For Inventors: Patenting Process
- A Brief History of Intellectual Property Protection in the United States
- A Patent Defined
- Types of Patents
- Patent Applications
- Length of Patent Term
- What Is Patentable?
- Examples of Patent Strategy
- Patent Protection Outside the U.S.
- Length of Prosecution
- Cost of Prosecution
A Brief History of Intellectual Property Protection in the United States
"The Congress shall have 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"
—United States Constitution,
Article I, Section 8, Clause 8
The Framers of the U.S. Constitution felt so strongly about protecting the rights of inventive citizens that the establishment of a patent system is the eighth power granted to the legislature (following the powers to levy taxes, borrow money, regulate foreign commerce, establish rules governing naturalization and bankruptcy, coin money, punish counterfeiters, and establish post offices). In fact, this power is listed before the powers to create and maintain a military, to declare war, or to punish acts of piracy on the high seas.
To determine how much consensus there was on this issue, one needs look no further than records of the late 18th Century. Or perhaps to the lack of records. There is no recorded debate on the inclusion of an intellectual property rights provision in the U.S. Constitution. Clause 8 was accepted without a dissenting vote. In the Federalist Papers, in which Alexander Hamilton, James Madison, and John Jay defend the Constitution as written, Madison simply states
The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress. (Federalist No. 43)
Another testimony of how important this topic was, and to how much everyone was in agreement is how quickly legislation was enacted. On 25 January 1790, early in the second term of the First Congress, the House of Representatives appointed a committee to draft a patent statute. The committee reported back with a proposed statute on 17 February 1790. In less than one month, the bill was reviewed, amended, and approved by the full House. It was sent to the Senate on 11 March 1790. The Senate passed the bill (with twelve amendments) and returned it to the House on 30 March 1790. On 3 April, the House approved eleven of the amendments and sent it back to the Senate on 5 April 1790. The Senate voted to pass the returned bill that same day, and President Washington signed it into law on 10 April 1790. The patent statute went from committee appointment to Presidential signature in 76 days! As a point of reference, Rhode Island ratified the Constitution and joined the United States nearly two months later, on 29 May 1790.
The law empowered a committee of three to determine if an invention had sufficient merit to be granted a patent. Two of the three committee members had to agree for a patent to be issued. The original committee, the Commissioners for the Promotion of Useful Arts, consisted of the Secretary of State (Thomas Jefferson), the Secretary of War (Henry Knox), and the Attorney General (Edmond Randolph). Three patents were granted in the United States in 1790, with the first (X000001) being issued on 31 July to Samuel Hopkins of Philadelphia. Mr. Hopkins had developed a new apparatus and process for making potash and pearl ash (used in the manufacture of glass and soap, among other things).
A Patent Defined
A patent is a grant of right to exclude others from making, using, offering for sale, or selling the invention within the United States, U.S. territories, or U.S. possessions. It grants no rights to make, use, or sell the invention to the patent holder—it simply denies those rights to others. It is, in effect, a license to a monopoly for a limited time.
Types of Patents
There are three types of patents in the United States:
- Utility Patents cover new and useful processes, machines, articles of manufacture, or compositions of matter. They also include improvements to existing processes, machines, articles of manufacture, or compositions of matter.
- Design Patents cover new, original, and ornamental designs for an article of manufacture.
- Plant Patents cover new plant varieties.
Patent Applications
In the United States, the patent system operates on a first-to-invent basis. That is to say, if Inventor A can prove that she discovered XYZ before Inventor B, she can be granted a patent, regardless of when patent applications were filed. Most of the rest of the world operates on a first-to-file system. In other words, it doesn’t matter when Inventor A or B made their respective discoveries. All that matters is the date and time stamp on their patent applications, with the patent (assuming one is granted) going to the earliest filer.
While the U.S. system is arguably a fairer system, it unintentionally removes some of the urgency to file a patent application. It allows the inventor more time to collect corroborating data and to work out the bugs of a discovery before submitting it to the Patent Office, but this system also allows more time for someone else to develop the same, or similar, ideas and apply for a patent, thereby ruining the first inventor’s chances of ever receiving foreign patent protection.
To counter this unintended consequence, the patent statutes were modified in the 1990s to include a Provisional Patent Application. The Provisional application serves to secure a filing date without requiring a complete patent application. An inventor needs to show his or her invention in detail, but none of the formal requirements are in place. In fact, a Provisional Application will never be reviewed unless an issue arises surrounding the actual timing of an inventive step.
A Provisional application is valid for twelve months. After this time, the application expires and the inventor either needs to file a formal (non-Provisional) patent application, or abandon pursuit of intellectual property rights in the invention.
A Provisional Patent Application may not be filed on a Design Patent.
While a Provisional Patent application will never be reviewed on its merits, the purpose of a formal—or non-Provisional—Patent application is to be examined and found worthy of receiving patent protection. A formal application will contain all relevant information needed to allow a patent examiner to make an informed decision on whether to grant or deny a patent. It will include a detailed description of the invention, specific claims of what the invention embodies, information about the inventor(s), and every reference the inventor used to arrive at the inventive step.
