Last December, I wrote a series of posts about what was – and remains – a hot topic in patent law: patentable subject matter under 35 U.S.C. § 101. The law on patentable subject matter often boils down to whether the invention is so abstract or such a product of nature that the invention is not patent eligible even if it meets the other statutory requirements of being new, not obvious and useful. Since those posts, the Supreme Court has issued another decision further limiting patentable subject matter in Mayo Collaborative Servs. v. Prometheus Labs., Inc. I believe that patent eligible subject matter is going to continue to be a thorny issue for many software, medical diagnostic and biotechnology inventions. However, I believe that in the majority of cases involving mechanical devices, medical devices, and new chemical compositions, patent eligibility under § 101 is going to be a non-issue, that is most inventions in these fields will readily qualify under § 101. [Read more...]
Patentable Subject Matter Under 35 U.S.C. § 101: Part 2 – Application in the Software and Life Science Fields
This post is the fourth in a series written by Nashville attorney Shane Cortesi on patent protection.
As I mentioned in my previous post on patentable subject matter under 35 U.S.C. § 101, the law in this area has been in a state of flux over the last few years, especially in the case of process patents. This week, I’ll discuss recent § 101 cases in the software and life science fields. The common theme in both fields is that enlisting the help of a creative patent attorney may increase a patent applicant’s chance of meeting the patentable subject matter requirement. [Read more...]
This post is the third in a series written by Nashville attorney Shane Cortesi on patent protection.
As I mentioned in my earlier article concerning the requirements for obtaining a utility patent in the U.S., in addition to being useful, novel and not obvious, an invention must constitute patentable subject matter under 35 U.S.C. § 101. In this article, I will briefly discuss the historical context of the patentable subject matter requirement. Next week I will discuss the application of the requirement in two fields where patent eligibility under § 101 is commonly an issue: software and biotechnology. [Read more...]
This post is the second in a series written by Nashville attorney Shane Cortesi on patent protection.
As I mentioned in my previous article where I provided an introduction to patent protection in the U.S., there are 3 types of patents: utility patents, design patents, and plant patents. This article deals with the requirements for the most common type of U.S. patents, utility patents.
To obtain utility patent protection in the U.S., an invention must be new and not obvious in light of the prior art. “Prior art” includes publications and patents published before the inventor invented his invention, certain patent applications filed before the Applicant’s date of invention, and public use and public knowledge before the inventor invented his invention. In addition, a sale, public use, or publication by anyone (even the inventor himself) more than 1 year prior to the date the inventor filed his patent application can prevent an inventor from obtaining a patent. Finally, in some cases, the granting of a foreign patent before an inventor filed his U.S. application and the prior invention of another in this country before the inventor invented the invention himself can prevent an inventor from obtaining a patent. [Read more...]
This post is the first in a series written by Nashville attorney Shane Cortesi on patent protection.
Patents are important to companies for at least two reasons. First, patents held by the company can serve as barriers of entry in preventing competitors from introducing similar products. Second, patents held by third parties can prevent the company from introducing a product or, potentially, even entering a market altogether.
The most common type of patents are utility patents. Utility patents are by far the most common type of patents granted in the U.S. and protect useful processes, machines, articles of manufacture, and compositions that are new and not obvious. For a further discussion of these requirements, see my article on the requirements for obtaining a utility patent in the U.S. Types of inventions that are commonly protected by utility patents include medical devices, pharmaceuticals, machines and electronics. In addition, in some cases, it is possible to patent the use of software-based inventions. Unless certain exceptions apply, once issued, a utility patent will remain in effect until 20 years from the filing date of the first non-provisional application that gave rise to the utility patent.
Another type of patents are design patents. Design patents protect new, original, and ornamental designs. In general terms, design patents protect the way an article looks. If the design of an article is primarily dictated by the article’s function, a design patent probably is not the appropriate form of protection. Subject matter that potentially can be protected by design patents includes things like furniture (e.g., leg lamps), jewelry, and even potentially the shape of electronic devices. Design patents remain in effect until 14 years from the date the patent issued.
The third and final type of patents are plant patents. Plant patents are granted to those discovering and asexually reproducing a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. Plant patents form a small percentage of the issued U.S. patents. Like utility patents, unless certain exceptions apply, once issued, a plant patent will remain in effect until 20 years from the filing date of the first non-provisional application that gave rise to the plant patent.
In the United States, all three types of patents are granted by the federal government. Moreover, as opposed to granting one the right to practice an invention, patents grant one the right to exclude others from practicing an invention. In other words, while a patent may be used to block others, the granting of a patent does not mean that the inventor himself is free to practice the invention without infringing a patent of an earlier inventor. If you are concerned about patents held by third parties, a freedom to operate opinion, obtained from an attorney, may help alleviate some of your concerns.
© 2011 Shane V. Cortesi — This article is for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.