|United States patent law|
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|United States Code|
Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections (149 of which are used), in Title 35.
Federally recognized forms of intellectual property are scattered throughout the United States Code. Copyrights are covered under Title 17. Trademark and unfair competition law is defined in Chapter 22 of Title 15.Trade Secrets law, another form of intellectual property, is defined in Title 18.
Title 35 has four parts, which are delved into further later in the article:
Sections 1 through 42 establish the United States Patent and Trademark Office (USPTO). The USPTO is responsible for granting and issuing patents and registering trademarks.
An invention must meet several requirements to be eligible for a patent. The invention must concern patentable subject matter.The invention must be novel and the application for a patent on the invention must be timely. The invention must be non-obvious. Finally, the invention must be sufficiently documented.
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This may seem expansive, but there are limits to section 101 as outlined in the Manual of Patent Examining Procedure.Inventions/discoveries can only be patented once, that is double patenting is prohibited. Only the inventor may be listed as the applicant for a patent. The invention must have a use or utility that "is specific, substantial and credible". There are also limitations on the subject matter that can be patented, it must fall in the four categories of section 101: process, machine, manufacture, or composition of matter, and secondly that it "must qualify as patent-eligible subject matter". The idea of "patent-eligible subject matter" is to prevent abstract ideas, scientific laws, and natural phenomena i.e. chemical compounds, from being patented. The scope of patentable inventions was limited further by the Atomic Energy Act, and so "No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon."
Section 102 describes some of the conditions when a patent should not be granted to an inventor based on the concept of novelty.These conditions generally relate to when an invention is already known publicly. Each subsection of section 102 describes a different kind of prior art which can be used as evidence that an invention is already public. This includes inventions that have already been described in other patent applications or publications. It also includes inventions that have been on sale for more than a year before a patent application was filed. Netscape Commc'ns Corp. v. Konrad is an example of a case that focuses on the public use and on-sale criteria of this section.
This section of US code was affected by the America Invents Act (AIA). The most important part of section 102 now reads as follows:
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
Prior to the AIA Section 102 read as follows:
A person shall be entitled to a patent unless -
Sections 102(a), (b) and (e) are the most important considerations when determining patentable subject matter during patent prosecution.
35 U.S.C. § 103 describes the condition of patentability referred to as non-obviousness. This provides that a patentable invention must not have been obvious to a "person having ordinary skill in the art" (PHOSITA) in view of the appropriate prior art. The most important judicial decision in interpreting 35 USC 103 is Graham v. John Deere Co. And more recently KSR v. Teleflex in which the Supreme Court of the United States reaffirmed Graham v. Deere and moved away from reliance on the TSM test.
Section 103, post-AIA, reads as follows:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The most important section of pre-AIA section 103 is 103(a):
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
The full text of this section of the statute can be found at the USPTO.
35 U.S.C. § 112 dictates the form and content of the specification and the form and content of the patent application's claims. The first paragraph introduces 3 legal concepts, the written description requirement, the enablement requirement, and the best mode requirement. The second paragraph limits the ability of claims to be too open-ended or unclear.
Post-AIA section 112 reads as follows:
35 U.S.C. 112 Specification.
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
(c) FORM.—A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The pre-AIA version of section 112 is not substantially different from this.
Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.
In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.
Novelty is one of the patentability requirement for a patent claim, whose purpose is to prevent issuing patent monopoly on old/known things, i.e. to prevent public knowlegde from being taken away from the public domain.
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.
Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.
An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a proceeding unique to the patent law of the United States. Unlike in most other countries, which have long had a first-to-file system, until the enactment of the Leahy-Smith America Invents Act (AIA) in 2011, the United States operated under a first-to-invent. The interference proceeding determines which of several patent applications had been made by the first inventor.
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.
In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. A patent application can basically relate only to one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.
Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.
The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.
This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.
In former United States patent law, a statutory invention registration (SIR) was a publication of an invention by the United States Patent and Trademark Office (USPTO). The publication was made at the request of the applicant. In order for an applicant to have a patent application published as an SIR, the following conditions had to be met:
Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.
The history of United States patent law started even before the U.S. Constitution was adopted, with some state-specific patent laws. The history spans over more than three centuries.
A patent application or patent may contain drawings, also called patent drawings, illustrating the invention, some of its embodiments, or the prior art. The drawings may be required by the law to be in a particular form, and the requirements may vary depending on the jurisdiction.
The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952 and closely resembles previously proposed legislation in the Senate in its previous session.
Works related to United States Code/Title 35 at Wikisource