Not So Obvious

An Introduction to Patent Law and Strategy

Copyright © 2011-2015 by Jeffrey Schox. All rights reserved.

ISBN-13: 978-1517273934
ISBN-10: 1517273935

This book includes legal information, which is different than legal

advice. If you need legal advice, you should engage in an attorney–
client relationship with an attorney. Merely reading this book does not
By Jeffrey Schox create such a relationship. While Jeffrey Schox has founded his own law
Version 4.1 firm (Schox PLC), the opinions in this book are his own and may not
reflect the opinions of his firm or his clients.

Fourth Edition (Updated September 2015)

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 Chapter Contents 6. Infringement
•! Introduction
•! Infringement Analysis
1. Introduction to Intellectual Property •! Infringement Through Other Actions

•! What Is Intellectual Property? •! Remedies

•! Why Do Societies Provide Intellectual Property Rights? •! How to Design Around Problematic Patents

•! How Can You Leverage Intellectual Property?

7. Inventorship and Ownership
2. The Patent System •! Who Is an Inventor?

•! Types of Patent Protection •! Who Is the Owner?

•! Steps of the Patent Process •! Comparison of Assignments and Licenses

•! Sections of a Utility Patent

Appendix
3. Subject Matter and Utility Requirements •! Glossary

•! Introduction
•! Subject Matter Requirement
•! Utility Requirement

4. Novelty and Non-Obviousness Requirements

•! Introduction
•! Novelty Requirement
•! Non-Obviousness Requirement
•! How to Conduct a Patentability Search

5. Timing and Written Description Requirements

•! Introduction
•! Timing Requirement
•! Written Description Requirement
•! How to Prepare and File a Provisional Application

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 Chapter One
Introduction to Intellectual Property
"Before [the adoption of the U.S. Constitution], any man might
instantly use what another had invented; so that the inventor had no
special advantage from his own invention. The patent system changed
this … and thereby added the fuel of interest to the fire of genius, in the
discovery and production of new and useful things."— Abraham
Lincoln

Special Thanks to
Lauren Koueiter for the cover design.

Additional Thanks to
My wife, Kate Schox, my friends John Manoogian III, Sam Valenti IV,
and Reilly Brennan, and to all of my past students for their
encouragement and support.

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Chapter Contents What Is Intellectual Property?
•! What Is Intellectual Property? Introduction
o! Introduction Intellectual property (also known as "IP") is an umbrella term for the
o! Patent Law legal rights that attach to inventions, confidential information, artistic
o! Trade Secret Law expressions, and brands. The IP umbrella covers patent law, trade
o! Copyright Law secret law, copyright law, and trademark law. The term "property" in
o! Trademark Law intellectual property designates ownership and legal protection, like
o! Comparison of the IP Rights that of regular property (e.g., a house or a car). However, IP focuses on
•! Why Do Societies Provide IP Rights? the products of the mind rather than physical objects.
o! A Brief History of Intellectual Property
o! Economic Incentive Theory Although nearly every country in the world has enacted IP laws,
o! U.S. History of Patent Law "worldwide" rights, such as a worldwide patent, do not exist.
o! Letter from Thomas Jefferson (1813) Intellectual property laws are territorial; other than a few exceptions, IP
o! Contract Theory laws do not extend beyond the border of an individual country or

•! How Can You Leverage Intellectual Property? region. The discussion of this book will focus on the IP laws of the
o! Introduction United States. In some sections, the discussion contrasts the IP laws of
o! Protecting a Competitive Advantage the United States with the IP laws of other countries.
o! Generating Licensing Revenue from a Non-Competitor
o! Accessing the Channels or Assets of a Competitor Patent Law

o! Deterring a Patent Infringement Lawsuit In the United States, the patent laws are provided by the Constitution

o! Stimulating an Acquisition or Investment and are enacted by the federal government. A patent grants the right to

o! Providing Leverage in a Negotiation with a Partner exclude others from making, using, or selling a particular invention.
o! Preventing Others from Patenting the Technology According to the United States Patent Statutes, any "process, machine,
o! Advertising Technical Ability and Increasing Credibility manufacture, or composition of matter" may be the subject matter of a
patentable invention. Essentially anything but nebulous concepts and
natural laws may be the subject matter of a patentable invention.

The actual test for patentability imposes the following requirements:

(1) the invention must be useful; (2) the invention must be novel; and
(3) the invention must not be obvious to a person having ordinary skill
in the art. Patents are not limited to pioneering advances that introduce

