With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.
Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
What are the different types of patents?
There are three types of patents that an inventor can obtain in the United States: a utility patent, a design patent and a plant patent. The type of patent with which most people are familiar is a utility patent, which is a patent for a new and useful invention. The subject matter for each of the three types of patents is discussed further below.Utility Patents
In order to obtain a utility patent, the invention must be for a “new and useful process, machine, manufacture, or composition of matter . . . .” This requirement is fairly straightforward and is usually not a problem, except in certain areas.
A series of very vague, indefinite and often misleading maxims have arisen over time to address what may and may not be patented. For example, “mathematical algorithms,” “mental steps,” “laws of nature,” “products of nature,” “methods of doing business,” and “printed matter” have, in the past, been held to be not patentable. Patents are regularly issued that defy these maxims. For instance, purified products of nature are generally patentable, assuming that the other requirements of patentability are satisfied. In addition, computers and the Internet have now transformed methods of doing business and mathematical algorithms into protectable machines and processes.
Decisions by the Federal Circuit Court of Appeals favorable to patent applicants have caused the U.S. Patent and Trademark Office to rewrite and loosen its guidelines for examining patent applications for software inventions.
Medical procedures are patentable in the United States; however, the patentee’s ability to sue all infringers of a patent directed to a medical procedure has been curtailed by recent legislation. This legislation makes it even more important to consider likely defendants when drafting a patent claim. For instance, it is usually easier to sue the manufacturer of an infringing product than the consumers, so the patent should be drafted to cover the product as it leaves the factory—as opposed to how it may be used by the consumer—so as to avoid having to show the additional elements of contributory infringement. Many foreign countries limit the patentability of medical procedures.
Design Patents
Design patents have different subject matter requirements from utility patents, as set forth in 35 U.S.C. sec. 171, which reads as follows: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”
One difference between utility patents and design patents is the length of their terms. Utility patents generally have a term of twenty years from the earliest effective filing date—or seventeen years from issuance, depending on when they were filed. Design patents have a term of fourteen years from issuance.
The aspects of the design claimed in a design patent must be ornamental, as opposed to functional. This can sometimes be a very fine distinction. Design patents can be very useful (especially as a surrogate for or in conjunction with trade dress and other trademark protection), but are not considered to be as valuable as utility patents, since they are not supposed to protect the underlying concept that makes a product function the way that it does, and since it is usually very easy to design around an ornamental design. Design patents, on the other hand, are generally easier and less expensive to obtain than utility patents.
Plant Patents
It is possible to get a patent on living plants, including hybrids, mutants, and newly found seedlings, provided that the plants are asexually reproduced and are of a distinct and new variety. Plants can also be protected by utility patents in certain circumstances. The requirements for obtaining plant patents are set forth in 35 U.S.C. sec. 161.
Pursuant to Article 1, section 8, clause 8 of the U.S. Constitution, the U.S. Congress has the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has exercised this power by creating statutory schemes for copyrights and patents. The rules for what is and is not patentable, as promulgated by Congress, are set forth below. Congress has also set up the United States Patent and Trademark Office (the USPTO), whose primary responsibility is to review patent applications and issue a patent if the application meets the statutory requirements. (More)
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