A declaration issued by a government agency declaring someone the inventor of a new invention and having the privilege of stopping others from making, using or selling the claimed invention

Under Article I, Section 8, Clause 8 of the Constitution of the United States of America, Congress is empowered “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”.

A patent for an invention is the grant of a property right to the inventor.  The “patent” is not the idea itself, which many may possess, but rather “the right to exclude others from making, using, offering for sale, or selling” the invention.  It is important to note that it a patent does not grant it’s owner the right to make, use, offer for sale, sell, or import the invention.  Rather, a patent grants it’s owner the right to exclude others from doing so.

Thus, in deciding whether to file for a patent on your invention, you must first ask if you want to be able to make, use, or sell the invention (which would require you to obtain the consent of anyone who has a valid patent on the invention) or whether you want to acquire the right to prevent others from doing so.

Many people are somewhat surprised at the significant difference the word “exclude” has under the patent laws in light of the fact that patents can be obtained on improvements to other inventions.  For example, suppose that Inventor A develops a new Widget X and is granted a patent thereon.  Later, Inventor B determines that Widget X can be improved by adding a new feature, resulting in Widget Y.  Suppose then that Inventor B applies for and is granted a patent on Widget Y.  The seemingly odd result is that while Inventor B can prevent Inventor A from making Widget Y, Inventor A can prevent Inventor B from making both Widget X and Widget Y.  This is because as long as Widget Y falls within the scope of Inventor A’s patent, Inventor A has exclusionary rights that are superior to Inventor B’s rights.  This is true regardless of whether Inventor B has obtained a patent on Widget Y.

There are three types of patents:

  • Utility Patents – new and useful machines, articles of manufacture, or compositions of matter, or any new and useful improvement thereof (i.e., protects the functional aspects);
  • Design Patents – new, original, and ornamental designs for articles of manufacture (i.e., protects the aesthetic, non-functional aspects); and
  • Plant Patents – asexually reproduced and distinct and new variety of plant.

There are numerous criteria which must be satisfied before an inventor can receive a utility patent, perhaps the most important of which are that the invention must be useful (35 USC 101), novel (35 USC 102), and non-obvious (35 USC 103).

In general, an invention lacks novelty if: “(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention”. However, there are certain exceptions which may apply, including disclosures made 1 year or less before the effective filing date of the claimed invention or disclosures appearing in applications and patents.

A major substantive change to U.S. Patent Law went into effect on March 16, 2013. The U.S. Patent and Trademark Office (“USPTO”) has prepared the following videos which attempt to explain the changes to the law, and what these changes mean:

Even if the subject matter sought to be patented is not exactly the same as something already known (“prior art”), and involves one or more differences over the prior art, a patent may still be refused if the differences would be obvious.  The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be “non-obvious to a person having ordinary skill in the area of technology related to the invention”.  For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

It is also important to note that the right to exclude others under a patent is limited to the jurisdiction under which the patent issues.  For example, the owner of a United States Patent can not prevent someone in Australia from infringing the patent (unless of course the owner has also received an Australian patent).

Finally, while many people choose to prepare and file their own patent applications (see, e.g., the USPTO’s website on the patent process), the process is extremely complex and there are numerous procedural pitfalls for those unfamiliar with the process and requirements.  If you are interested in obtaining a patent on your invention, you should immediately contact a registered patent attorney (such as Mr. DiBuduo) or a registered patent agent for advice.

While there are some invention promotion or submission companies out there which promise low cost invention protection, many of those companies’ clients receive far less than what they have paid out.  Under the American Inventor’s Protection Act of 1999, these companies must disclose certain information about their success rate to you before you enter into a contract with them.