Requirements for Applying for a Patent

Article I, § 8 of the United States Constitution authorizes Congress
to “promote the progress of science and useful arts, by securing for limited
times to authors and inventors the exclusive right to their respective writings
and discoveries.” Congress has created two sets of laws to implement the object
of this provision: copyright laws protect original works of art and
patent laws protect original inventions. These laws prove for the protection of intellectual
property rights which is
not susceptible of being secured in a traditional manner,
particularly when such creations often have little use until they are
sold or distributed or used to make products that may be sold or distributed.

United States Patent and Trademark Office (USPTO)

The government agency responsible for overseeing the patent process is the
United States Patent and Trademark Office (USPTO). The USPTO examines applications
and grants patents to inventors who have fulfilled the patent requirements. In addition, the USPTO maintains
and makes information available, including patents and applications that may
be researched to determine if an invention is new and if another inventor has a patent related to the invention to be patented.

New and Useful Inventions

Types of things that may be patented are new and useful inventions that can be
classified as machines, articles of manufacture, compositions of matter, processes,
or any combination of those things. These types of inventions are eligible for a type
of patent called a utility patent and represents the common understanding of what
a patentable invention is. An idea may not be patented, even if it as an idea for
a tangible thing such as a machine. Accordingly, detailed specifications and
descriptions for a machine or other invention must be set out in a patent
application. Other things that may not be patented are laws of nature, physical
phenomena, and types of intellectual property that are protected by copyright or
trademark law.

Design Patents and Plant Patents

Two other types of patents are available that protect ornamental designs for
articles of manufacture, called design patents, and those that protect certain
types of plants, called plant patents. In order to be eligible for a plant patent,
a new plant must not be a tuberous plant such as a potato and must be asexually
reproduced. Utility patents and plant patents have a term of around 20 years, whereas the
term of a design patent is approximately 14 years.

Requirements of a Patentable Invention

A patented invention must be useful and must be new. USPTO rules provide what
constitutes new and preclude the patenting of things that have already been patented,
have been sold or in use, or have been described in any publication before they were
supposedly invented by the person seeking to patent them. USPTO rules also require
that, once the creator of a truly new invention describes it publicly or puts the
invention into use, he or she must apply for a patent within one year. Failure to
do so will cause the inventor to lose the right to obtain a patent and the invention
may then be used, made, or sold by anyone.

Another requirement for a patent is the non-obviousness of an invention. This
requirement particularly applies to improvements of existing inventions and prevents
the patenting of simple substitutions of a different material or
a new size from an existing invention. Obviousness is measured not from the point of view
of the layman but from that of a person of ordinary skill in the area of technology
within which the invention is classified.

Inventor must Apply for a Patent

In the United States, only an inventor may apply for a patent. If the inventor is deceased or incompetent,
the inventor’s guardian or the representatives of the inventor’s estate may apply for a
patent. In addition, if an inventor refuses to apply for a patent, another person with a
proprietary interest in the invention may apply for a patent.

An ordinary patent application is called a non-provisional application. In addition
to personal information of the applying inventor, a patent application must include a
detailed description of the item or items for which a patent is sought along with a description of what is claimed to be new, which are referred
to as the inventor’s “claims,” and an oath or declaration that the inventor believes they are the original inventor of the item or items to be patented.
Depending upon the subject matter of the application, detailed drawings will most likely be required.

Patent rights

Although applications are often rejected as first filed and need to be amended in order to
meet all requirements for a patent, the USPTO eventually approves over half of all patent
applications. A patent is a property right of the patent holder giving him or her the right
to prevent others from using, making, or selling the invention without permission. A patent
may be sold, transferred, assigned, and mortgaged, or treated in any way that property may be
treated; thus, although the inventor is required to apply for a patent, once the patent is
issued someone else may own the patent or become the patent holder.

Patent Holder’s Permission Required to Build or Use Patented Invention

It is illegal for someone to build or use a patented invention without the patent holder’s
permission even if that person builds the invention at his own expense. Someone who makes, sells,
or uses a patented invention without permission is said to have infringed the holder’s patent
rights, and a lawsuit may be brought for an order that the activity cease and for any monetary
damages that may have been incurred for lost sales or other injury. An exception to this rule
exists in that the federal government may use a patented invention without permission; however,
the holder is entitled to compensation. A patent holder whose rights have been infringed should
consult an attorney, as the USPTO has no jurisdiction over patent disputes.

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