Please note that significant changes were made in U.S. patent law in 1995 and again in 1999. These changes were made in part to better harmonize U.S. patent law with that of most other countries.
U.S. Patents
A patent is a right to prevent others from making, using, or selling an invention covered by the patent. Patents are granted by governments or, as is true of the European Patent Office, by regional patent offices established by treaty. Generally patents may be enforced only in the jurisdiction that has granted them. Unless other countries are expressly referred to, the following discussion covers U.S. patents only. Although some variation exists from country to country, foreign patents generally have the same requirements as U.S. patents; however, foreign patents are often much more easily barred (For more information on barring events see below.)
The following is a brief summary of patent requirements, which are defined in great detail in the law. Please call one of WARF's intellectual property managers if you have specific questions. You may also review additional information on the U.S. Patent and Trademark Office Web site.
Please also note that this discussion does not take into account the requirements for certain types of patents, most notably design patents that protect the ornamental appearance of useful objects. Plant patents are also somewhat different from other patents and are discussed separately in the section on Plant Variety Protection.
Basic Requirements and Terminology
The following requirements must be met for a patent to issue:
Inventorship: To obtain a patent, you must be the sole or a joint inventor. In other words, it is not enough to be an employer, major professor, directed lab technician, or co-author on a paper. The sort of contribution that makes a person an inventor is set by law. Deliberately excluding an inventor or including an extra inventor can make a patent invalid. WARF refers any questions about proper recognition of inventorship to the patent attorney handling the case.
Patentable Subject Matter: To be patented, an invention must be the right sort of discovery or technical advance. For the standard type of patent, called a utility patent, an invention must be either a machine, composition of matter, process, or article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology.
You may have heard of other sorts of patents, but most can be reduced to the basic categories just listed. For example, "uses" or "methods" are processes; "systems" tend to be processes, machines, or articles of manufacture; "software patents" usually cover processes or machines; "compositions of matter" or "articles of manufacture" may cover bacterial cultures, cloned DNA, and other biological materials. "Improvement patents" can be almost anything.
Utility: The patent statute specifies that an invention, must be useful, that is, it must be good for some applied purpose.
Novelty: The invention must be new - the exact same thing must not have existed or been done before.
Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it is rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of prior art, barring events, and bar dates.
Prior Art: Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is called the prior art, i.e. the knowledge of prior artisans or people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.
The inventor's own publications made within a year prior to the filing of the patent application do not prevent the inventor from obtaining a U.S. patent. However, such publications do prevent foreign patents from being obtained, because of their requirement for absolute novelty.
Barring Events: In the U.S., the publication, public use, offer for sale, or sale of an invention anywhere in the world is known as a barring event, because if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention.
Bar Date: This is the date where one or more barring events prevent a patent application from being filed or further prosecuted.
Patents are Easily Barred
It is very easy to do something that constitutes publication or public use without realizing it. While the patent statute refers to "printed publication" as the barring event, this term is interpreted very broadly. It includes any printed, photocopied, typed, microfilmed or otherwise fixed communication. Not only conventional academic publications but also abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc.
While the U.S. provides a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications.
Once again, this discussion of prior art and barring events is only a summary overview. The law includes various exceptions, and a seemingly common term, such as "printed publication", may have a special meaning. Thus, it is vital to tell the attorney drafting your application about any possibly barring event or prior art for two reasons:
- Only if fully informed can the attorney make the best possible case for your patent. Good patent claims can sometimes still be made even though the disclosed material is prior art.
- Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
To initiate the patenting process, the patent attorney describes the invention in a patent application. The description must be complete enough to enable a person skilled in the field to practice the invention. This enabling disclosure must also reveal the best mode of practicing the invention. In other words, the version that the inventor considers to be the best at the time of filing must be described in the patent. If the disclosure is not enabling, the application will be denied. And if the best mode is not revealed and the patent is challenged in a lawsuit, a court may find the patent to be invalid.
A patent application ends with a numbered series of statements called claims, each of which sums up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims determine what the patent covers.
After a patent application is filed in the United States Patent and Trademark Office, the following events generally take place:
Application Review: A patent examiner reviews the application for utility, novelty, non-obviousness, and enabling disclosure.
Office Actions: The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims.
Patent Prosecution: The attorney replies, and may adjust the claims, in order to convince the examiner to accept or allow them. These efforts are called patent prosecution. The patent prosecution process may take anywhere from a few months to several years, and, of course, is not always successful.
Patent Issuance: If the application is granted, the patent is issued, with the text of the application published as the patent document.
Terms of the Patent
Once a patent is granted, the owner has the right to limit who may practice the invention. The owner may practice the invention himself or herself, or may authorize another to do so by granting a license, generally in return for a negotiated fee. Under WARF's inventor contract, the inventor assigns the patent to WARF, which then becomes the patent owner. WARF earns money for the inventors and UW-Madison by licensing the invention to a company that commercializes the invention.
Occasionally, someone infringes a patent by practicing the invention without the permission of the inventor. All patent infringement negotiations and litigation are managed by WARF.
As a result of a 1995 change in U.S. patent law, the life of a utility patent is now 20 years from the filing date of the application (for applications filed on or after June 8, 1995). This change harmonizes U.S. patent law with that of most of the rest of the world. Formerly, a U.S. patent had a life of 17 years from the date of issuance. WARF patents and applications filed prior to June 8, 1995, have the advantage of having a life that is the longer of the two periods.
Provisional Patent Application
In 1995 the U.S. introduced a new type of patent application, called a provisional patent application. This provisional application is essentially the same as similar provisional filings offered by some foreign countries. These provisional filings have been very important overseas, since most other countries follow a first-to-file invention convention, instead of the first-to-invent convention used in the U.S. The provisional application allows an early filing date to be created before all the details are written in the final patent application.
A provisional patent application is a document filed with the U.S. Patent and Trademark Office that meets the statutory requirements for a patent, but need not contain claims. The provisional application must be followed by a regular patent application on the disclosed material before one year has elapsed. The provisional may be used to create an early filing date if a patent has a bar date due to a prior disclosure. A provisional application may also move the entire patent period into the future by as much as a year. This is an advantage when it is expected that the technology will have a stronger royalty stream later in its patent life, as is the case with many pharmaceuticals.
However, provisional patents have a downside, as well. Many foreign patent offices will not recognize that a U.S. provisional has established a prior filing date if the provisional does not meet all their criteria. It is also unclear how much detail should be included in a provisional application. WARF files provisional applications in appropriate circumstances and continues to monitor developments on this form of protection.
Foreign Patents
Please note that foreign patent law in certain respects can be quite different from U.S. law. At the same time, most foreign countries tend to follow similar rules. This section discusses foreign patent law in general. There may be exceptions on a country-by-country basis.
If a U.S. patent application is made prior to public disclosure of the invention anywhere in the world, then in most cases patents can be filed in foreign countries. Please note that prior disclosure anywhere in the world before a U.S. patent application is filed normally bars foreign patentability. Also, some material that is patentable in the U.S. may not be patentable in all countries (e.g. medical procedures).
Foreign patents typically are very expensive; the cost of a portfolio of patents in ten key overseas countries is approximately $100,000. With many technologies, the U.S. market alone can be 30%-50% of the world market, making the selection of other markets even more important.
