October 2009

Patenting Useful Inventions

Under the Patent Act, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The requirement that the subject of a patent be new is referred to as the novelty requirement; the requirement that the subject of a patent be useful is referred to as the utility requirement.

To meet the utility requirement, an invention must provide a specific, known use that differs from the prior art, which is the body of information from which it is determined whether an invention is new. Speculative or possible future utility is not sufficient. Application requirements set out by the Patent Act provide that the patent applicant describe in detail the invention, how to make it, what it does, and how it is used, which if properly complied with should make it clear what the claimed utility of the invention is. It is not necessary that the use represent an improvement over the prior art; however, to meet the utility requirement, an invention must work as claimed.

The utility requirement is liberally applied to pharmaceutical compounds. In a leading case on the utility requirement, the U.S. Court of Appeals for the Federal Circuit reversed a decision of the United States Patent and Trademark Office that a pharmaceutical compound was not patentable because, although the compound had anti-tumor properties, the patent application did not specify any specific disease for which the compound might be used to treat. The court held that a compound that exhibits a desirable pharmaceutical property in animal testing has made a significant and useful contribution to the art and, thus, meets the utility requirement. In addition, the court concluded that is to be expected that further research and development in a pharmaceutical compound will be necessary to fully determine the specific medical uses for the compound.

There is usually a low threshold in determining whether an invention is useful. However, in determining if an invention is useful, the examiner reviews the patent application and tries to determine whether there is well known utility for the invention or whether a credible basis for the utility is asserted by the applicant. The credibility of an assertion of utility is based upon the standard of a person having ordinary skill in the field in which the invention is classified. If there is either a well-established or credible use asserted by the applicant, the patent application will not be rejected on the ground of lack of utility.

Patent Applications: Written Description

One of the most important aspects of the patent application is the written description requirement. Under the written description requirement, the applicant must provide a clear description of what is being claimed for patent protection. It is what the inventor hopes to receive in exchange for what the disclosure. The written description requirement may be satisfied by describing several elements, or claims. The claims define the boundaries of what is to be protected by a patent, and, in a patent infringement action, the analysis of whether a patent has been infringed will begin with a construction of the claims to determine what is protected by the patent. In addition, the written description of the invention serves the main objective of patent law by placing into the realm of public knowledge the new ideas embodied by the invention.

Under the Patent Act’s application requirements, the manner and process of making and using the invention to be patented must be described in sufficiently full, clear, concise, and exact terms to enable a person of ordinary skill in the field in which the invention is classified (the “art”) to make and use the invention. This requirement ensures that the invention is described and communicated to the public in a meaningful way so that the invention contributes to public knowledge; accordingly, a patent claim may be ruled invalid if it is not supported by an enabling description.

The best mode requirement ensures that an inventor discloses the best way he or she knows of making and using the invention. This prevents an inventor from providing public knowledge of a functional yet inferior invention while keeping for his or her own benefit a better invention. Failure to disclose the best mode of making and using an invention may lead to the invalidation of a patent. Determination of whether the best mode has been disclosed is largely a subjective process. An inventor is not required to disclose as the best mode the use of a material in the invention that would render the invention commercially impractical even though use of that material would enhance the performance of the invention. In addition, if certain aspects of an invention perform equally well with several alternatives, the best mode requirement does not require an inventor to choose among the alternatives.

Trademark Priority

In the United States, subject to one exception, trademark rights arise from use in commerce, regardless of whether or not the mark is registered. The first user of a mark generally takes priority over all subsequent users with respect to use of the mark in that market.

The first user of a mark in commerce, labeled the senior user, will have priority over the use of that mark by any other user, labeled the junior user, within the geographic area of the senior user’s use. However, as soon as a senior user files an application to federally register the mark, the senior user will have nationwide priority over any junior users of the mark, except for any junior users who were already using the mark in a geographically remote area as of the filing date of the senior user’s application.

The one exception to the rule of priority based on use in the U.S. is that a prospective user can file an application for federal registration of a trademark on an intent-to-use basis. In that case, once the mark is used in commerce, the priority date will relate back to the date of the filing of the application, not the date of first use.

