The Complete Guide to Patent Law

Rich Goldstein

Founder & Principal Patent Attorney

Navigating patent law is a challenge for most inventors. Through years of interacting with inventors, I’ve discovered that an easy to understand, practical, comprehensive guide to patent laws could serve many folks hoping to secure a patent for their inventions. Without further ado, in this article, I present you the complete guide to patent law. 

The Complete Guide to Patent Law

As more companies are increasingly using them to have a monopoly over certain inventions, patents have been popping up more frequently on the news than they used to. Yet, there is very little knowledge about patent law available to the general public. So, what is patent law?

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Patent law is a set of rules and regulations that govern the granting, use, and protection of patents. This law guarantees that inventors are rewarded for their creativity by protecting their inventions from external exploitation. In the United States, patents are governed by the Patent Act (35 U.S.C.) under the United States Patent and Trademark Office (USPTO).

Under the 35 U.S. Code:

  • Section 101: Patentable subject matter, including processes, machines, manufactures, and compositions of matter.
  • Section 102: Novelty requirements, defining what constitutes prior art that can invalidate a patent.
  • Section 103: Non-obviousness requirement, determining whether an invention would have been obvious to a person skilled in the relevant field.
  • Section 112: Specification requirements, including the written description, enablement, and best mode of carrying out the invention.
  • Patent Cooperation Treaty (PCT)

What Are Patents

According to the World Intellectual Property Committee (WIPO), “a patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.” 

In simpler terms, a patent is a document that grants monopoly rights to an inventor to use their invention for a specific period of time commercially. The right granted to inventors by the patent is to exclude others from making, using, offering for sale, selling, or importing the invention into the United States. 

It is important to note that patents do not grant the right to use the invention. Instead, they grant the right to prevent others from using the invention. After being issued, patents are valid for up to 20 years from the application filing date. During this timeframe, patent holders must enforce the patent without the help of the USPTO. 

What Can Be Patented

Patents can be granted for nearly anything, including machines, processes, and even new and asexually produced plants. Here is a breakdown of what can be patented: 

Processes, Machines, Manufactures, and Compositions

If you have invented a process, machine, manufactured article, or composition of matter, they are eligible for patent protection. This includes methods of doing or making things, devices, products, and chemical compounds.

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Software

In the US, patents can be granted to software inventions. However, to be patentable, software patent applications must meet at least one of the following requirements: 

  • It should be more than an abstract idea, or
  • If it is directed toward an abstract idea, it must include extra elements that convert the abstract idea into a patentable application 

To increase its chances of patentability, the software should:

  • Provide a technical solution to a problem, or 
  • Improve computer performance, or 
  • Perform computer tasks or solve computing challenges in an unusual way

Business Methods

Business method patents can be granted to protect a way of doing business that provides a practical or technological solution to a problem. For a business method to be patentable, it must involve technology, hardware, or equipment. It must also create a useful, concrete, and tangible result. 

Note that business methods that are purely abstract or mental processes are generally not eligible for patent protection.

Designs

The unique visual appearance and aesthetics of useful items, such as furniture, electronic devices, or clothing, can be protected by design patents. Instead of protecting the functional features of an invention, a design patent protects its: 

  • Distinct shape
  • Configuration 
  • Surface decoration 
  • Specific colors or ornaments 

What Cannot Be Patented

While patents can generally be granted for several inventions, certain things do not qualify for a patent. These include:

Abstract Ideas

Abstract ideas or mental processes are not eligible for patent protection. While inventions mostly begin as ideas, the idea must undergo a process of execution to be patentable. 

Laws of Nature

Discoveries of natural laws, such as gravity or electromagnetism, cannot be patented. While inventions that apply or utilize these natural laws may be patentable, the laws themselves are not subject to patent protection.

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Literary, Dramatic, Artistic, or Musical Works

Works of art, including books, songs, paintings, and movies, cannot be patented. However, they can be protected by copyrights.

Methods of Medical Treatment

While medical equipment can be patented, medical treatment methods cannot be. This includes surgical procedures, medical diagnoses, and therapeutic treatments.

