning your invention contains elements that are different from existing products and that an expert in the field could not have reasonably thought of your idea.
  4. Your patent should include full information about the invention, and others should be able to use this information to make your invention.

Types of Patents

To get a patent, you must file an application with the United States Patent and Trademark Office (USPTO). There are three types of patents available under 35 U.S.C. § 101 (Section 101):

These patents cover different types of inventions. Plant patents are for new and nonobvious plant strains you have invented. Design patents cover new and nonfunctional types of design. Utility patents are for new processes and products. Think carefully about your invention so you can be sure you're applying for the right type of patent.

Utility patents are most common. They include five categories:

  • A process or method for producing a useful result
  • A machine
  • An article of manufacture
  • A composition of matter
  • An improvement onan invention in one of these categories

To be eligible for a patent, your invention must fulfill two requirements:

  1. It must be a new invention
  2. It must be nonobvious

Your invention should also comply with 35 USC § 102. This means your invention should be novel. An invention is novel if it has never been used, sold, or known to the public. The exception to this rule is when you've disclosed your invention a year or less before filing for your patent.

35 U.S.C. § 103 establishes the nonobvious rule for patents. Even if your invention is novel, you cannot patent it if it is obvious based on prior art. If elements of your invention can be found in prior art, you won't be able to get your patent.

Finally, 35 U.S.C. § 112 lays out rules for specification or explaining your invention. Your application should fully explain how to use or create your invention. This is called enabling disclosure. A skilled professional should be able to read your enabling disclosure and use your invention without experimentation. Unnecessary experimentation includes:

  • Prior art
  • Your claims
  • Your invention's nature
  • Ordinary skill level
  • Predictability
  • The direction you have provided
  • Working examples

Your application should also include something called the best mode. The best mode describes your preferred usage for your invention.

The Patenting Process

Filing for a patent is not easy. It takes a lot of time—usually around three years—and effort. Nonprovisional patents require any information needed to understand your invention. This can include drawings, photographs, and technical information. It can take as long as 18 months to receive your first response from the USPTO. Approval can take more than two years.

Many applications get rejected. Luckily, you can appeal this decision. Appealing a rejected patent can add a year or more to the application process. This wait can be longer if filing for a patent in a popular field.

If you are approved for a patent, you will be entitled to several legal protections. Patents give you a monopoly over your invention. They prevent other people from making or selling your product. When someone infringes on your patent, you can file a lawsuit. This might result in injunctions and damages. Utility patents last 20 years. Design patents last 14 years.

Patentsdo have limitations. For instance, your protections don't begin until your patent is approved. Once approved, your protections begin retroactively at your application date. Anyone using your invention after this date, but not before, is liable. Tell people about potential liability by marking your product as patent pending. This will be replaced by your patent number after receiving approval.

You mustpay certain costs when filing for a patent. These include:

  • As of 2014, a $280 filing fee
  • A $720 examination fee
  • A $600 search fee
  • Maintenance fees to the USPTO during the life of your patent. These fees are charged at the 3.5-, 7.5-, and 11.5-year marks and cost $1,600, $3,600, and $7,400, respectively.

Some people choose to file a provisional patent application (PPA). This gives you an earlier filing date. It also gives you a year to file for your nonprovisional patent. Filing for this type of patent protects your rights and allows you to file for a full patent later on.

If you send in a PPA, you must include a cover sheet, a drawing of your invention, and a detailed description. Full patent applications require a list of your claims, a disclosure statement, a patent application declaration, and a summary.

Each country has different rules for patenting. However, patents usually grant the same rights. In Australia, the Patent Office in Canberra, also called IP Australia, grants patents. Patents granted by IP Australia last 20 years. They also give you sole ownership of your invention and allow you to sue for infringement.

Australia offers two types of patents:

  1. A standard patent
  2. An innovative patent, which only lasts eight years

The same criteria apply to Australian patents as United States patents, including patent eligibility.

Before filing for any patent in any country, do a prior art or novelty search. These searches will help you to find patents similar to your ownand will let you know if your idea is novel enough to be eligible for a patent.If you do find an invention similar to yours, you might need to adjust your so it's slightly different.

Non-Patentable Ideas

Certain ideas cannot be patented. This includes some ideas that comply with the novel and nonobvious requirements. Examples of ideas that are not eligible for patents include:

  • Processes performed through human power, including surgical procedures and exercises
  • Ideas that can only be used to break the law
  • Printed material
  • Inventions that do not require operation
  • Anything that occurs naturally, including known animal species and biological processes

If your invention falls into any of these categories, it might be challenged under Section 101 of the patent rules.

