Patenting 101

(Also: "Patenting for Dummies" and "Patenting made Simple")

For inventors new to patenting, the process may seem at best puzzling and at worse imported from Mars. The process is very rule and procedure driven, and many procedures seem to make no sense at all. These sentiments are understandable. I'll try to help you understand some of the key principles.

First, procedures get complex because the US Patent Office needs to guard against attempts by some very smart inventors to circumvent the patenting process to their advantage. Second, many of these procedures were created to safeguard rights of inventors and make the Patent Office work load more manageable. Third, some procedures stem from court rulings and other appeal precedence that the Patent Office had to accommodate into the process.

The basic principle for granting a patent is the belief that disclosing an invention is in the public interest. In return for the disclosure, the US government grants the inventor a 20 year exclusive license to manufacture and sell the invention. It might also be useful to know that there are three types of patents: utility (which could be a machine or apparatus, process, manufacture, or composition of matter), design and plant.

Another important principle of the patenting process is that only enabling inventions can become patents; ideas that are merely new and novel can not. The enablement requirement is described below.

The patent system rewards the early filer. If two different entities file applications containing the same invention, the earlier filer will prevail.

There are a variety of reasons why patents get rejected by the US Patent Office:

  1. The invention was known or used in the US before the date of invention. Use or knowledge in another country does not preclude patentability.
  2. The invention was described in a patent or publication by another person before the date of invention anywhere in the world.
  3. The invention was known or on was on sale in the US one year before the patent application date. Use or on sale in a foreign country does not preclude patentability. Also merely selling the rights to the invention does not preclude patentability.
  4. The invention was described in a patent or publication by the applicant or by another inventor one year before the applicant filed. In short, if the applicant published the invention and waited more than a year to file, he loses the right to get a patent.
  5. The inventor abandoned the application.
  6. The inventor applied for a patent in a foreign country and waited more than a year to file in the US. (For the applicant to lose his patent rights, the foreign patent must have been granted before the US application. If not, the applicant may be granted a patent.)
  7. The invention was described in a US or international application by another inventor before the date of invention.
  8. The applicant did not invent the subject matter. ( For example, a US citizen visits a foreign country and observe an invention. Since there is no "known to the public" or "on sale" bar against applying for the invention in the US, the citizen could, in theory, get a patent on this invention. However, since the US citizen did not invent the subject matter, a patent would not be granted.)
  9. Another inventor came up with the idea first. During the course of an interference proceeding, the inventor who demonstrates that he/she invented first gets the patent.
  10. Patents can get rejected for lack of utility (not being useful). Patents are not granted for theories, mathematical equations or abstract computer calculations. The subject matter of a patent must fall in one of the following categories: process, machine, manufacture, or composition of matter. A claim made for a perpetual motion machine or cure for the common cold or cancer will not be considered to have utility that is credible unless demonstrated to the contrary.
  11. Patents are also rejected for lack of enablement. A description of the patent application has to be enabling, that is, the invention has to be described in such a way that a person skilled in the art can reproduce it without undue experimentation.
  12. Lastly, a patent may be rejected if it can be demonstrated that the applicant could have come up with the invention by combining two or more prior art patents or publications. This is known as an obviousness rejection. For example, if one patent describes a lamp and another patent describes an outdoor shade, a patent application for a shade on a lamp may be barred under the obviousness principle.

Most patent applications get rejected for reasons #2 and #4. These are known as anticipation rejections; the most common type being one in which a patent or publication by another is found that either predates the invention or was published 12 months before filing the patent application.

Obviousness rejections (#12) are also common. This type of rejection is one form of anticipation rejection arising from multiple prior art references.

The Patent Office lists ways that the various forms of rejections can be overcome. There is only one way to overcome the most common type of anticipation rejection, however; and that is to convince the examiner that the claims of the invention are patentably distinct from the prior art. The evidence for arguing with the examiner must be found in the original patent application. Any argument by the inventor that he meant something a little different or intended a feature that was not clearly disclosed in the original application will not likely to be persuasive.

It is therefore very important that the application be written in such a way that the differences between the invention and prior art are clearly delineated in the original application.