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new technologies; incremental steps that improve an existing (PCT). The PCT is an international process that facilitates filing patent
technology may also be patentable. applications in multiple countries; however, the PCT does not result in
a single issued international patent. There are plans to establish an
There are three main kinds of patents: international patent in the future, but such a patent does not currently
•! Utility patents, which are the most common, cover any "process, exist.
machine, manufacture, or composition of matter";
•! Design patents cover the ornamental or aesthetic features of a Although a patent includes the right to exclude others from making,
product (e.g., an article of clothing or the exterior of a vehicle); and using, selling, and importing an invention, the patent does not include
•! Plant patents cover asexually reproduced plants; such plants are the right for the patent owner to actually make, use, or sell the
reproduced by means other than from seeds (e.g., by the rooting of invention. This concept will be explored in great detail in subsequent
cuttings, by layering, or by grafting). chapters; it is the most misunderstood concept in patent law. For now,
imagine a first inventor who holds an early patent on a pioneering
Patents are granted for a limited term. After this term expires, the invention (e.g., Edison's light bulb), and a second inventor who holds a

subject matter of the patent enters the public domain and can be freely later patent on an improvement of the pioneering invention (e.g.,
made, used, and sold. A utility patent filed on or after June 8, 1995, Pipkin's frosted light bulb). The first inventor can prevent the second
expires 20 years after the earliest priority date. This date could be the inventor from making, using, and selling the pioneering invention. On
filing date of the patent application, a "parent" patent application filed the other hand, the second inventor can prevent the first inventor from
in the United States, or a "worldwide" PCT patent application. A utility making, using, and selling the improvement. In fact, during an
patent that was filed before June 8, 1995, expires either 17 years after overlapping portion of the terms of the two patents, neither of the two

the issuance date or 20 years after the filing date, whichever provides inventors can make, use, or sell the improvement. In this situation, one
the longer term. of the inventors will typically license or sell their patent to the other (or
the two inventors might cross-license their patent to each other).
Patents, like all other intellectual property laws, are territorial. Suppose
an applicant files a United States patent application on an invention, Trade Secret Law
but files no foreign patent applications. Making, using, or selling the Trade secret laws are enacted by individual states—not by the federal

invention in foreign countries would not infringe the United States government. While the laws of each state are fairly similar, the exact
patent unless the product is imported into the United States. Thus, to nature and protection of trade secret law varies from state to state. In
prevent the making, using, and selling of an invention in a particular most states, a trade secret is the right to prevent others from sharing
country, a patent must be pursued in that country. To simplify the confidential information that: (1) is economically valuable; (2) is
process, the inventor or applicant may file a so-called "worldwide" neither known to others nor readily ascertainable; and (3) is

patent application under the rules of the Patent Cooperation Treaty maintained as a secret. Trade secrets do not have to satisfy the strict
requirements of a patent. Therefore, they can include both technical

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and business information. Examples of information that may be described in the manual, or from writing a manual on the system in
protected by trade secrets include databases, customer lists, and their own words. To enforce a copyright, a company must prove that
manufacturing techniques. the alleged infringer had access to the original work and that the
alleged copy is substantially similar to the original work. In other
To obtain legal protection, trade secrets should be identified and words, the copyright holder must prove that the infringer copied the
documented. There is no "Trade Secret Office" or requirement to original work.
register a trade secret. (After all, the main requirement of a trade secret
is that the information remains secret.) A holder of a trade secret must, Original works of artistic expression are instantly and automatically
however, indicate that the information is a trade secret; for example, offered copyright protection upon the creation of the work. The
the holder of the trade secret could mark the items "CONFIDENTIAL." enforcement of a copyright, however, must be preceded by a
registration of the copyright with the United States Copyright Office.
If a trade secret is properly maintained, it will endure forever (e.g., the Copyright notices (e.g., "© Jeffrey Schox 2015") are inserted to notify
Coca-Cola formula). If the trade secret is disclosed to the public, or if others of an underlying copyright. As a general rule, for works created
another person or company independently creates the same after January 1, 1978, copyright protection lasts for the life of the
information, the protection on the trade secret is lost. Strangely, the author plus an additional 70 years. For an anonymous work, a
person or company that independently created the same information pseudonymous work, or a work made for hire, the copyright endures
may be able to subsequently protect their independent creation through for a term of 95 years from the year of its first publication or a term of
patents, trade secrets, and/or copyrights. This quirk encourages the 120 years from the year of its creation, whichever expires first.
dissemination of the information through the patent system, and –
after the patent term expires – it releases the invention into the public With regards to computer software, copyright on the computer
domain. software provides inexpensive IP protection against software pirates
who make and sell exact copies of the computer software. A patent on
Copyright Law the computer software, however, provides expensive IP protection
Like Patent law, Copyright law is provided by the Constitution and against competing products that incorporate the inventions of the
enacted by the federal government. A copyright is the right to prevent computer software.
the reproduction, distribution, and creation of derivative works of any
original artistic expression fixed in a tangible medium (e.g., a piece of Trademark Law
paper, a vinyl record, or a memory chip). Copyrights do not protect the Although not provided by the Constitution, trademark law is enacted by
underlying idea—only the expression of the idea. For example, a the federal government. Unlike the Patent and Copyright laws,
copyright on a system manual offers the right to prevent others from however, Trademark law is also enacted by the states. One could receive
photocopying and distributing copies of the manual. However, it does a state trademark registration that provides protection within that
not offer the right to prevent others from making or using the system