Scientific Theory or Mathematical Method

Scientific theories and mathematical methods cannot be patented either because they are considered products of mental skills and may not exactly produce repeating patterns. However, applications or software created using a mathematical formula can be patented

Presentation of Information

The way a piece of information is presented is not considered an invention, as its features cannot contribute to an inventive step. 

Types of Patents 

The USPTO grants inventors different kinds of patents to protect different inventions. As an inventor, it is important to be familiar with the different kinds of patents to know which one to use to protect your inventions best. Here are some common types of patents:

Utility Patents 

Utility patents are the most common types of patent applications filed by inventors in the US. They are used to protect the functionality of new and useful: 

  • Processes, which is an act or method of doing something 
  • Machines, including any object regarded as a machine, including computers 
  • Compositions of matter, which refers to chemical compositions that involve a mixture of ingredients
  • Article of manufacture, that is, goods that are made or manufactured 
  • Any new improvement thereof 

Utility patents are usually valid for 20 years from the initial date that the patent application was filed. They also require periodic maintenance fees to keep them in force. 

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Design Patents 

A design patent protects the unique visual appearance of an invention. This can include the shape of an object, its color, or its surface design. To get this patent for an invention, the product must be inseparable from its design. Despite this, however, the patent will only protect the design, not the invention’s functionality. 

Design patents are valid for 15 years from the date they are granted. These documents typically contain very few words and are mostly made up of pictures and/or drawings of the invention. This can make it slightly challenging to run a design patent search. 

Plant Patents 

Plant patents are granted to protect new and distinct varieties of plants. To be patentable, the plant invention must meet the following requirements: 

  • Must be asexually reproduced, that is, grown through methods such as root cuttings, grafting, or tissue culture 
  • Must not be a tuber-propagated plant, such as a potato 
  • Must not be found in an uncultivated state

The plant must be asexually produced to show that the inventor can reproduce it when needed. The patent rights are enforceable for 20 years from the initial patent application filing date. Plant patent holders must also pay maintenance fees periodically to maintain protection. Plants that can be patented include the following:

  • Cultivated sports
  • Mutants
  • Hybrids
  • Transformed plants
  • Algae
  • Macro-fungi
  • Newly found seedlings 

Types of Patent Applications

You need to file a patent application with the USPTO to get patent protection. When doing this, you can file two types of patent applications, depending on the development stage of the invention. 

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Provisional Patents 

The US patent law allows inventors to file a provisional patent application for inventions still being developed. Provisional patents are less formal documents that give a patent-pending status to an invention. 

This patent gives the inventor one year from the date of application to figure out the workings of the invention while preventing others from filing a patent for the same invention. 

Suppose the inventor does not have a working invention and does not file a non-provisional utility patent by the time that one year is up. In that case, they lose this initial filing date and risk losing patentability for the invention. 

Non-provisional Patents

Non-provisional patents are formal patent applications filed with the USPTO. A patent examiner officially examines this application to determine if the invention qualifies for patent protection. If the requirements for a patent are met, then one may be issued to the patent applicant.

Requirements for Patents 

The requirement for patent protection in the United States is set in Section 101 of the Patent Act, which states: 

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.

According to the sentence above, there are four requirements for patentability. They are: 

  • The invention must have a patentable subject matter
  • The invention must be novel
  • The invention must be useful
  • The invention must be non-obvious 

Here’s a detailed breakdown of these requirements:

Patentable Subject Matter

To qualify for a patent, an invention must fall within one of the statutory categories defined by law. These categories are:

  • Processes
  • Machines
  • Manufactures
  • Compositions of matter

If an invention does not fall within these four categories, it may not be patentable. This means that if you invent a physical device, you need not worry about it being non-statutory. However, if you invent software that isn’t tied to a physical machine or a process, it would not be patentable. 

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Novelty

Novelty, also known as “newness,” is another requirement for patentability. It states that the invention must be new or different from any prior art. According to this requirement, an invention will not be patentable if:

  • It was known to the public before the patent application’s filing date
  • It was described in a printed publication before the patent application’s filing date
  • It was described in an issued patent or a published patent application before the patent application’s filing date

However, there is an exception to this requirement, granted by the statutory bar. The inventor has one year from the first public disclosure or offer for sale of an invention to file a patent application. If a patent application is not filed within this period, the inventor loses every right to patent protection on that invention. 

