Patentability: Does your invention meet the letter of the law?


In the United States Title 35 of the United States Code U.S.C. governs the intellectual property right to patent an invention.  The right to a patent is actually unique in law as it provides for one of the very limited occasions where the government will impose what is considered in the legal world as a negative right.  A patent actually does not afford an inventor a specific right as much as it operates to restrain the right of another.  In the case of a patent the right that is restrained is the right of all others to sell, manufacture or distribute the patented invention without the approval and often compensation of the holder of the patent.

The legal jurisprudence behind intellectual property, such as patents, as an area of law is to provide incentive for innovation.  The government acknowledges the burden and risk associated with the innovative process, therefore they want to reward and incentivize those individuals that provide such value to society.  The following is an outline of the legal requirements to be met by every application submitted to the United States Patent and Trademark office USPTO.

A patent application shall include a specification section. In this section the application shall set out the manner and process of making and using the invention, in full, clear, concise, and exact terms.  This section shall precisely and distinctly point out the subject matter which the applicant intends to patent.  This section should include information regarding the limitations of the patent due to any prior inventions found during a patent search. Any combined claims to patent right shall be included as to how they are incorporated in the claim.  Information as to the structure or material need not be set out as separate information in a combined claim.

ENABLEMENT: What gives YOU the right to patent YOUR idea?

Title 35 section 112 U.S.C.. This section establishes the legal right to claim intellectual right as a patent.  The section covers anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter.  The section also includes a claim of right for anyone who invents or discovers any new and useful improvement of an existing process, machine, manufacture, or composition of matter.  This section also limits the right to patent by the conditions and requirements under Title 35 U.S.C.

NOVELTY: Is YOUR invention truly unique and first in right?

Title 35 section 102(a) U.S.C.. This section establishes a limitation to the intellectual property right of patent. Further, this subsection defines prior art as a useful process, machine, manufacture, composition of matter or useful improvement to any of the aforementioned that was previously claimed as an invention and was patented, or described in a printed publication as a patent application.  The section also limits the right to patent any invention that is subject to disclosure through public use, sale, or otherwise available to the public before the effective filing date of the claimed invention.

Title 35 section 102(b) U.S.C.. This section provides for exceptions to the prior art limitation set out in Title 35 section 102(a) U.S.C..  Any disclosure made to within one year of the filing date of the second claim of right shall not operate as prior art to bar the right to patent if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.  It also applies in the same regard to disclosure that occurs through public use, sale, or other release to the public that occurs within one year of the effective filing date if the disclosure was made by the inventor or joint inventor, or a party that obtained the subject matter directly or indirectly from the inventor.

This exception covers disclosure made by a co-owner or assignee of the inventor.  The section defines co-ownership as subject matter that was developed and made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.  Further, the section provides the exception to prior applies if the invention was the product of the joint research agreement and the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

NONOBVIOUS: Is YOUR invention really worthy of a patent?

Title 35 section 103 U.S.C This section establishes that a claim of right to a patent is not valid for an invention that fails for obviousness. Further, the title declares obviousness when the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.  An invention must be found to be nonobvious to be patentable.  However, the manner in which the invention was made shall not negate patentability.

For more information regarding the patentability of your invention, you can speak with a patent agent at our firm.  Additional resources can be found on the USPTO website.

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