There are several major hurdles an inventor must overcome before patent protection can be obtained. First, the applicant for patent must be able to demonstrate that he or she has developed a new, useful, and not obvious process or product. Since a patent cannot be obtained unless the invention is new, the invention must not have been known or used by others in the United States or patented or described in a publication in the United States or any foreign country before the invention was made by the applicant. In addition, if the invention was patented or described in a publication anywhere in the world or in public use or sale in the United States more than one year prior to the date of filing the application, the patent will be denied.

The invention must also be capable of some beneficial use, and cannot be “frivolous, fraudulent, injurious to morals, health or good order.”The invention must also not be obvious, which is the most common reason for Patent Office rejection. It may well be that the invention is something that has never before existed; but, if the Patent Office determines that a mythical person having access to all the available information concerning that particular field of technology would have “known” how to make the invention, then the invention is rejected as being obvious.

A simplified example of an obviousness rejection is as follows:

Suppose a person invents a coffee cup having a square rather than a rounded handle. It may be that such a product has never before existed. However, if the Patent Office finds that a square handle has been used previously on some other device, such as a suitcase, it may well determine that putting a square handle on a coffee cup would have been obvious to an imaginary person who is knowledgeable about all publicly available information.

The invention must also fit into one of the categories of patentable subject matter. Thus, the invention must be new, useful, and non-obvious, and be either a:

  • Process;
  • Machine;
  • Manufactured article;
  • Composition; or
  • An improvement of any of the above.

The term “process” means a process, art, or method, and it includes a new use of a known process, machine, manufactured article, composition of matter, or material. A process may also be defined as one or more steps or acts performed on materials to produce a result. An example of a process would be the use of DDT to kill insects. The term “machine” includes mechanical devices or combinations which perform some function and produce a certain effect or result. Examples of machines include carburetors, vacuum cleaners, and lawn mowers. A “manufactured article” refers basically to any product or thing made by industry or man. Examples of manufactured articles would be carpets, toothbrushes, and purses. A “composition” is matter formed by the mixture of two or more ingredients. Examples of compositions are drugs, insecticides, adhesives, and electroplating solutions. An “improvement” is an addition, simplification, or variation relating to an existing machine, process, manufactured article, or composition of matter.

Several Court decisions have provided further guidance on subject matter which is included in the categories of patentable subject matter. For example, the Courts have determined that both software and certain business methods are patentable. (Diamond v. Diehr, In Re Alappat, State Street Bank and Trust v. Signature Financial Group, Inc.)

The type of patent described thus far is known as a utility patent. The term of utility patents was changed after passage of the General Agreement on Tariffs and Trade (GATT) as follows:

  1. For utility patents filed on or after June 8, 1995:
    Term of twenty years from the date of filing. However, see further details below.
  2. Issued and enforceable patents which issued prior to June 8, 1995:
    The term of these patents is automatically modified to the longer of: (a) twenty years from the date of filing; or (b) seventeen years from the date of issue.
  3. Patents issuing on or after June 8, 1995 from an application which was filed prior to June 8, 1995.
    The term of these patents is the longer of: (a) twenty years from the date of filing; or (b) seventeen years from the date of issue.

When calculating the twenty (20) year rule, if the application relies on an earlier filed application, then the earlier application’s filing date is used.

As indicated above, a twenty-year term from the date of filing (or priority date if earlier) is the current term of recently filed U.S. patents. The American Inventors Protection Act of 1999 introduced an opportunity to increase the term based on administrative and other delays on the part of the U.S. Patent Office. Any increase in the term is offset by delays by the applicant to engage in reasonable efforts to conclude prosecution. This new provision applies to all applications filed after May 29, 2000. Note that you cannot have a negative adjustment to the term (e.g., you cannot reduce the term to less than 20 years under the provision).

Examples of delays by the applicant which will reduce any term extension are:

  • failure to file a response to a U.S. Patent Office Action within (3) months;
  • filing supplemental responses; and
  • using specific types of certificates of mailing.

The list of delays is quite lengthy, but the common thread running through the delays is that responses to U.S. Patent Office inquiries must be made timely and thoroughly.

A second type of patent is known as a design patent, which is available for anyone who invents any new, original, and ornamental design for an article of manufacture. In other words, design patents cover only the specific appearance of the article, rather than the concept of the article itself. Patents for designs are granted for a term of 14 years. Examples of articles for which design patents have been obtained are lamps, vases, and furniture.

A new third type of patent application was introduced by the GATT based changes to the U.S. laws.

This third type of application, known as a “provisional application” is intended to provide a method for an applicant to gain an early U.S. filing date relatively inexpensively. For example, currently, the Patent Office filing fees for a provisional application are $75 to $150. The life of the provisional application is one year for the date of filing and is non-extendible. During this time period, the application is not examined. Also, the twenty (20) year term of any patent issuing from the application does not begin to run-unless a direct conversion to a utility patent is made. In other words, so long as a regular utility application is filed claiming priority to the provisional application, instead of filing a direct conversion application, then the twenty year term is not affected by the provisional application.

Like a regular utility application, the application must list inventors, provide drawings (if necessary for an understanding of the invention), and comply with disclosure and best mode requirements, among others. However, no claims are required in the provisional application.

If the applicant wishes to maintain the benefit of the provisional application, a regular application must be filed while the provisional application is pending (e.g., before the expiration of the one- year life). In addition to adding claims and complying with other matters, the regular application must also include at least one inventor who was listed as an inventor on the provisional application.

Although the pendancy of the provisional application may not begin the twenty year term of a U.S. patent, the filing does commence the one-year Paris Convention priority period for filing foreign applications. Therefore, foreign filings must be filed by the first anniversary of the earliest provisional application. Because these are general rules, you should be sure and discuss the strategies, as well as the pros and cons, of filing a provisional application with your attorney before doing so.

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