Patent

B

Qualifications

To qualify for a patent, the invention must meet three basic tests. First, it must be “novel,” meaning that the invention did not previously exist. If the patent examiner finds that the proposed invention has already been described in previous patents or written about in scientific magazines, the PTO will declare that the invention has been “anticipated.” In such a case, the patent will be denied. Second, the invention must be “non-obvious,” which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be “useful.” Legal experts commonly interpret this to mean that no patent will be granted for inventions that can only be used for an illegal or immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc².

It is permissible, however, to obtain a patent on an altered or purified form of a natural substance. Under this rule, if a mineral only occurs in nature with impurities, a person who invents a completely impurity-free version of the mineral can get a patent both on the pure mineral and on the method of purifying it.

This rule also permits firms in the biotechnology industry to obtain patents on purified deoxyribonucleic acid (DNA) gene sequences. DNA is the basic unit of heredity and carries the information needed to direct the synthesis and replication of proteins. Scientists have learned that certain sequences of nucleic acids in strands of DNA could have specific medical benefits or applications. Purified DNA gene sequences are manufactured by a process known as recombinant DNA technology. See also Genetic Engineering.

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However, the patenting of DNA is controversial because these gene sequences are often the raw materials for developing a wide range of future medical inventions. A patent on a DNA strand thus can confer extremely broad rights. Consequently, some members of the scientific community have argued that the tests for patenting DNA should be quite stringent to avoid hindering future scientific progress.

Traditionally, U.S. law did not grant patents on methods of doing business, such as financial management systems or the process for conducting an Internet auction. Starting in the late 1990s, however, the courts changed this rule. Since then, many patents have been granted for business methods. Some critics have claimed that the PTO has been too lenient in granting patents of this type, arguing that many of the methods that have been given patents are not really novel and non-obvious as the law requires. Congress has considered legislation to reform the way business-method patents are reviewed, but thus far it has not adopted any new laws.

C

Disputes

Occasionally several people apply for a patent for the same invention. Under U.S. law, the person who first invented the item is entitled to the patent. If it is unclear who invented the item first, the PTO decides who gets the patent in a proceeding known as an interference. The losing party may then appeal the PTO’s decision at the Court of Appeals for the Federal Circuit, a specialized court in Washington, D.C., established to deal with patent matters. Most other countries follow a different rule, granting the patent to the first person to file the patent application. In these countries, if the first inventor delays and the second inventor files the patent application first, the second inventor will obtain the patent.

D

Terms

If the patent examiner finds that the invention involves proper subject matter and meets the three basic legal tests described above, the PTO will grant a patent. Under current U.S. law, a patent is valid for 20 years from the date the patent application is filed. The patent is granted to the individual or individuals who made the invention. If that person is an employee who did the work as part of a job, however, the employer has a right to use the invention as well.

A patent only grants rights within the jurisdiction that issued it. Therefore, a U.S. patent does not provide any rights in other countries. Inventors must take out a patent in every country where they desire protection. Most nations of the world have adopted patent laws, but often the requirements in foreign countries differ greatly from requirements in the United States.

For example, until recently some countries did not allow patents on certain products, such as medicines. In such a situation, any party located in that foreign country could legally make the medicines or other products there, even though a U.S. company owned a valid U.S. patent on that particular product.

E

Infringement

Anyone who makes, uses, offers to sell, sells, or imports a patented invention without the permission of the patent holder is guilty of infringement. A party can be guilty of infringement even if his or her device is not identical to the item described in the patent. Under a rule known as the doctrine of equivalents, a device infringes if it does the same work in the same way as the patented invention, even if there are minor differences between the two. However, the courts interpret this rule cautiously to avoid giving the patent holder more protection than it is properly entitled to.

The person holding the patent, called the patentee, may sue the infringer in federal court to recover damages. The patentee may also obtain an injunction requiring the infringer to refrain from committing future acts of infringement. The accused infringer may argue in court that the patent should never have been granted in the first place. If the accused infringer raises this argument, the court will determine whether the patent is valid or invalid. Another important defense against claims of infringement is the first sale doctrine. Under this principle, once the patentee sells a particular item, the purchaser of that specific physical item may use it or resell it without being considered an infringer. For example, this is why people can use computers, which have many patented parts, without being considered patent infringers.

Patent lawsuits can be filed in any federal court in the United States. Appeals in patent cases all go to the same court, the Court of Appeals for the Federal Circuit, in Washington, D.C. (see Courts in the United States: Federal Courts). This helps ensure that patent law is uniform throughout the United States.

IV

International Patent Law

The first treaty to deal with international patent law was the Paris Convention of 1883, which was originally adopted by 20 countries from around the world and has since been adopted by most others. In addition, most of the world’s nations have signed several other treaties dealing with patent issues during the 20th century. For example, nearly 150 countries have signed the 1994 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), which is administered by the World Trade Organization. This treaty generally strengthened legal protection for patents worldwide. However, in 2003, the member governments of TRIPS agreed to a relaxation of patent protection on certain medicines. This action was intended to allow poorer nations to import patented drugs at lower costs, specifically to treat patients suffering from acquired immunodeficiency syndrome (AIDS).