Patent

:This article relates to the intellectual property right. A land grant is also called a patent.

Patent prosecution

Typically, an application for a patent is prepared by a professional agent known as a patent attorney or patent agent, who files the application with a patent office. The person applying for a patent generally does not need to be the inventor who created or authored the invention. However, in the United States a patent application must be filed in the name of the actual inventor or inventors, although the application can be assigned to another party, such as the employer of the inventor.

Related Topics:
Application for a patent - Professional - Agent - Patent attorney - Patent office - United States

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At the patent office an examiner will consider the invention's patentability and whether it is otherwise eligible for grant. The entire legal process of examination and obtaining grant is called patent prosecution.

Related Topics:
Examiner - Patentability - Patent prosecution

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Some countries do not formally review patent applications while others accept the determination of other patent offices. For example, some smaller countries, such as Belgium and the Netherlands http://www.bie.nl/en/algemeen/octrooirecht/octrooien_als_beschermingsmiddel/de_aanvraag_procedure/default.asp?Loket=0 grant a patent almost automatically or with minimal examination. This may be contrasted with the strict requirements of the United States Patent and Trademark Office, the Japanese Patent Office and the European Patent Office.

Related Topics:
Belgium - Netherlands - United States Patent and Trademark Office - Japanese Patent Office - European Patent Office

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The patent prosecution process typically involves:

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• Filing a patent application by inventor or applicant.
• Formalizing of application (signatures by inventors or applicant), often filed at the same time as the application.
• Establishing of a prior art search report by the patent office.
• Publication at 18 months from earliest claimed filing date. US applicants can request non-publication if the application is not filed outside the United States.
• Review by the examiner or the Examining Division, including communication with applicant to modify the claim language, if needed.
• Grant of the patent (if it the patentability criteria are met) and publication of the issued patent.
• Opposition period, during which anybody (e.g., other companies) can challenge the patent grant. This is not applicable for the US where other procedures are available, namely the reissue and reexamination procedure. In several countries, oppositions can be filed before the grant of the patent.

The specifics of the examination process include:

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• Verifying that claims are for a patentable subject matter.
• Ensuring unity of invention, since each patent application can only be for one invention (called "restriction" practice in the United States).
• Formalities. Ensure that the drawings, description, and claims meet all formal requirements.
• Utility or industrial applicability.
• Novelty (newness)
• Non-obviousness or inventive step.

Different patent systems use different terms and different standards for these concepts, of which the most important probably are: patentable subject matter, novelty, non-obviousness and sufficient disclosure.

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Patentable subject matter

The standard for what is patentable subject matter in the United States is "anything under the sun made by man" that is new (novel), useful, and non-obvious. Similar standards for patentability apply in Japan and the European Patent Office (EPO).

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Under US law, a claimed invention is deemed useful if, at the time of filing, it is capable of providing some identifiable benefit (to a person of ordinary skill in the art of the invention). The benefit must be specific, substantial, and practical.

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Generally speaking, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.

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A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, sports techniques and the like. Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, DNA, RNA, etc.

Related Topics:
DNA - RNA

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However, laws of nature, physical phenomena, and abstract ideas are not patentable. Software inventions implementing algorithms are not patentable for this reason unless it produces a "useful, concrete, and tangible result" (US law) or technical effect (European law). The US standard for the patentability of software is more liberal than that in Europe. Japanese patent law lies between the US and Europe.

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The patentability of software (and business methods) is quite controversial from a global perspective. Case law in the United States permits patents for software and business methods. Yet computer programs as such are not patentable in Europe, although some inventions that use software can be patented in Europe.

Related Topics:
Patentability of software - Business method - Case law - Some inventions that use software can be patented in Europe

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Patents related to natural compounds (e.g. items found in rainforests) as well as medicines, medical treatment techniques, and genetic sequences are also controversial. There are significant country-by-country differences in handling these subject matters. For example, in the United States you can get a patent for a surgical method but you cannot exclude physicians from performing the surgical method.

Related Topics:
Rainforest - Medicine - Genetic sequence

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Novelty

Novelty relates to whether something existed before its invention by the applicant or was disclosed to the public before the patent application's filing date. For public disclosures of the invention by the inventor, the United States and Canada permit a one year grace period, but most other countries provide no grace period, instead requiring "absolute novelty".

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An invention is not novel if there is a previously existing or disclosed device or process that includes all of the elements of the claimed invention. Identifying such "prior art" by the patent examiner is accomplished by a search of literature (technical journals, published patent applications and issued patents, etc.) that predate the filing date of the particular patent application.

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Non-obviousness or inventive step

:Main articles: Non-obviousness (patent) and Inventive step.

Related Topics:
Non-obviousness (patent) - Inventive step

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Even if an applicant's claim for an invention is novel (i.e. not taught by a single prior art reference), a patent can still be denied to the applicant if the claimed subject matter would have been obvious to someone else skilled in the technical field of the invention. The purpose of forbidding patents on obvious technologies is to prevent a person from obtaining exclusive rights to what is effectively already in the possession of the public, even if documentation of the exact form of the applicant's embodiment happens to be lacking.

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Accordingly, obviousness asks the question whether all previously known technology related to the invention would teach a "person having ordinary skill in the art", e.g. someone who does the type of things relating to the technical field of the invention, how to make the invention. Many patent applications in the United States, Europe and Japan are initially rejected as being obvious.

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The standard of obviousness and its application are more subjective and controversial than that of novelty. If the requirements are set very high, virtually nothing is patentable. Similarly if the requirements are very low, all kinds of trivial inventions can receive patents.

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Generally, the patent laws make it difficult for patent examiners to employ hindsight reasoning in rejecting a claim as obvious, by requiring some teaching that would motivate a person of ordinary skill in the art to modify the technology found in the prior to arrive at the claimed invention. In the United States, objective evidence or secondary considerations of non-obviousness can overcome a proper obviousness rejection. Such secondary considerations can include unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts.

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As a practical matter, during examination the patent examiner will attempt to locate two or more references that when combined show all of the features of the claimed invention and indicate that one of ordinary skill would make that combination.

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The threshold for the obviousness or inventive step standard can be particularly ambiguous in genus-species situations. For example, if an inventor finds two species of a particular genus, e.g. two particular chemical compositions out of 10,000 in the broader genus, should the inventor be entitled to a patent on the entire genus? Further, if someone has discovered the genus already, but not isolated any of the species, are the species obvious in light of the genus? Under US law, the species may still be patentable if they produce results that are unexpectedly different from those of other previously known members of the genus.

Related Topics:
Genus - Species

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For example, suppose a software inventor unveils the quicksort sorting algorithm to the world but only discloses it using integers (this is the species). Can someone else then obtain a patent on an "improved" quicksort suitable for use on any partially ordered set (this is the genus)? Under US law, this is not a question of obviousness since a claim to the genus lacks novelty as the species is known.

Related Topics:
Quicksort - Partially ordered set

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Finally, in spite of all precautions, some patents still give a general impression of triviality. An example is given by the "combover" patent ({{US patent|4,022,227}}, filed December 1975), which has also been awarded the 2004 Ig Nobel Prize in engineering for its apparently unintentional ridiculousness.

Related Topics:
1975 - 2004 - Ig Nobel Prize - Engineering

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