Section 101 Court Cases

Patent eligibility rules under Section 101 are well-established. However, several current Supreme Court Cases have the potential to solidify these rules further. This is especially true after the Alice v. CLS Bank Int'l and Mayo Collaborative Services v. Prometheus Labs decisions. Because many patents are invalidated under Section 101, these cases are extremely important, especially to those interested in software and life sciences.

One Section 101 case before the Court is Sequenom Inc. v. Ariosa Diagnostics Inc. The Federal Court ruled that Sequenom could not patent a prenatal genetic testing process. Sequenom is seeking to have this ruling overturned. Versata Development Group Inc. v. SAP America Inc. is focused on a pricing engine patent.

Other Section 101 cases before the court include:

  • Cloud Satchel v. Barnes & Noble and Vehicle Intelligence Safety v. Mercedes-Benz USA
  • McRO (Planet Blue) v. Bandai Namco Games
  • Intellectual Ventures v. Symantec
  • Thales Visionix v. USA

The case most likely to result in alterations to the Mayo/Alice Section 101 test is Sequenom. Sequenom's argument is that Section 101 limits are hard to understand and have stifled innovation, particularly in regards to research and discovery of natural processes. Some Circuit Court judges have stated that Section 101 is too broad and should not have applied to Sequenom's genetic testing process.

There is also some evidence that Section 101 is not being used properly. Since the Alice decision, 70% of federal court decisions involving Section 101 have ruled the patents invalid. Cases involving software, such as DDR Holdings v. Hotels.com, will hopefully allow the court to clarify Section 101 rules and make it easier to receive patents for software.

As these cases are decided, the future of patents and Section 101 rules will be straightened out. Many people believe that not broadening these rules will restrict U.S. competition in the growing fields of biotechnology and software development.

Overturning May and Alice

Innovators and investors are understandably impatient with the Section 101 rules for filing a patent. As such, certain groups have put forth statutes to overturn these patent rules. One group is the Intellectual Property Owners Association (IPO). Run by leading patent lawyers, the IPO has created an amendment they hope will make it easier to get patents for technology items.

This amendment would limit the use of the Section 101 rule applying to inventions that exist in nature or only in the human imagination. It would completely overturn the results of Alice, Mayo, and Bilksi. This amendment would also limit the court to using only the language in the statute instead of subject matter eligibility.

IPO's amendment also proposes removing the language that requires an invention to be new. This would allow someone other than the inventor to try to patent an invention.

Many people believe IPO is wrong to try to overturn Section 101 rules. The detractors of the IPO amendment claim that Section 101 rules have not stood in the way of innovation. New software continues to be invented, and companies are constantly inventing new business processes.

People also argue that these rules are not anything new that inventors must deal with. For instance, Bilski v. Kappos was decided nearly three decades ago. Those in favor of maintaining Section 101 argue that allowing anyone to patent anything would create chaos by unraveling 150 years' worth of patent laws. What is clear is that the Section 101 arguments won't be settled anytime soon.

Complicating Factors

There is a variety of complicating factors when it comes to patent laws. For example, some patent court cases are overturned due to indefiniteness.

In Tinnus Enterprises LLV v. Telebrands Enterprises, for example, three conclusions were reached regarding whether Tinnus's claims about filling water balloons were valid. Another case that hinged on indefiniteness—Eli Lilly v. Teva—hinged on the use of vitamin B12 in the patent claim.

When indefiniteness occurs, it is because the inventor has not fulfilled the specification requirement laid out in Section 112. When filing your patent, particularly for software, it is crucial that you use specific language. This narrows your invention's scope and reduces your patent's chance of being rejected.

Frequently Asked Questions

  • What Is a Patent?
    A patent is a way to protect your intellectual property. It grants you monopoly ownership of your invention. Patents also give you the right to sue people who use your invention illegally.
  • What Can I Patent?
    You can patent almost any invention. You can patent a plant species you invented or a new design, product, or process. You cannot patent something that exists only in nature or in the mind.
  • What Does it Cost to Patent an Invention?
    A regular patent application generally costs $80but might cost up to $280.
  • Should I Hire an Attorney?
    Yes. A patent attorney can be very valuable. Filing for a patent is difficult. Your first application could be rejected. Patents can also be invalidated due to a Section 101 challenge. An attorney can help you overcome these hurdles so that you can get the patent protections you need.

Ask an Attorney Your Patent 101 Questions

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