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state, as well as a federal trademark registration that provides Comparison of Intellectual Property Rights
protection throughout the United States.
Trade
Patents Copyrights Trademarks
Secrets
A trademark is a word, symbol, color, musical phrase, or other “Everything Marks that
Business-related Art, in an all-
under the sun identify the
indicator of the origin of particular goods or services. A trademark Subject Matter
produced by
information encompassing
source of goods
(techniques) sense
man” or services
registered with the U.S. Patent and Trademark Office offers the right to
Commercial Use in commerce
exclude others in the United States from adopting and using a Originality,
Utility, novelty, value, generally and either
authorship, and
Requirements and not known, and distinctiveness
confusingly similar mark for similar goods or services. A trademark unobviousness reasonable
fixation in a
or secondary
tangible medium
efforts of secrecy meaning
does not offer the right to exclude others from selling the same goods
Making, selling, Copies, Use of a mark
under an unrelated mark; in many situations, a trademark does not Protection
using, offering performances, that causes a
Against Stealing
for sale, and displays, and likelihood of
offer the right to exclude others from selling completely unrelated Unathorized...
importing derivative works confusion

goods under the same mark. For example, there is no confusion

20 years from The life of the
regarding the independent use of Cadillac for automobiles and Cadillac Endures Publicly
the earliest author + 70 Abandoned
Until... disclosed
priority date years
for cat food.

Rights of
Independent None Full Full None
Trademarks function to associate a particular product or service with a Creators
particular reputation or quality. In this manner, trademarks focus
consumers' time and money on the goods and services that have proven Estimated Security and
~$25,000 confidentiality ~$250 ~$2,500
Costs
their quality and/or value. The consumer may not know the actual procedures

manufacturer of the goods and services. Regardless of the actual

source, trademarks identify and indicate to a consumer products or
services originating from a trusted source.
Why Do Societies Provide IP Rights?
A Brief History of Intellectual Property Rights
Although intellectual property has become an increasingly important
business asset, the actual concept of intellectual property is thousands
of years old. Sybaris, a Greek colony in Southern Italy about 800 BCE,
may have enacted the first patent system. Many centuries later, the
Greek writer Athenaeus stated, "The Sybarites … made a law that … if
any confectioner or cook invented any peculiar and excellent dish, no
other artist was allowed to make this for a year; … in order that others
might be induced to labour at excelling in such pursuits…." Athenaeus:

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The Deipnosophists – Book 12, Page 521 Translated by C.D. Yonge benefits of the patent system include the creation of more inventions,
(1854). while the costs include the limited diffusion and distribution of such
inventions. Ideally, the costs and benefits are carefully balanced by
In 1474, Venice enacted a law that "[E]very person who shall build any carefully choosing the scope and duration of the intellectual property
new and ingenious device … not previously made in this rights. (For example, patent rights, which have a larger scope, have a
Commonwealth, shall give notice of it to the office … when it has been much shorter duration than copyrights.)
reduced to perfection so that it can be used and operated. It being
forbidden to every other person in any of our territories … to make any Economists generally define a public good as both non-rivalrous and
further device conforming with and similar to said [device]… for the non-excludable, which means that consumption of the good by one
term of 10 years" Venetian Patent Statute of 1474. Venice issued 1,600 individual does not reduce the availability of the good for consumption
patents in the 110 years between 1490 and 1600 AD. Venice issued one by another individual. Moreover, no individual can be effectively
of these 1,600 patents to Galileo in 1594 for his "machine for raising excluded from using the good. The exchange of music and movies files
water and irrigating land with small expense and great convenience." on the Internet is an example of the exchange of a public good; the use
of these files by someone does not restrict the use by anyone else, and
During the mid 16th century, rulers in England attempted to attract there is little effective control over the exchange of these files. Non-
artisans from other cities (e.g., Venice) by creating England's own rivalrousness and non-excludability can cause problems for the
patent system. Patents were called Literae Patere, which means "open production of public goods, especially in capital-intensive areas such as
letters" and refers to an open letter of privilege from the government. the pharmaceutical industry. One could easily imagine the disincentives
The English patent system formed the basis of the United States patent of researching, developing, and marketing a particular product, if a
system. competitor could simply make and sell the exact product. In this
manner, the patent system incentivizes continued research,
Economic Incentive Theory development, and marketing of public goods in particular by allowing
The original concept of a patent system appears to have been based on inventors to make their previously non-excludable inventions exclusive.
the Economic Incentive Theory, which postulates that remunerative
incentives motivate individuals to act in a particular manner to protect The Economic Incentive Theory also appears to be the basis of IP rights
their economic interests. As the costs of researching, developing and in the U.S. Constitution, which is explored in the next section.
marketing an invention are frequently high, the Economic Incentive
Theory predicts that inventors have a tendency to avoid these costs at U.S. History of Patent Law
the expense of continued innovation. The patent system provides a The U.S. Constitution (Art. 1, Sec. 8, Cl. 8) states, "Congress shall have
legal mechanism to exclude others from making and selling a patented power… to promote the progress of … useful arts, by securing for
invention for a limited time and, in theory, provides an incentive to limited times to … Inventors the exclusive rights to their …
spend resources to research, develop, and market new inventions. The Discoveries." The First Congress enacted the Patent Act of 1790, which

