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.
In my experience, the aspect of U.S. patent law that most surprises inventors is that their own public use, sale or publication more than one year before a patent application is filed can preclude one from obtaining a U.S. patent. The standard is even more stringent when it comes to obtaining patent protection overseas because in many countries absolute novelty is the rule and any public disclosure prior to the filing of a patent application can prevent one from obtaining a patent. Depending on the circumstances, I often find it advisable for an inventor to 1) file a patent application and/or 2) have third parties sign a non-disclosure agreement (NDA), prior to disclosing his/her invention to others.
In addition to being new and not obvious, an invention must constitute patentable subject matter under 35 U.S.C. § 101. Outside of software and processes that can be performed in one’s head, inventions in most industries (e.g., electronic hardware, medical devices and pharmaceuticals) will usually readily qualify as patentable subject matter. The more difficult questions arise when the invention is a diagnostic method, a business method or a program that can be performed in someone’s head. The law on patentable subject matter in the United States is continually evolving, and next week, I will devote a multi-part series to what constitutes patentable subject matter.
Finally, the invention must be “useful.” In other words, the invention must have a specific, substantial and credible utility. In most cases, the utility requirement is readily met. The more difficult questions arise when the invention relates to a chemical or biologic for treating a particular disease and there is little or no experimental evidence showing that the chemical or biologic is useful for treating that disease.
In my experience, I have found that preliminary patentability opinions are often helpful to inventors in determining whether to invest the time and resources in filing a utility patent application. These opinions usually can be done at a fraction of the price of filing a patent application and generally consist of two phases: a search performed by a professional patent searcher and an analysis performed by a patent attorney advising the client on the likelihood of obtaining patent protection in view of the search results.
Finally, please note that the above discussion concerning prior art relates to patent applications filed before March 16, 2013. Due to a change in law, namely the enactment of the American Invents Act (AIA), the scope of “prior art” for patent applications filed on or after March 16, 2013 will differ. I hope to explore the AIA in a multi-part series on this blog later this year.
© 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.