Intellectual property laws in the U.S. are rooted in the Constitution. U.S. patent and copyright laws exist to promote and encourage the fruits of creativity without unduly restricting the development of further advances. The Constitution explicitly authorizes patent and copyright law by making it a mandate "to promote the progress of science and the useful arts." Patents are documents analogous to land deeds, insofar as they verbally describe a piece of property-here an invention instead of a parcel of land-and define the boundaries of what is owned and what is not.

Patent Specifics

Since they are empowered by the Constitution, U.S. patent laws are exclusively Federal; individual states cannot enact their own patent laws. This system is advantageous for the patent owner since there is only the one set of Federal laws governing patents, thus making patent rights more consistent and predictable than many other property laws.

The property rights granted to a patent holder are somewhat unusual in that they are all negative or exclusionary rights-that is, the patent owner has the right to exclude others from making, using, selling, offering for sale, and/or importing the claimed invention. Contrary to popular belief, a patent does not actually grant its owner the right to practice the claimed invention. Indeed, the patent owner may be prevented from practicing the claimed invention by patent law itself, such as when the patent is for an improvement to an invention covered in another patent, or by operation of other areas of law, such as if the patent is for a drug that does not have U.S. Food and Drug Administration (FDA) approval.

The duration of a patent is limited. A patent essentially grants a monopoly on the claimed invention to the patent owner and his licensees, and U.S. law is inherently monopoly-averse. Thus, U.S. patents are limited to 20 years from the date of filing the application with the Patent Office. In return for the limited monopoly over the claimed invention, the patentee donates the invention to the public after the term of the patent expires, making its use free to everyone. This quid pro quo is the basis for the U.S. patent system.

The patentee also has an obligation to teach the public how to practice the invention, and so the specification of the patent must be sufficiently detailed such that one of ordinary skill in the art to which the patent pertains may practice the invention without having to conduct undue experimentation and research. If the specification is not so detailed, the patent may be found invalid.

What is Patentable?

Several requirements must be met to obtain a patent. First, the invention must fall within the broad category of patentable subject matter. Second, the inventor must satisfy a list of patentability requirements. Finally, the inventor must avoid several statutory bars to patentability, which are codified in chapter 35 of the United States Code, or 35 USC.

What constitutes patentable subject matter includes any "process, machine, manufacture or composition of matter." Initially, this phrase was limited to mechanical devices, chemical compounds and methods of operation. Through judicial and legislative action, the meaning of these terms has been expanded over time to include methods of doing business, computer programs and biological organisms, in addition to traditionally patentable subject matter.

For an invention to be patentable, it must be novel, useful and non-obvious. To satisfy the novelty requirement, an invention must simply be unknown in the art. In other words, the invention must be "new." The second requirement, utility, has been limited through judicial action such that if even a modicum of usefulness is demonstrated, the requirement is met.

Finally, the invention must be non-obvious. Perhaps unsurprisingly, the definition of "non-obvious" has been twisted and shaped by the courts so as to not be immediately obvious to a non-practitioner of patent law. The legal definition of "non-obvious" has been developed by courts and seeks to determine what would have been obvious at the time the invention was made to a person of ordinary skill in the art. The standard requires viewing the invention at the point in time it was made-often years in the past-without considering any intervening technological advances, through the eyes of a fictitious legal entity having average skills in the relevant field at that time. As might be expected, such an analysis is fraught with the perils of considering inappropriate technology, imparting an inappropriately sophisticated level of technological skill to the fictitious legal entity, misgauging the field of technology as it existed in the past, and the like.

Even if an invention satisfies all of the previous requirements, the inventor may still not be entitled to a patent if he has run afoul of any one of a number of statutory bars. First, the invention must not have been abandoned, suppressed or concealed between the time of the conception of the invention and the filing of the patent application. In other words, the inventor is required to exercise due diligence in both completing the invention and pursuing patent protection.

Second, the invention must not have been used in public, sold, offered for sale, or described in a printed publication more than one year prior to filing the patent application. Academics must be particularly careful when publishing articles and presenting papers so as not to inadvertently disclose an invention and unintentionally risk losing potential patent rights. In the U.S., the patentee has a one-year grace period in which to file a patent application after public use or sale, but in almost all other countries, patent rights are lost immediately upon public disclosure or sale of the invention. Finally, the invention must not be the subject of a patent in a foreign country applied for more than one year prior to filing for a U.S. patent.

Protecting Your Patent

Once an inventor has generated their invention, the decision must be made as to whether to pursue patent protection. Several factors must be considered. First, it must be determined that the economic value of excluding others from practicing the invention at least warrants the cost of the patenting process. In other words, will the market share and/or licensing revenue afforded by the patent at least offset the patenting costs?

Next, a patentability search is typically performed to investigate the invention's novelty. A patentability search usually involves searching through the library of patents and published patent applications maintained by the U.S. Patent Office. While not comprehensive of all prior art publications everywhere, a patentability search allows the patent applicant to gauge the prior art available to the patent examiner. If the same (or a very similar) invention is uncovered at the search stage, the inventor has the opportunity to further develop his invention to surpass the prior art. Searches typically cost between $1000-$2000.

Once the decision has been made to seek patent protection, the inventor must decide which type of patent protection to pursue. The four types of patent applications are provisional, utility, design and plant. Provisional patent applications serve as placeholders and establish a priority date for an inventor for up to one year. If one of the statutory bars is approaching (e.g., the inventor published a paper describing the invention 51 weeks earlier), filing a provisional application will secure a filing date and prevent the statutory bar from foreclosing all patent rights. A provisional application will never mature into a patent or grant any patent rights, however, as it only acts as a placeholder for one of the other types of patent applications.

Of the remaining types of patents, the utility patent is by far the most common. It relates to an invention of a useful method, device or substance, and is what most people mean when they refer to a patent. Design patents protect the non-useful aspects of a distinctive design-for example, the shape of a lamp. Design patents cover a term of 14 years, rather than the 20-year term of a utility patent. Plant patents protect certain asexually reproducing plant species.

Pay to Play

The patent process-from initial application to issuance-currently averages about three years, although the process can take significantly longer for inventions in certain technological fields. The costs incurred during the application process can be significant. In addition to the application fees payable to the U.S. Patent Office, fees for a patent attorney to prepare and file an application can run $5000-$8000 for a simple mechanical device, and up to $10,000-$15,000 or more for complex inventions and chemical compounds.

Of course, these estimates can vary greatly depending on the field of technology, the complexity of the invention, the experience of the attorney and the market in which the attorney practices. Once the application is filed, additional fees and costs may be incurred during processing. Typically, the Patent Office will reject some or all claims upon initial examination. An applicant must then respond by amending the claims, arguing their patentability, or, as often happens, offering some combination of argument and amendment. This back-and-forth process may be repeated several times.

Once an application is allowed by the Patent Office, an issue fee is due before the application can be issued as a patent. Additionally, maintenance fees are due at three points during the term of the patent to keep it in effect for the full 20-year term.

Once a patent has been issued, the inventor has the right to prevent others from making, using, selling, offering for sale or importing the claimed invention. This right is assignable as well as transferable by exclusive or non-exclusive license. The rights granted by a patent are enforceable against infringers through injunction, compensatory damages, royalties and/or punitive damages. Thus, a patent is much like a land deed in that it defines and protects an invention from "trespassing" infringers.

For more information regarding patent law, contact the author at Sommer Barnard PC, One Indiana Square, Suite 3500, Indianapolis, IN 46204; (317) 713-3445; fax (317) 713-3699; e-mail jbrannon@sommerbarnard.com ; or visit www.sommerbarnard.com.