1. What rights does a patent give you?

Under United States law, a patent is granted by the Federal government, exclusively.  There are no similar state or local patent rights.  It is very important to understand that a patent only provides one right – the right to exclude others from practicing the claimed invention. Hence, it is often referred to as a negative right because it does not grant the inventor the affirmative right to practice his/her own invention.  More specifically, there may be pre-existing broad patents held by others that if enforced would prohibit a patent holder from practicing his/her own invention.  For example, until it expired on December 11, 1997, any process using genetic engineering in the United States required a license from Stanford University to US Patent 4,237,244 (the Cohen-Boyer patent.)

2. What is patentable?

Broadly and theoretically stated, any human creation that is novel, useful, and non-obvious may be patented in the United States. Other countries may take a more limited view of what is patentable (often referred to as “patentable subject matter”).  For example, in many countries, methods for treating or diagnosing human (and sometimes animal) illness are deemed not patentable for reasons of public policy.

Basic laws of nature, principles of physics, natural substances, abstract ideas are not human creations and hence are not patentable.  However, the discovery of a new law of nature or principle of physics may lead to new applications of the law or principle where the application is patentable.  Some examples of patentable subject matter include a new article of manufacture, a machine, a new composition of matter, a new process or even a new use of an existing composition of matter.

  • The novelty requirement means that your invention must be different from what is already known to the public. Any difference, however slight, will suffice.
  • The non-obvious requirement is a more subjective/theoretical test.  Briefly stated, a legal determination of obviousness is a theoretical assessment of whether or not a (theoretical) person of skilled in the art having all possible references available to that person would be able to practice the claimed invention without engaging in undue experimentation.
  • The use requirement is perhaps the easiest to achieve.   Simply stated, the patent application must merely demonstrate that the claimed invention has an industrial application.

3. Types of Patents Available in the United States

Regardless of the patent type, the requirements remain the same.  The claimed subject matter must be new, useful and non-obvious.

a) Utility Patent

A utility patent can be granted for any process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. This is the most common type of patent.

b) Design

A design patent can be granted for any new, original, and ornamental designs for an article of manufacture (that is, the unique, ornamental, or visible shape or design of a non-natural object, even if only on a computer screen)

c) Plant

A plant patent can be granted for asexually reproducing a distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

4. The Patent Application & Process