The Internet Encyclopedia (Volume 3)

P1: JDW

Bluhm WL040/Bidgoli-Vol III-Ch-02 June 23, 2003 16:14 Char Count= 0

Patent LawPatent Law

Gerald Bluhm,Tyco Fire & Security

Introduction 14

U.S. Patent Law 14

Constitutional Basis 14

How Does an Inventor Get a Patent? 14

How to Read a Patent 18

Protecting Patent Rights 19

Reasons for Obtaining a Patent 21

Types of Patents 21

Provisional Applications 21

Non-U.S. Patents 21

General Information 21

Differences Between the United States and

Other Countries 22

Conclusion 22

Glossary 22

Cross References 23

References 23

Further Reading 23

INTRODUCTION

This chapter introduces the fundamental concepts of

patent law, both in the United States and internation-

ally, with some focus on software and Internet-related

issues. Patents have been described as monopolies for

limited terms, in exchange for inventors disclosing how

their inventions are made or used. With the promise of

such monopolies, inventors are encouraged to invent and

thus reap the rewards made possible by the rights ac-

corded. Competitors must either obtain a license to make

or use a patented invention or discover new ways that

circumvent a patented invention as defined by the patent

claims.

Some have rejected the use of the word “monopoly”

to describe patents. Regardless of whether one uses the

word “monopoly,” certain rights are granted to the owner

of a patent: the right toexcludeothers from making, us-

ing, selling, or offering to sell the invention in the United

States, importing the invention into the United States,

or importing into the United States something made by

a patented process. What may not be obvious is that a

patent does not grant its owner the right to make, use,

sell, offer to sell, or import the patented invention. In

fact, many patented inventions are improvements made

on existing (and patented) work, and if made, used or

sold, they would constitute infringement of the earlier

patent.

U.S. PATENT LAW

Constitutional Basis

The U.S. Constitution grants to Congress the power “To

promote the Progress of...useful Arts, by securing for

limited Times to...Inventors the exclusive Right to their

respective...Discoveries” (U.S. Constitution Article I,

Section 8, Clause 8). In accordance with this power,

Congress has over time enacted several patent statutes.

In particular, in 1952, the present patent law, codified

under Title 35 of the United States Code (abbreviated

as “35 U.S.C.,” available on the Web at http://uscode.

house.gov/title35.htm), was enacted, although it has

been amended many times over the years.

How Does an Inventor Get a Patent?

The U.S. Patent and Trademark Office

Under the U.S. Department of Commerce, the U.S. Patent

and Trademark Office (USPTO; http://www.uspto.gov)

processes patent applications and ultimately issues or

grants patents. During the processing of an application

(a process known aspatent prosecution), the applica-

tion is examined by an examiner who is familiar with

the specific technology field of the invention described

in the application. Typically, the examiner will object to

the application because he or she feels that, when com-

pared with prior art (existing knowledge possessed or in-

formation accessible by those in the subject technology

field), there is nothing novel or unobvious about the in-

vention. Patent prosecution typically involves communi-

cations back and forth between the examiner and the

inventor (or the inventor’s patent attorney or agent) in

which the inventor or attorney clarifies for the examiner

how the invention is in fact novel and unobvious over the

prior art.

Inventors can represent themselves before the USPTO.

Alternatively, an inventor (or the assignee to whom the

inventor assigns ownership of an invention) may employ

an attorney or agent registered with the USPTO. Both

patent attorneys and patent agents have technical back-

grounds in some science or engineering field and have

taken and passed a registration examination administered

by the USPTO. In addition, patent attorneys have com-

pleted law school and are admitted to practice law in at

least one jurisdiction, whereas patent agents are not at-

torneys.

What Is Patentable?

An inventor may obtain a patent for “any new and use-

ful process, machine, manufacture, or composition of

matter, or any new and useful improvement thereof” (35

U.S.C.§101). In a landmark U.S. Supreme Court case

in which whether a live, human-made microorganism

could be patented was at issue, the Supreme Court un-

equivocally stated that “anything under the sun that is

made by man” is patentable (Diamond v. Chakrabarty,

1980).

14