Patenting 101

Broadly speaking, a patent is a detailed public disclosure of an invention given in exchange for the right to exclude others from making, using or selling the invention for the duration of the patent’s term.  Sounds simple, right?  But the devil is in the details.  Read on.

What Is A Patent Under the Law?

Under the law, a patent must be three things:

The invention must be directed to patentable subject matter. Under 35 U.S.C. Section 101, only certain types of subject matter are patentable.  Patentable inventions must be directed to:

• Processes (e.g., methods of doing or making something),
• Machines (e.g., devices, apparatus, etc.),
• Manufactures (e.g., something made by an invention or the product produced by a method), or
• Compositions of matter (e.g., drug or beverage formulations, plastic, etc.).
• The invention must be novel. Under 35 U.S.C. Section 102, the invention must be new, meaning it does not already exist in the world.

The invention must not be obvious. Under 35 U.S.C. Section 103, the invention cannot be obvious to a person having ordinary skill in the art.

Are There Different Types of Patents?

There are several different types of patents. Your invention will determine the most appropriate type to use.

Utility patents are for useful processes, machines, manufactures or compositions of matter.

Design patents are limited to the specific design of an invention. Figures or computer-drawn images, rather than words, are used to describe the invention’s design.

Plant patents are limited to new types of plants.

Patent Requirements

In order to obtain a patent, the application must disclose the invention and satisfy three requirements.  Each requirement is separate and distinct from the other. For example, an invention may be described without the disclosure being enabling; conversely, a disclosure could be enabling without describing the invention.

Written Description. The invention must be described clearly in words. This requirement can be satisfied if the application describes what the invention is, identifies all of the relevant parts, and explains how the device works.

Enablement. The information disclosed in the application must be enough to enable someone skilled in the relevant art as to how to both make and use the invention.

Best Mode. The application must contain at least one best mode for making or using the invention. This requirement prevents inventors from disclosing only what they know to be their second-best embodiment, while retaining the best for themselves.

Patent Search

Before filing a patent application, a patent search is highly recommended to determine what other devices, methods, etc. that are similar to your invention already exist. A good search replicates what patent examiners do when they examine your patent application for patentability. Going through existing databases of foreign and domestic (U.S.) patents and applications can give you a good idea of how novel and nonobvious your invention really is.

A Patent Attorney Can Help

Inventors may file their own patent applications, but it is very difficult to navigate the application process if you are unfamiliar with it. Patent searching is also daunting because there are millions of patents and applications to search through.  A qualified patent attorney understands the U.S. Patent Office, and the application and examination processes, and can help you develop a patent application that satisfies the patent requirements under the law.

If you have questions concerning the preparation and filing of a patent application, patent searching, or the patent application or examination process, please contact Parsons & Goltry at patentsavers.com, or by calling 480-991-3435.