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created the U.S. Patent System and the U.S. Patent Commission. The while the public (i.e., through a government agency) agrees to provide
Secretary of State (Thomas Jefferson), the Secretary of War (Henry exclusive rights to the invention (i.e., defined by the claims) to the
Knox), and the Attorney General (Edmund Randolph) were the original inventor. The Contract Theory, like the Economic Incentive Theory,
three members of the Patent Commission. The first patent was granted attempts to solve the public good problem. If inventors did not have the
on July 30, 1790 to Samuel Hopkins of Philadelphia for a method of protection of IP rights, they might choose to keep their inventions
producing potash (potassium carbonate), an essential ingredient used secret. Publishing patents generally makes the details of new
in making soap, glass, and gunpowder. technology publicly available, to be used—or improved upon—by
anyone after the patent protection ends.
Letter from Thomas Jefferson (1813)
"If nature has made any one thing less susceptible than all others of How Can You Leverage Intellectual Property?
exclusive property, it is the action of the thinking power called an idea, Introduction
which an individual may exclusively possess as long as he keeps it to The reasons to seek IP rights vary based on the size of the entity (e.g., a
himself; but the moment it is divulged, it forces itself into the "garage" inventor vs. a multi-national corporation), on the industry of
possession of every one, and the receiver cannot dispossess himself of the entity (e.g., biotechnology, automotive, publishing), and on the
it. Its peculiar character, too, is that no one possesses the less, because objectives and strategies of the entity. The reasons typically include one
every other possesses the whole of it. He who receives an idea from me, or more of the following:
receives instruction himself without lessening mine; as he who lights •! Protecting a competitive advantage
his taper at mine, receives light without darkening me. That ideas
•! Generating licensing revenue from a non-competitor
should freely spread from one to another over the globe, for the moral
•! Accessing the channels or assets of a competitor
and mutual instruction of man, and improvement of his condition,
•! Deterring a patent infringement lawsuit
seems to have been peculiarly and benevolently designed by nature,
•! Stimulating an acquisition or an investment
when she made them, like fire, expansible over all space, without
•! Providing leverage in a negotiation with a partner
lessening their density in any point, and like the air in which we
•! Preventing others from patenting the technology
breathe, move, and have our physical being, incapable of confinement
•! Advertising technical or creative ability and increasing credibility
or exclusive appropriation. Inventions then cannot, in nature, be a
subject of property. Society may [, however,] give an exclusive right to
Protecting a Competitive Advantage
the profits arising from them, as an encouragement to men to pursue
An IP portfolio can create a protective fence around the core
ideas which may produce utility…."
technologies of a company. A core technology might include a feature
that moves the price point of the product from a commodity to a
Contract Theory
premium product, a component that increases performance of the
In the Contract Theory, the inventors agree to provide full disclosure of
product, a tool or method that reduces manufacturing costs, or a
their invention to the public (i.e., described in a patent application),

17 18
process that enables a unique distribution model. The fence prevents companies, however, the time and effort to create and execute a
access to the core technologies and forces any competitor to design licensing program is considered too much of a distraction.
around the protected technology. In markets that require large capital
investments, the mere "patent pending" marking on a product may Accessing the Channels or Assets of a Competitor
dissuade a potential competitor from entering the particular market. If In some situations, a company might not be able to fully satisfy the
the competitor does attempt to enter the particular market, a patent demand for their product. According to this strategy, an IP portfolio
may increase the development time and costs for the competition, due can be licensed to a competitor to gain access to their manufacturing
to time and expense spent designing around the protected technology, and distributing channels. Licensing to a competitor would generate an
and may reduce the effectiveness of a competing design. (It will be extra profit stream, which happens to originate from the bottom line of
designed to avoid patent infringement, and not necessarily to provide a the competition. This strategy may also be used to increase acceptance
particular feature.) Large companies, like Apple, spend lots of time and and establish (or at least influence) a standard for a technology.
money protecting their competitive advantage through intellectual
property rights, as was exemplified in the recent highly publicized In other situations, a company may need access to the protected
Apple vs. Samsung patent infringement lawsuit. Startup companies, technology of a competitor. An IP portfolio can be used as a bargaining
however, generally face financial constraints that prevent them from tool to gain access to the necessary technology. In this manner, IP acts
actually enforcing their patent rights. as a bargaining chip for cross-licensing arrangements or strategic
alliances. In 1999, Dell Computer used its patent portfolio to enter a
Generating Licensing Revenue from a Non-Competitor $16 billion cross-licensing deal with IBM. The deal provided Dell with
The technologies of a particular company may be appropriate for low-cost components, which enabled Dell to avoid millions of dollars in
products of other companies in different markets or industries. The IP royalty payments to IBM.
portfolio, under this strategy, can be licensed to other companies to
generate revenue without negatively affecting the competitive position Roger Smith, assistant General Counsel for IBM, stated, "You get value
of the company. Texas Instruments pioneered this approach some years from patents in two ways: through fees, and through licensing
ago by viewing their patent portfolio as a vehicle for generating negotiations that give IBM access to other patents. The IBM patent
significant revenue that would flow to the bottom line of the company. portfolio gains us the freedom to do what we need to do through cross-
Building on the Texas Instruments model, other companies (e.g., IBM, licensing—it gives us access to the inventions of others that are the key
Rockwell, Dow Chemical, and P&G) have been actively licensing their to rapid innovation. Access is far more valuable to IBM than the fees it
patents for the purpose of generating additional revenue. Today, receives from its 9,000 active patents. There's no direct calculation of
revenues from licensing, litigation, and settlements relating to U.S. this value, but it's many times larger than the fee income, perhaps an
patents total well over $100 billion. On an annual basis, IBM typically order of magnitude larger."
receives more than $1 billion from patent licensing. For startup

