COSC3325 3/24/2005 Patent Laws Website: WWW.USPTO.GOV 1. US Laws US Constitution, Article 1, Section 8 "Congress shall have power ... to promote the science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" The first patent law was enacted in 1790. The patent laws underwent a a general revision in 1953 and codied into Title 35, US Code. Additionally, on 11/29/1999, Congress enacted the American Inventors Protection Act of 1999(AIPA), which further revised the patent laws. The patent law specifies the subject matter for which a patent may be obtained and the conditions for patenability. The law establishes The United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents. 2. Treaties Paris Convention for the Protection of Industrial Property adhered by 140 countries. It provides that each county guarantees to the citizens of other countries the same rights in the patents and trademark matters that it gives to its own citizens. It also provides for the right of priority in the case of patents, trademarks and industrial design (design patents). This right means that, on the basis of a regular first application filed in any member countries, the applicant may, within a certain time period, apply for protection in all other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applications will have priority over application for the same invention that may have been filed during the same time period by other persons. Moreover, these later applications will not be invalidated, on the basis of the first application, by any acts accomplished in the interval, such as publication or exploitation of the invention, the sale of copies of the design or use of the trademark. Patent Cooperation Treaty of 1978 adhered to by some 90 countries facilitates the filing of applications of patent on the same invention in member countries by providing, among others, for centralized filing procedures and standardized application format. Under the US law, in many cases of inventions made in the United States, it is necessary to obtain a license from the Director of USPTO before applying for a patent in a foreign cuntry. 3. Differences among copyright, patent and trademark a. Patent A patent for an invention is a property right to the inventor, issued by the United States Patent and trademark Office. Generally, the term of a new patent is 20 years (except 14 years for Design Patent) from the date on which an application for the patent was files in the United States or in special cases from the date an earlier related application was files. US patent grants are only effective in the US, US Territories, and US Possessions. Under certain circumstances, patent term extensions or adjustments are available. The right conferred by a patent grant is "the rights to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale or import, but the right to exclude others from making, using, offering for sale, selling or importing. Once a grant is issued, the patentee must enforce the patent without the aid of the USPTO. There are three types of patents: Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture or compositions of matters or any new useful improvement thereof. (Primary patent) Design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Plant patent may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants. b. Trademark or Servicemark A trademark is a word, name, symbol or device that is used in trade with goods to indicate the source of goods and distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks used in interstate or in foreign commerce may be registered with the USPTO. c. Copyright Copyright is a form of protection provided to the authors of "original Works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works such as computer programming, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of copyrighted works, to perform copyrighted work publicly, or to display copyrighted work publicly. The copyright protects the "Form of Expressions" rather than the subject matter of the writing. For example, a description of a machine can be copyrighted. But this will only prevent others from copying the description. It will not prevent others from writing a description of their own or from making and using the machine. Copyright is registered with the Copyright Office of the Lbrary of Congress. 4. Subject matter The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. Any person who invents or discovers any new and useful process any new and useful machine any new and useful manufacture any new and useful composition of matter, or any new and useful improvement thereof can obatain a patent, subject to the conditions and requirements of the law The word "process" is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The word "manufacture" refers to articles that are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may includemixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and processes for making the products. Exceptions: a. The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utolization of special nuclear material or atomic energy for atomic weapons. b. Limits of subject matter that can be patented: mathematical formulas laws of nature physical phenomena abstract ideas All for lack of usefulness. 5. Required conditions: Useful Novel Non-obvious Useful: refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine that will not operate to perform the intended purpose would not be called useful and therefore would not be patented. Novel: New and innovative as an invention cannot be patented a. if the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for the patent, or b. if the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States. Non-obvious: Sufficiently different from most similar inventions. For example, the substitution of one color for another or changes in sizes are not ordinarily patentable. 6. Nature of patent and Patent rights The patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office, and is either signed by the Director of the USPTO or is electronically written thereon and attested by an Office offficial. The patent contains a grant to the patentee, and a printed copy of the specification and drawing is annexed to the patent and forms a part of it. The grant confers "The right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" and its territories and possessions for which the term is generally 20 years from the date of the application filed in the United States or if the application contains a specific reference to an earlier filed application, from the date of the earliest such application and subject to the payment of maintenance fees as provided by law. The patent does not provide the right to make, use, offer for sale, or sell or import the inventionbut only grants the exclusive nature of the right. Any person is ordinarily free to make, use, offer for sale, or sell or import anything he/she pleases, and a grant from the government is not necessary. The patent only grants the right to exclude others from just doing that. Since the patent does not grant rights to do those things, the patentee's own right to do so depends on the rights of others and whatever general laws might be applicable. A patentee, merely because he/she has received a patent for an invention, is not thereby authorized to do those things if doing so would violate any law. An inventor of a new automobile who has obtained a patent thereon would not be entitled to use the patented automobile in violation of the laws of a state requiring a license, nor may a patentee sell an article, the sale of which may be forbidden by a law, merely because a patent has been obtained. The term (20 years for utility and plant patents, 14 years for design patent) can be extended or adjusted for certain pharmaceuticals and for certain circumstances as provided by law. A maintenance fee is due for all utility patents 3 1/2, 7 1/2 and 11 1/2 years after the original grant was issued when the application was filed after 12/12/1980. 7. Design Patent: Non-functional or non-structural a. To any person who has invented any new and non-obvious ornamental design for an article of manufacture. This patent only protects the appearance of an article but not its structural or functional feature. b. Normally, a term of 14 years and no maintenance fee required. 8. Plant Patent. a. To anyone who has invented and discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. b. Asesually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc. c. As for Tuber-propagated plants for which a patent cannot be obtained, the term "Tuber" is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch. Examples of these tuber-propagated plants include the Irish potato and Jerusalem artichoke. d. Term is 20 years and no maintenance fee required.