Once submitted, a formal patent application will be reviewed for completeness. If any forms or materials have been omitted, or improperly completed, the applicant will be notified. If everything appears to be in order, the application will be sent to an examiner deemed competent to review the subject matter of the invention. Due to the volume of applications submitted, it may easily be three, or more, years before an application is examined in detail for validity and patentability.
The examination process is fairly straightforward. The examiner will study the reference materials provided, and occasionally discover additional relevant material. She will review the application and consider the merits of each claim. Questions will be asked. Claims will be challenged—some may be allowed, while others may be stricken down. This back-and-forth exchange between inventor and examiner may take several years, and may result in one or more claims being allowed (found to be patentable), or it may result in all claims being rejected (found not to be patentable). Often, the results are mixed—with some claims being allowed, and some claims being rejected.
If any claims are allowed, an issuance fee is paid and a United States Patent will be granted.
Length of Patent Term
Once a Utility Patent issues, it remains in force for a limited time. The length of that term is 20 years from the date of the first patent filing related to the invention provided, of course, that the patent holder pays periodic maintenance fees. There are exceptions to this rule. On occasion, extensions (usually to correct for administrative delays) may be granted.
Utility Patent applications filed before 8 June 1995 have a term of 20 years from earliest filing date, or 17 years from date of issue, whichever is longer.
A Design Patent has a term of 14 years.
What Is Patentable?
Patents may be obtained on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.
In addition, three tests must be passed. They are the tests of usefulness, non-obviousness, and novelty.
- Usefulness: to be patentable, an invention has to be useful. A machine that doesn’t perform its intended function, a new material that doesn’t do anything, or a meaningless process are examples of inventions that would fail this test.
- Non-Obviousness: to be patentable, an invention has to possess something surprising. It has been called the “inventive step,” or the “Aha! Moment.” In other words, at the time of the invention, experts in the field—or those “skilled in the art”—couldn’t have arrived at the same conclusions given the knowledge available at the time.
- Novelty: to be patentable, an invention has to be new. If someone else has previously disclosed, or reasonably predicted, the material, it does not qualify for a patent.
Examples of Patent Strategy
Example #1 File Formal Application
Example #2 File Provisional Application before Formal Application
Patent Protection Outside of the United States
If patent protection is desired outside of the United States, a similar but separate process must be followed. Applications may be filed directly with each country in which patent protection is desired, but this would require lengthy (and costly) prior art searches and patent prosecutions. A much simpler method exists thanks to the Patent Cooperation Treaty (PCT).
The Patent Cooperation Treaty is an agreement between more than 120 countries, including the United States, and it provides a uniform system for filing international patent applications. One files an application with the World Intellectual Property Organization (WIPO), and any subsequent applications receive the benefit of that filing date. Upon the expiration of the PCT application 18 months after filing, patent applications are automatically filed in as many, or as few, of the member states as desired. This process is known as “entering the national phase.”
In the 18 months of a PCT application’s pendency, an international patent search is conducted. In other words, WIPO will check the novelty of the patent claims. If the invention has previously been disclosed in public in any manner at all, foreign patent rights are forfeited. WIPO will also publish—or make publicly available—the application. Anyone wishing to may raise objections for valid reasons.
Assuming that the application survives the prior art search and the public comment period, it will enter the national phase and begin examination in individual national patent offices around the world. The European Union currently has a combined Patent Office (the EPO) that conducts patent examinations. If allowed by the EPO, an application will automatically issue in all selected member states.
Example #3 Formal U.S. and PCT Applications Filed Concurrently
Example #4 U.S. Chosen as National Phase Country
Length of Prosecution
As with anything, the complexity of the patent application determines the length of time to prosecute it to completion (final rejection or acceptance). A simple device with a straightforward purpose may zip through the Patent Office in a year, or two, while a new method for diagnosing and treating osteoporosis may wait ten years, or more, before learning its fate.
Because of the lengthy period of prosecution, it is vitally important that an inventor named on a patent application inform OTT if she moves, or changes telephone numbers or e-mail addresses.
Cost of Prosecution
Again, the complexity of a patent application is a major factor when determining the final cost of patent prosecution. Drafting the application, filing the application, and replying to the patent examiner’s questions and rulings may run into the tens of thousands of dollars. However, a typical patent application in the United States might only cost $10,000 - $15,000, and often considerably less. A typical PCT application will cost between $7,000 and $10,000. Each country selected for the National Phase will also add between $10,000 and $15,000 to overall patent prosecution.
Disclosure Forms
Invention Disclosure Form
A document that embodies the date of conception of, a complete description of, and all potential contributors to an invention being disclosed to the University of Rochester.
Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable work being disclosed to the University of Rochester.
Software Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable computer soft-ware program being dis-closed to the University of Rochester.