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Deterring a Patent Infringement Lawsuit however, they cannot make, use, or sell the patented invention of a
According to the American Intellectual Property Law Association startup without acquiring the rights from the startup. In many
(AIPLA), the average patent infringement lawsuit costs several million situations, acquiring the rights means acquiring the entire company.
dollars. Typically, the cost is similar for both the patent owner and the For similar reasons, IP may also stimulate a funding event by an angel
accused infringer. Because of the enormous costs, larger companies investor or a venture capitalist. The investor may view the IP as an asset
often prey on smaller companies by initiating a patent infringement that could stimulate an acquisition in the future or, at the very least,
lawsuit that only the larger company can afford. The smaller company can be sold if the startup fails (thereby mitigating some of the risk of
can deter such patent infringement by building a patent portfolio that the investment). Stimulating an acquisition or increasing valuation
could be infringed by the larger company. Since the larger company has during an investment is one of the other most significant reasons for a
potentially more sales and therefore more liability, they must review startup company to pursue a patent portfolio.
the patent portfolio of the smaller company and ensure themselves that
the smaller company will not bring a countersuit for patent
Providing Leverage in a Negotiation with a Partner
infringement against them. If the larger company does bring a lawsuit,
Often, when startup companies and large companies enter a Joint
the smaller company may be able to avoid the high costs of patent
Development Agreement ("JDA"), the agreement will identify
litigation by settling out of court with a cross-licensing agreement. A
"background" technologies that are owned by the two companies before
cross-licensing agreement, which could be entered without any
the commencement of the JDA and excluded from the shared
exchange of royalty payments, could give the smaller company access to
provisions of the JDA. This background technology, if protected by a
additional technology. Deterring a patent infringement lawsuit is one of
patent, would need to be later accessed (i.e., through a license) by the
the most significant reasons for a startup company to pursue a patent
other company. By filing patent applications on the relevant
portfolio.
technologies before the commencement of the JDA, startups can
benefit from greater leverage in a negotiation with a partner after the
Large companies with enormous patent portfolios do not typically
conclusion of the JDA.
initiate any offensive action against each other because of the potential
retaliation. This "mutually assured destruction" situation occurs in the
Preventing Others from Patenting the Technology
automotive and computer industries; the companies in these industries
Although not typically a stand-alone reason, the patenting of a
simply stockpile patents. Patent portfolios, in these situations, are
particular technology does prevent others from patenting the
valued more on their quantity than their quality.
technology. There are more inexpensive ways to accomplish this same
goal (e.g., publishing an article on the invention), but large companies
Stimulating an Acquisition or Investment
often cite this strategy as a supplement to other strategies.
Larger companies (e.g., Google) often acquire smaller companies based
solely on their ownership of an essential piece of IP. Larger companies
can duplicate the effort, intelligence, and drive of a startup company;

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Advertising Technical Ability and Increasing Credibility
A "patent pending" or "patented" marking indicates to consumers
(sometimes incorrectly) that the product is unique and cannot be
obtained anywhere else. At the very least, a patent can signal the
innovation and enhance the technological prestige of a company.

Chapter Two
The Patent System
Korekiyo Takahashi, who would later become the twentieth Prime
Minister of Japan, was sent to the United States in the late nineteenth
century. He later stated, "We have looked to see what nations are the
greatest, so that we can be like them. We asked ourselves what is it that
makes the United States such a great nation? We investigated and we
found that it [is] patents, and we will have patents" (K. Takahashi, First
Director General of JPO, appointed 1885)