A federal trademark registration application should be filed immediately after a search is performed to ensure that the mark is not already in use. This is necessary to establish a nationwide priority date.


The following are required in order to claim priority based on an existing trademark registration:

  • A true copy, a photocopy, a certification or a certified copy of the applicant’s trademark registration in the country of origin must be provided.
  • A translation of the registration if not in English, signed by the translator, must be submitted.
  • The applicant must verify that the applicant has a bona fide intention to use the mark in commerce.
  • The scope of the goods covered by the U.S. application cannot exceed the scope of the goods or services in the foreign registration.
  • If the applicant is not domiciled in the United States, the applicant must designate a domestic representative, which is a person residing in the United States that may be served notices or process in proceedings affecting the mark.

Passing Off under Trademark Law

In “passing off,” a seller associates another party’s mark with a good or service. The law of passing off concerns unfair competition more generally in situations where there does not need to be a registered trademark or any other intellectual property right. Where a second business does something so that the public is misled into thinking that the activity is associated with a first business and as a result the first business suffers some damage, then it may be possible for the first business to sue the second business for passing off. One area where passing off might apply is where a second person uses an unregistered trademark normally used by a first person and in so doing passes off, or represents, goods or services in such away that the public is deceived into thinking the goods or services are being offered by the first person. This area of law arises out of the common law rather than statute.

Reverse Passing Off

In “reverse passing off,” a party misrepresents the source of its product by not informing the public who created it. The seller misrepresents the source by removing or obliterating the original trademark. The removal or obliteration of the original trademark is completed prior to sale of the associated goods or services. Reverse passing off falls into two categories: “express reverse passing off” and “implied reverse passing off.”

In express reverse passing off, the infringer replaces the original mark with his or her mark and sells the product. In implied reverse passing off, the infringer only removes the mark prior to selling the product, leaving the product unbranded. The infringed party suffers damages by implied and express reverse passing off. An infringer thwarts the purpose of a mark by its removal.

Damages Caused by Reverse Passing Off

A trademark serves three purposes: It designates origin; develops goodwill by allowing customers to associate a level of quality with a product from a specific origin; and serves as advertising. By removing the mark, the infringer prevents the ultimate customers from knowing the true source of the product, creating a means for deceiving the customer. The deception can occur if the infringer replaces the unbranded products with products of a lower quality. Additionally, the removal of the mark denies the infringed party the opportunity to further develop the advertising value of the mark.

Copyrighting Collective Works

The Copyright Act defines a “collective work” as an assemblage into a collective whole of a number of individual contributions, each of which constitutes a separate and independent work, and gives as examples periodicals, anthologies, and encyclopedias. A collective work is also referred to as a “compilation.” Under the Copyright Act, copyright in a collective work is distinguished from copyright in a contribution to the collective work. An author of a collective work has a copyright only in the material that he or she contributes to the collective work. The authors of the individual contributions to the collective work continue to hold the copyrights in those works.

The owner of the copyright in a collective work is presumed only to acquire the privilege of reproducing and distributing a contribution as part of the collective work or a revision of a collective work unless an agreement to the contrary is made between the author of the collective work and the author of the individual contribution. The United States Copyright Office allows authors to obtain a separate copyright registration for a contribution to a collective work. For publication of a series of contributions within a period of one year, the Copyright Office provides a registration for a group of contributions to a periodical.

The United States Supreme Court has held that periodicals such as newspapers may not sell individual articles from their periodicals to other publishers when the individual articles are not presented as part of the collective work, for example, in electronic databases or CD-ROM products, without the permission of the authors of the individual articles. In reaching that decision, the Supreme Court rejected arguments by newspapers and publishers that the databases and CD-ROMs constituted a revision of the original collective work, the copyright in which extended to the author of the collective work. The Supreme Court noted that when an article was found by a search of a database or CD-ROM, it appeared alone and not with the other articles that appeared in the original periodical; thus, it could no longer be considered part of the collective work.