In order to get a patent, an invention must meet three requirements: (1) it must be useful; (2) it must be new; and (3) it must not be obvious. I’ll give a brief, brief, brief overview of these areas. In the future we will delve into this in a lot more detail.
The Patent Act describes these as follows:
35 U.S.C. § 101 deals with utility/subject matter, and seems fairly basic: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…”
35 U.S.C. § 102 deals with novelty, and is more complicated. Novelty deals with a single prior art reference that teaches all of the elements of the claimed invention. Furthermore, the Patent Office does not like it when people sit back and don’t file for a patent, so there are time requirements that can kill novelty.
102(a) says that if there is public knowledge or use by others in the United States, or a publication or patent issued anywhere in the world prior to the date of invention, the invention is not novel.
102(b) says that if there is a patent obtained or a publication anywhere in the world more than one year before the critical date (filing date), or if there is a public sale or use anywhere in the United States more than one year before the critical date (filing date), the invention is not novel.
102(c) says that if the inventor intentionally abandons the invention, it is not novel.
102(d) says that if the inventor files an application in a foreign country for the same invention more than 12 months before an application was filed in the United States (six months for design patents), and the foreign patent issued before the United States patent was filed, the invention is not novel.
102(e) creates “secret” prior art. Because patent applications are kept secret, there may be prior art out there by another person that you are not aware of when you file a patent application. When the patent is published or issued, it acts retroactively as prior art. This is a complicated area, so I’ll leave it at that for now.
102(f) says that if the “inventor” did not invent the invention, it is not novel.
102(g) creates a category of prior art when the same invention is made by another who did not abandon, suppress, or conceal the invention. Usually this leads to an interference, whereby the first inventor is determined.
35 U.S.C. § 103 deals with obviousness. Basically, if your invention is obvious to one of skill in the art, you can’t get a patent. For example, if some invents a red chair and gets a patent on it, you would not be able to get a patent for a blue chair because it would be obvious. That’s a very basic example, but you get the idea. This section differs from section 102 in that you can combine multiple prior art references to prove an invention is obvious.
So when does this come up? In general, either (1) when the patent is being examined (or re-examined) by the Patent Office, or (2) during litigation. In litigation, typically if you bring an infringement suit against someone else, they will counterclaim that your patent is invalid under section 102 or 103.
The U.S. Patent and Trademark Office offers a great glossary of patent terms.
The Patent Act describes these as follows:
35 U.S.C. § 101 deals with utility/subject matter, and seems fairly basic: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…”
35 U.S.C. § 102 deals with novelty, and is more complicated. Novelty deals with a single prior art reference that teaches all of the elements of the claimed invention. Furthermore, the Patent Office does not like it when people sit back and don’t file for a patent, so there are time requirements that can kill novelty.
102(a) says that if there is public knowledge or use by others in the United States, or a publication or patent issued anywhere in the world prior to the date of invention, the invention is not novel.
102(b) says that if there is a patent obtained or a publication anywhere in the world more than one year before the critical date (filing date), or if there is a public sale or use anywhere in the United States more than one year before the critical date (filing date), the invention is not novel.
102(c) says that if the inventor intentionally abandons the invention, it is not novel.
102(d) says that if the inventor files an application in a foreign country for the same invention more than 12 months before an application was filed in the United States (six months for design patents), and the foreign patent issued before the United States patent was filed, the invention is not novel.
102(e) creates “secret” prior art. Because patent applications are kept secret, there may be prior art out there by another person that you are not aware of when you file a patent application. When the patent is published or issued, it acts retroactively as prior art. This is a complicated area, so I’ll leave it at that for now.
102(f) says that if the “inventor” did not invent the invention, it is not novel.
102(g) creates a category of prior art when the same invention is made by another who did not abandon, suppress, or conceal the invention. Usually this leads to an interference, whereby the first inventor is determined.
35 U.S.C. § 103 deals with obviousness. Basically, if your invention is obvious to one of skill in the art, you can’t get a patent. For example, if some invents a red chair and gets a patent on it, you would not be able to get a patent for a blue chair because it would be obvious. That’s a very basic example, but you get the idea. This section differs from section 102 in that you can combine multiple prior art references to prove an invention is obvious.
So when does this come up? In general, either (1) when the patent is being examined (or re-examined) by the Patent Office, or (2) during litigation. In litigation, typically if you bring an infringement suit against someone else, they will counterclaim that your patent is invalid under section 102 or 103.
The U.S. Patent and Trademark Office offers a great glossary of patent terms.
1 comment:
Thanks for posting thiss
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