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Chapter Contents Types of Patent Protection
•! Types of Patent Protection Introduction
o! Introduction There are three types of patents: utility, design, and plant. The United
o! Utility Patents States Patent and Trademark Office (USPTO or PTO) has granted over
o! Design Patents 9,000,000 utility patents, over 500,000 design patents, and over
o! Plant Patents 17,000 plant patents. The utility patent, being the most common, is the
•! Steps of the Patent Process "default" patent type. When someone refers to a "patent," they are most
o! Introduction likely referring to a "utility patent." Similarly, after this chapter,
o! Filing a Patent Application and Formal Examination "patent" will be used to refer to a "utility patent."
o! Publication
o! Search and Substantive Examination Utility Patents
o! Grant The utility patent covers any "process, machine, manufacture, or
•! Sections of a Utility Patent composition of matter." Here are a couple of examples:
o! Introduction •! Process—U.S. Pat. No. 135,245 issued to Pasteur in 1873 for a
o! Front Page process for brewing beer and U.S. Pat. No. 6,878,885 assigned to
o! Specification Weight Watchers in 2005 for a process for controlling body weight
o! Claims •! Machine—U.S. Pat. No. 821,393 issued to Orville and Wilbur
Wright in 1906 for a machine that flies and U.S. Pat. No. 6,651,766
issued to Dean Kamen in 2003 for a personal mobility vehicle (sold
under the "Segway" trademark)
•! Manufacture—U.S. Pat. No. 2,717,437 issued to Mestral in 1955 for
a velvet type fabric (sold under the "Velcro" trademark) and U.S.
Pat. No. 4,289,794 assigned to General Mills in 1981 for a gasified
candy (sold under the "Pop Rocks" trademark)
•! Composition of Matter—U.S. Pat. No. 644,077 issued to Hoffmann
in 1900 for acetylsalicylic acid (sold under the "Aspirin" trademark)
and U.S. Pat. No. 4,736,866 assigned to Harvard on 1988 for a
transgenic non-human mammal (known as the Harvard Mouse).

In the early years of the United States Patent and Trademark Office
(USPTO), about 20 patents were granted per year. In 2005, more than

25 26
3,000 patents were granted per week; as shown in the chart of Figure 1, electric lamp … consisting of a filament of carbon of high resistance …
patents are granted at an increasing rate. secured to metallic wires." The Amazon patent covers only "a method of
placing an order for an item comprising … displaying information
identifying the item; and in response to only a single action being
performed, sending a request to order the item along with an identifier
of a purchaser of the item to a server system … retrieving additional
information previously stored for the purchaser…; and generating an
order to purchase the requested item for the purchaser … using the
retrieved additional information; and fulfilling the generated order to
complete purchase of the item, whereby the item is ordered without
using a shopping cart ordering model."

Design Patents
A design patent, also known as "industrial designs" outside the United
States, covers the ornamental or aesthetic features of a product. Here
are a few examples:
•! U.S. Des. No. 150,683 issued to Charles Eames in 1948 for the
"LCW" chair
•! U.S. Des. No. 86,754 issued to Strauss in 1932 for the "Golden
Figure 1. Approximate year for various issued patents
Gate" bridge
•! U.S. Des. No. 199,433 issued to Ferdinand Porsche in 1964 for the
The coverage that the utility patent provides is determined by the "Porsche 911"
claims. Therefore, the test for infringement of a utility patent includes •! U.S. Des. No. 499,112 assigned to Apple Computer in 2004 for their
interpreting the claims and comparing the interpreted claims with the "OSX Hard drive icon"
accused infringing product or method. The media, and hence the
public, are both often confused by the scope of the coverage of a patent. The test for infringement of a design patent includes the "ordinary
It is not uncommon to read about Edison's "light bulb patent" or observer" test, which states that "[I]f, in the eye of an ordinary
Amazon's "one-click patent." It is a common misconception that the observer, giving such attention as a purchaser usually gives, two
former might cover every light bulb, or that the latter might cover every designs are substantially the same, if the resemblance is such as to
time users click with their mouse just once. In fact, as stated above, the deceive such an observer, inducing him to purchase one supposing it to
protection that the utility patent provides is determined by the claims.
According to the claims, Edison's "light bulb patent" covers only "an

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be the other, the first one patented is infringed by the other" Gorham Plant Patents
Co. v. White, 81 U.S. 511 (1871). A plant patent covers asexually reproduced plants, such as cultivated
sports, mutants, hybrids, and newly found seedlings. Asexually
Unlike utility patents, design patents do not cover the functionality of a propagated plants are reproduced without seeds, such as by the rooting
product—only the ornamental or aesthetic features. Consider two of cuttings, by layering, budding, grafting, or inarching. Plant patents
products that have the exact same functions. If the second product is do not cover tuber-propagated plant (e.g., the Irish potato and the
designed to look completely different, it does not infringe on the design Jerusalem artichoke) or a plant found in an uncultivated state. Like a
patent of the first product. In contrast to a utility patent, which usually utility patent, the plant patent lasts for a term of 20 years from the
takes 2–5 years and costs ~$40,000, a design patent is relatively fast filing date (or the earliest priority date).
(1–2 years) and cheap (~$2,000) to obtain.
Steps of the Patent Process
Trademark law offers protection on the look and feel of the packaging Introduction
(called "trade dress") of a product if it acquires a "secondary meaning" The USPTO, which is an agency of the U.S. Department of Commerce,
or "acquires distinctiveness," which is typically gained over an extended administers the patent and trademark laws. It examines patent and
time period through advertising or massive exposure. Two great trademark applications, grants patents and registers trademarks, and
examples of trade dress include the triangular shape of the packaging maintains a search facility and database of patents and trademarks. In
for Toblerone chocolates and the contoured shape of the bottle for some respects, the USPTO is the scientific and technical counterpart to
Coca-Cola soda. In contrast to trade dress, which can potentially last the Library of Congress. Through the preservation, classification, and
forever, design patents do not require secondary meaning or acquired dissemination of patent information, the USPTO aids and encourages
distinctiveness; instead, design patents expire after 14 years and enter scientific and technical advancement.
the public domain.