This first public disclosure could be as simple as showing the invention to a friend or family member, after which the one-year grace period starts counting. It is thus advisable to not disclose the invention publicly until you have filed a patent application. 

Utility

The utility requirement means the invention must have a specific, substantial, and credible purpose. In other words, the invention must be useful, demonstrate some real-world application, or provide a functional benefit. Note that this utility must be specific to the invention and not just to the general class of items that it belongs to. 

The threshold for meeting this requirement is relatively low, especially for electronic and computer technologies. However, it may be difficult to prove the effectiveness of inventions such as drugs or chemical compounds.

Non-Obviousness

Non-obviousness is another important requirement that assesses whether the invention would have been obvious to a person having ordinary skill in the relevant field at the time of invention. This requirement aims to make sure that patents are granted only to inventions that have a significant difference from prior art.

This means that even if an invention meets the criteria of novelty, that is, it is not exactly the same as a prior art, it may still be rejected if the improvement made on the prior art is determined to be an obvious one to someone ordinarily skilled in the field. 

Non-obviousness is one of the most difficult determinations to prove in the patent review process. While one examiner may consider an invention to be an obvious leap from the prior art, another may consider it to be non-obvious. However, it is generally determined if there is an upgrade to the features described in an existing patent application. 

How to Obtain a Patent 

You need to file a patent application with the USPTO to obtain a patent. A patent examiner will review this application to determine if it meets every requirement for patentability. Follow this step-by-step guide to get started:  

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Conduct a Patent Search

To make sure your invention meets the novelty requirement, it’s important to conduct a thorough patent search before applying. This involves reviewing existing patents and published patent applications to determine if any similar inventions already exist or if your invention has a non-obvious improvement from prior art.

You can make use of the following patent databases during your search: 

  • Patent Public Search
  • Global Dossier
  • Patent Application Information Retrieval (PAIR)
  • Public Search Facility
  • Patent and Trademark Resource Centers (PTRCs)
  • Patent Official Gazette
  • Common Citation Document (CCD)
  • Search International Patent Offices
  • Search Published Sequences
  • Patent Assignment Search
  • Patent Examination Data System (PEDS)

Choose the Type of Patent

Next, you must choose the type of patent that best fits your invention out of the three patent types discussed above. If you have invented a machine, a manufactured product, or a method of doing something, you will need a utility patent. 

If your invention has a unique shape or appearance, a design patent can help you protect that. Lastly, if you have invented or discovered a new, asexually produced plant variety, you can apply for plant patent protection.

Draft and File Your Application

This step involves preparing a detailed description of your invention from scratch, including drawings or diagrams if necessary. You will also need to draft patent claims defining the protection scope you seek. 

Before submitting your application, make sure it meets the application filing guide of the patent office, including proper formatting and language. Drafting your application requires a lot of technical and legal knowledge. It is advisable to hire an experienced patent lawyer to create a standard application for a seamless and error-free process. 

Once your application is complete, you can file it with the USPTO, alongside the required filing fees.

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Related Questions

How Can I Enforce My Patent?

To enforce your patent, you can take legal action against infringers. There are various options for doing this, including sending cease-and-desist letters to the infringers or filing a lawsuit in court with the help of an attorney. You can also negotiate a licensing agreement with the infringer, allowing them to use the invention for a fee.

Should I License My Patent Rights?

Deciding whether you should license your patent rights should depend on various factors, including your business goals, market position, resources, and market conditions. Licensing can provide opportunities to generate revenue and break into new markets. However, it also poses the risk of potentially losing control over your invention or poor quality management that damages your brand reputation.  

Where Can I Carry Out a Patent Search?

To conduct a patent search, you can make use of online patent databases such as the United States Patent and Trademark Office (USPTO) or Google Patents. You can also make use of PATENTSCOPE, International Patent Classification (IPC), and Patent Register Portal. These tools give you access to millions of patent documents across various countries, guaranteeing a thorough search. 

Conclusion 

Patent law is extensive, with several rules and requirements. This guide to patent law hopefully gives you a better idea of what they are, what they cover, their requirements, and how to get a patent for your invention. It is always best to get a professional involved, so if you are looking to file a patent application, it is advisable to hire a qualified patent attorney.

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