March 2010

Requirements of a Patent

Patent protection is provided through a registration with the United States Patent and Trademark Office (USPTO). Once registered, a patent gives a patent owner the right to exclude others from making, using, selling, distributing or importing the subject of the patent for a certain period of time. However, only certain things may be patented, and there are several requirements that an invention must meet in order to be eligible to receive patent protection. One of the most basic requirements is novelty, or newness. The purpose of the novelty requirement is to prevent the patenting of inventions which are known and used and thus, which are said to have entered the public domain. In addition, the novelty requirement also carries out the general principle that the first person to create an invention is entitled to patent it.

Definition of Novelty

In order to be novel, an invention cannot have been previously patented, described in a printed publication or used or known by others prior to its invention by the patent applicant. To be known by others, a patent must have been fully disclosed and the disclosure must be accessible to the public in the United States. Only minimal use of an invention by others is necessary to disqualify patent eligibility as long as the use is accessible to the public, which is the case if no steps were taken to conceal the use. Experimental use by the inventor to test the invention is not a use that will disqualify patent eligibility. Printed publication of a description constitutes accessible disclosure of the invention as long as the publication is distributed or is filed in such a way that a member of the public could find it by exercising reasonable diligence. Patents are usually published, which also constitutes printed publication that will negate patent eligibility. If a patent is not published, the relevant inquiry is whether the exact thing to be patented was previously patented and not merely described in an application that ultimately protected some other invention.

Additional provisions of patent law prevent an inventor from obtaining a patent if another inventor had previously taken steps to protect the invention that resulted in the public disclosure of the invention, such as with the publication of a patent application. Also, patent law prevents a later person from patenting an invention from an earlier inventor who did not abandon, suppress, or conceal the invention before the later applicant. These provisions ensure that the first inventor’s rights are superior to a later inventor.

In order to determine whether an invention to be patented meets the novelty requirement, the U.S. Patent and Trademark Office will search through existing patents and other literature in the field in which the invention is classified to see if the invention has been patented or described in a way that discloses it to the public. The body of information that will reveal whether an invention to be patented meets the novelty requirement is referred to as the “prior art.” If the prior art indicates that the invention to be patented has already been patented or described in a publication or in another manner, the item for which a patent is sought is said to have been “anticipated,” and the item will not be eligible for a patent. Inventors may conduct searches prior to applying for a patent to avoid the unnecessary expense of time and money in applying for a patent that will most likely be revealed to have been anticipated by the prior art.

Patent Infringement Litigation

A patent gives the patent owner the right to exclude others from using the invention. If another person or company makes, uses, sells, offers for sale the invention claimed in the patent, that other person or company is said to be infringing on the patent rights of the patent owner. The patent owner in such a situation may wish to have the infringing conduct stop or may wish to receive compensation for the infringing conduct. Because the United States Patent and Trademark Office (USPTO) has neither jurisdiction over a patent once it issues nor can they enforce any rights with regard to patent, the patent owner may sue the infringer in court. As a defense, the non-patent owner may wish to challenge the validity of the patent issued by the USPTO.

Under federal law, federal district courts have exclusive jurisdiction over all lawsuits “arising under any Act of Congress relating to patents.” Not all cases involving patents arise under the patent statute, however. Thus, depending upon the exact nature of the dispute, certain cases involving patent questions may be brought in state courts. For example, a lawsuit alleging the breach of a contract that involved a determination of the validity of a patent would be properly brought in a state court because contracts are governed by state law and the question of the validity of the patent is considered a side issue to the main question of whether a contract was breached.

Someone bringing a patent infringement suit must also choose the proper venue, the geographical area in which to file the suit. The patent venue statute provides that a patent infringement action may be brought in the federal court in which the alleged infringer resides or where the alleged infringer has committed the alleged acts of infringement. If the alleged infringer is a foreign company or individual, an infringement lawsuit may be brought in any federal district court.

In patent cases brought in federal district courts, the unsuccessful party may appeal the decision of the district court to the United States Court of Appeals for the Federal Circuit, which may then be appealed to the United States Supreme Court.

Trademark Priority Rights

In the United States, 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.

Damages in Trademark Litigation

Trademarks are symbols such as logos and brand names used to identify products and services and are frequently a company’s most valuable asset.. In such a suit, recovery for the harm suffered by the unlawful trademark use can be problematic. To help navigate through the complexity of documenting and proving the economic and non-economic damages suffered as a result of such acts, a trademark expert witness or a trademark infringement expert witness may be engaged. Trademark infringement can causes significant damage, requiring the services of a trademark expert witness.

There are standards that must be met for admissibility of expert testimony in trademark infringement actions. Experts may have their methods challenged before they take the stand. Expert testimony may be excluded as speculative and unreliable if an expert’s methods are not based on sufficient facts or data, are not reliable, or are not applied reliably to the facts of the case.

The trial court judge acts as a “gatekeeper” to ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable. Every expert is subject to a reliability test. Courts analyze expert testimony using the following five, non-exclusive factors in order to determine whether an expert’s reasoning and methodology are reliable:

  1. whether the theory or technique on which the expert relies has been tested;
  2. whether the theory or technique has been subject to peer review and publication;
  3. the known or potential rate of error of the technique or theory when applied;
  4. the existence and maintenance of standards controlling the technique’s operation; and
  5. whether the theory or method has been generally accepted by the expert community.

Appellate courts review how the trial court judge tests an expert’s reliability under the abuse of discretion standard, which is the same standard used to review the admission or exclusion of expert testimony. When seeking expert testimony, it is critical that the expert’s credentials and methodology be sufficient to withstand court scrutiny.

Best Edition and Copyright Law

Under copyright law, copies or phonorecords deposited in the Copyright Office must be the “best edition” of the work. The best edition of the work is the edition that the Library of Congress determines is the most suitable for its purposes.

When two or more editions of the same version of a work have been published, the one of the highest quality is generally considered to be the best edition. In judging quality, the Library of Congress adheres to specific criteria in all but exceptional circumstances. Where differences between editions represent variations in copyrightable content, each edition is a separate version and “best edition” standards based on such differences do not apply. Each such version is a separate work for the purposes of the copyright law. In deciding between two editions, a criterion-by-criterion comparison should be made. The edition that first fails to satisfy a criterion is to be considered of inferior quality and will not be an acceptable deposit.

Under regulations of the Copyright Office, potential depositors may request authorization to deposit copies or phonorecords of other than the best edition of a specific work by requesting “special relief” from the deposit requirements. All requests for special relief should be in writing and should state the reason or reasons why the applicant cannot send the required deposit and what the applicant wishes to submit instead of the required deposit.

The definition of “best edition” of a work in the law makes clear that the Library of Congress is entitled to receive the copies or phonorecords of the edition that best suit its needs. Its choice may be made from any editions that have been published in the United States before the date of deposit.

When two or more editions of the same version of a work have been published before the date of deposit, the Library of Congress generally considers the one of the highest quality to be the best edition. If, on the date of deposit, a better edition exists but is not submitted, the Copyright Office is entitled to request the better edition on behalf of the Library of Congress. The Library of Congress lists criteria to follow in judging quality in its current “best edition” statement. When the criteria do not apply to a particular work, the Copyright Office will confer with appropriate officials of the Library of Congress to obtain a determination as to the best edition of that work.