The USPTO has no jurisdiction, however, over questions of the

In contrast with copyright (protection of the artistic expression), design infringement and enforcement of patents or trademarks. Parties cannot
patents offer a broader scope (protection of multiple embodiments or complain to the USPTO about infringement issues—parties can only
variations), but a limited term (14 years for a design patent compared bring an infringement lawsuit, typically in federal court.
with life of the author plus 70 years). In further contrast, copyright
protection does not require novelty or non-obviousness over prior There are generally four steps in the patent process: (1) filing of a
artistic expression. Furthermore, copyright protection does not offer patent application and formal examination; (2) publication of the
protection against later artistic expressions that were independently patent application about 18 months after the priority date; (3) search
created. and substantive examination by the USPTO at some point about 12-36
months after the filing date; and (4) grant of a patent.

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Filing a Patent Application and Formal Examination Publication
A complete patent application (which is clumsily referred to as a "non- Unless specifically instructed otherwise, the USPTO automatically
provisional" patent application) includes: publishes patent applications 18 months after the earliest priority date.
•! A specification that includes a written description of the invention The publication of patent applications is not a grant of any patent
and drawings if necessary for the understanding of the invention, rights. An applicant does not have any rights over his or her invention
•! At least one claim to define the scope of protection and coverage of until after the pending application has been allowed and granted (or
the patent, "issued"); it is simply a publication of the patent application (e.g., an
•! A declaration by the inventors that—to the best of their article in a technical journal).

knowledge—they are the first inventor of the subject matter of the

patent application, and In the United States, the publication of a pending application is

•! Government fees, including filing, search, and examination fees. confusingly similar to the publication of an issued patent. Pending
applications typically have an 11-digit number that starts with the

After the patent application is filed, the patent office examines the publication year (e.g., 2003/0095096 for patent application on the

application to ensure that it complies with the administrative Apple iPod click wheel), while issued patents typically have 7-digit (or

requirements and formalities (e.g., that all relevant documentation is fewer) number (e.g., U.S. Patent Number 7,345,671 for the issued

included and the application fee has been paid). The patent application patent on the Apple iPod click wheel). The published applications and

is not assigned an official filing date until the specification (with any issued patents look very similar, but they are dramatically different—

necessary drawings) and at least one claim are filed with the USPTO. one is simply a publication of the pending application, while the other

The declaration and the government fee may be filed later without is a grant of patent rights in an issued patent. For this reason, be extra

affecting the filing date if accompanied with the required late fee. careful when first reviewing a patent document.

During the early years of the patent system, the USPTO required The publication of patent applications allows for a better understanding

models or exhibits of the subject matter of the patent applications. of the technical advancements of a competitor. But, more importantly,

Now, the USPTO may require a working model or other physical exhibit the publication of patent applications also allows for more effective

only if deemed necessary. This is very rare. A patent application for an searches of the current state of the art. Not long ago, before the

alleged perpetual motion device, however, is another matter. The publication of patent applications, pending applications were kept

USPTO typically requires a working model in the case of perpetual secret (even to other Examiners at the USPTO) until they were granted.

motion devices. Since patent applications can be pending for several years, not
publishing the patent applications prevented the Examiners from
finding relevant prior art, so the Examiners issued patent applications
on otherwise unpatentable inventions.

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Search and Substantive Examination •! The invention, as defined in the claims, is directed at some matter
After the patent application passes through the convoluted process at that is too abstract and, therefore, fails the subject matter eligibility
the USPTO and rises to the top of a queue, the patent office conducts a requirement,
search to determine the prior art in the specific field to which the •! The invention, as defined in the claims, has been described in the
invention relates. Prior art is all information (e.g., issued patents, prior art and, therefore, fails the novelty requirement,
published applications, technical publications, and sold products) in •! The invention, as defined in the claims, is an obvious combination
both the United States and in other countries that has been disclosed to or modification of the prior art and, therefore, fails the non-
the public in any form before a given date. The results of the search are obviousness requirement, and
used during the substantive examination to compare the invention of •! The invention, as defined in the claims, is not described in a
the patent application with the prior art. manner that allows someone to make and use the invention and,
therefore, fails the enablement requirement.
The aim of the substantive examination is to ensure that the application
satisfies the patentability requirements. In order for an invention to be In response to the office action, an applicant may modify or "amend"
considered patentable, the patent application must cover proper the claims of the patent application, present an argument against the
subject matter (known as the "proper subject matter" requirement), rejections, or both amend the claims and argue the rejections. The
must be useful (known as the "utility" requirement), and must teach document with these amendments and/or arguments is typically called
someone skilled in the art to make and use the invention (known as the an "office action response" (or simply "response"). The back-and-forth
"enablement requirement"). These requirements are explored in process in which the USPTO sends an office action that rejects the
Chapter Three. The invention of the patent application must also be claims and the applicant sends a response that amends or argues the
new and not an obvious combination or modification of the prior art claims (i.e., "prosecution") typically repeats two or three times before
(known as the "novelty" and "unobviousness" requirements), which are the patent application is allowed or finally rejected. In fact, because the
explored in Chapter Four. Finally, the patent application must be filed prosecution process is considered a negotiation with the USPTO, patent
within certain time limits (known as the "statutory bars" or, within this applications that have been accepted without any rejections are often
book, as the "timing requirements"), which are explored in Chapter suspected of having too narrow of patent scope.
Five.

The applicant may change the scope of the claims of the patent
Once the application has been examined, the results of the examination application as long as the originally filed specification supports the
are sent to the applicant in a document called an "office action"— an changes. The specification (i.e., the written description and the
action taken by the Patent Office. An office action typically contains drawings) can be changed only to correct inaccuracies of description
several rejections, including: and definition or unnecessary words, and to provide substantial
correspondence between the claims, the description, and the drawing.

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The changes cannot include new matter beyond that found in the prior art. Opposition proceedings may be pre-grant and/or post-grant,
originally filed specification. Matter not found in the originally filed and are allowed within the specified time limits. As of March 16, 2013,
specification cannot be added to the application and can be claimed Congress has enacted statutes that implement a similar opposition
only in a separate application. procedure. A third party may challenge an issued patent filed after
March 16th if the petitioner requests a review within nine months of the
Grant patent's issuance date and demonstrates that one or more of the
If the Examiners determine all requirements have been met, the patent patent's claims is unpatentable. Since a company that competes with
office allows the patent application and grants (or "issues") a patent. the applicant is more incentivized than the patent office to find prior art
For several decades, the typical allowance rate (i.e., the ratio of the that would limit the issued patent, the opposition proceedings are
number of patent applications granted to the number of patent hoped to increase the quality of the patent process.
applications filed) was about 60% to 70%. As noted in Figure 2, created
by Dennis Crouch and found on the nationally recognized Once a patent has been issued, there are methods of correcting or
PatentlyO.com blog, the allowance rate rose to a peak of about 80% in amending the patent. These methods include a certificate of correction,
2000 and dropped to a low of about 50% in 2010. a reissue application, and a reexamination of the patent. The certificate
of correction is generally used for smaller typographical errors, while a
reissue application is generally used for defects that make the patent
inoperative or invalid (e.g., the claims being too broad or too narrow). A
reexamination is generally used when newly discovered prior art raises
an issue of potential unpatentability, and can be filed by the patent
owner or another entity (e.g., a competitor or a disgruntled employee).

As briefly mentioned in Chapter One and fully explained in subsequent

chapters, the grant of a patent provides the applicant with the right to
exclude others from making, using, or selling the patented invention. A
patent grant does not provide any rights to the applicants to make, use,
or sell the invention themselves. Many inventors do not understand this
difference, which can lead to disastrous results.

Figure 2. Allowance Rates for fiscal years 1986–2014

Many patent offices outside of the United States provide a period

during which third parties may oppose the grant of a patent based on

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Sections of a Patent Claims

Introduction The claims, which make up the "legal section" of the patent, define the

The actual documents for published applications and issued patents scope of protection and coverage of a patent. The claims are absolutely

have three major functions: (1) to provide details about the inventor crucial to a patented invention. Poorly drafted claims may lead to a

and the owner; (2) to describe the nature of the invention, including worthless patent, even for a truly valuable invention, which is easy to

how to make and use the invention; and (3) to define the legal scope of circumvent or design around. The claims are the basis on whether the

the patent documents. These three major functions are accomplished in invention satisfies the novelty and non-obviousness requirements. The

three corresponding sections: front page, specification, and claims. claims are also the basis on whether another product or method
infringes that patent. In patent litigation, interpreting the claims is

Front Page generally the first step in determining whether the patent is valid and

The front page of both published applications and issued patents whether the patent has been infringed.

includes the Title, the name of the Inventor and the Assignee, and an
Abstract. The Title and Abstract merely aid in the classification and
search of the patent documents; they have no legal significance. The
Inventor and Assignee state the inventor and the owner, respectively, at
the time of either the publication of the application or the issuance of
the patent. This information on the front page is never updated (and is
often out of date months after the publication or issuance date). The
current information on the owner of the patent is in the Assignment
Records of the patent office.

Specification
The specification, which is often considered the "technical section" of
the patent, includes the drawings and the detailed description. The
specification of a patent application must meet the enablement
requirement by describing the invention in sufficient detail so that
anyone skilled in the same technical field could make and use the
invention without further inventive effort or excessive experimentation.
If this requirement is not met, the patent may not be granted or may be
revoked after it is challenged in a court action.

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