2 Governing laws

At this time, there are a number of significant international treaties governing patent law. The most universal of these is the WTOThe acronym WTO stands for the World Trade Organization the. TRIPs AgreementThe WTO Agreement on Trade-Related Aspects of Intellectual Property Rights TRIPs is an international agreement on the subject of " intellectual property". It covers copyright, patents, trademarks, trade secrets, industrial designs, geographical indicia an, to which almost all countries are a party. The United StatesThe United States of America also referred to as the United States U. America ¹ or the States is a federal republic in central North America, stretching from the Atlantic in the east to the Pacific Ocean in the west. It shares land borders with Canada in, European UnionFor other uses, see EU (disambiguation). The European Union or EU is a supranational organisation of 25 European states. It was established with that name by the Treaty on European Union (commonly known as the Maastricht Treaty) in 1992 but many aspects o, and JapanJapan (, Nippon/Nihon literally "the origin of the sun") is a country in East Asia situated on a chain of islands east of the Asian continent on the western edge of the Pacific Ocean. The largest of these islands are, from north to south, Hokkaido , Honsh, are parties to all of the significant treaties. This has led to significant harmonization of patent law worldwide, particularly in the last decade of the 20th century19th century 20th century 21st century more centuries) Decades: 1900s 1910s 1920s 1930s 1940s 1950s 1960s 1970s 1980s 1990s As a means of recording the passage of time, the 20th century was that century which lasted from 1901- 2000 in the sense of the Gre and continuing into the 21st.

Procedurally, the United States system is perhaps one of the more unusual although some recent changes have brought the United States' system further into line with other major patent systems. The biggest difference that remains is that the US system awards the patent to the "first to invent", yet in the rest of the world the "first to file" is awarded the patent. In contests between different inventors over priority (called "interferences"), however, the second one to file has the burden of proof and usually loses such contests.

Patent grants are territorial in nature. Thus, patent protection in multiple countries require separate filings of patent applications in each country, or region, where protection is sought. Within Europe, a single patent application procedure is available through the European Patent Office, but successful applications result in multiple patents (up to 28) rather than a single European-wide patent. Such a European-wide unitary patent, or "community patent", has been the subject of discussion at the EU level since the 1970s, with no result so far.

Many of the international treaties are designed to afford some recognition of filing dates to patent applications filed in one country. In this respect, the most important treaty is the Paris Convention. Typically, inventors are allowed one year from the date of their filing in their home country to file the application abroad, frequently called national stage filing. Systems such as the Patent Cooperation Treaty (or PCT) allow inventors a cost effective way to further delay national stage filings.

The authority for patent statutes in different countries varies. In the United States, the Patent and Trademark Office gets its authority from Article One, Section 8 of the U.S. Constitution. In other countries, the origin may be a statute or other law or rule.

3 Examination process and procedure

Typically, an application for a patent is examined before a patent is issued or granted for an invention. That is to say, the application is reviewed by a patent examiner for patentability.

Some countries do not formally review patent applications while others accept the judgment of other patent examining authorities. For example, some smaller countries, such as Belgium, grant a patent almost automatically or with minimal examination compared to what happens in the United States Patent and Trademark Office, the Japanese Patent Office , or the European Patent Office.

A typical examining procedure is:

1. Filing a patent application by inventor or applicant.
2. Formalizing of application (signatures by inventors or applicant), often filed at the same time as the application.
3. Publication at 18 months from earliest claimed filing date. US applicants can request non-publication if the application is not filed outside the United States.
4. Review by the examiner or the Examining Division, including back and forth "negotiation" with applicant to narrow/modify the claim language.
5. Grant of the patent (if it the patentability criteria are met) and publication of the issued patent.
6. Opposition period, during which anybody (e.g. other companies) can challenge the patent grant. This is not applicable for the US where other procedure are available, namely the reissue and reexamination procedure (It should also be noted that, in several countries, oppositions can be filed before the grant of the patent)

The specifics of the review process include:

1. Verifying that claims are for a patentable subject matter.
2. Unity of invention, since each patent application can only be for one invention (called "restriction" practice in the United States).
3. Formalities. Is the claim grammatically correct, properly drawn, and unambiguous?
4. Utility or industrial applicability.
5. Novelty (newness)
6. Non-obviousness or inventive step.

Different patent systems use different terms and different standards for these concepts, of which the most important probably are: patentable subject matter, novelty, non-obviousness and sufficient disclosure .

3.1 Patentable subject matter

The standard for what is patentable subject matter in the United States is "anything under the sun made by man" that is new (novel), useful, and non-obvious. Similar standards for patentability apply in Japan and the European Patent Office (EPO). Under US law, a claimed invention lacks utility (usefulness) if it does not have a described specific, substantial, and credible use.

Generally speaking, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use. Processes include algorithms, business methods, most software, medical techniques, sports techniques and the like. Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, DNA, RNA, etc.

Mathematical truths, however, are not patentable, and software inventions implementing algorithms are not patentable for this reason unless there is some kind of practical application (US law) or technical effect (European law). The US standard for the patentability of software is more liberal than that in Europe. Japanese patent law lies between the US and Europe.

Presently in 2001, the patenting of software (and business methods) is quite controversial from a global perspective. Case law in the United States permits patents for software and business methods. Yet software as such is not patentable in Europe, although some inventions that use software can be patented in Europe.

Patents related to natural compounds (e.g. items found in rainforests) as well as medicines, medical treatment techniques, and genetic sequences are also controversial. There are significant country-by-country differences in handling these subject matters. For example, in the United States you can get a patent for a surgical method but you cannot enforce your right to exclude.

3.2 Novelty

Novelty relates to whether something existed before its "invention" by the applicant or was divulged to the public before the patent application's filing date. For public disclosures of the invention by the inventor, the United States permits a 1 year grace period, but most other countries provide no grace period, instead requiring "absolute novelty".

An invention is not novel if there is a previously existing or divulged device or process that includes all of the elements of the claimed invention. Identifying such " prior art" by the patent examiner is accomplished by a search of literature (technical journals, published and issued patents, etc.) that predate the filing date of the particular patent application.

The comparison of the relevant prior art to the claimed invention can be highly technical in the sense that if the patent claim requires a blade to be between "5 and 10 cm" and a particular reference (one piece of literature found by the examiner) speaks of a blade having a length of "at least 11 cm", then the reference is insufficient to defeat the novelty of the claimed invention.

3.3 "Non-obviousness" or "Inventive Step"

Even if an applicant's claim for an invention is technically novel (i.e. not taught by a single prior art reference), a patent can still be denied to the applicant if the applicant's subject matter is "obvious". The purpose of forbidding patents on obvious technologies is to prevent a person from obtaining exclusive rights to what is effectively already in the possession of the public, even if documentation of the exact form of the applicant's embodiment happens to be lacking.

Accordingly, obviousness asks the question whether all previously known technology related to the invention would teach a " person having ordinary skill in the art", e.g. someone who does the type of things relating to the technical field of the invention, how to make the invention. Many applications for United States patents are initially rejected as being obvious.

The standard of obviousness and its application are more subjective and controversial than that of novelty. If the requirements are set very high, virtually nothing is patentable. Similarly if the requirements are very low, all kinds of trivial inventions can receive patents.

Generally, the patent laws make it difficult for patent examiners to employ hindsight reasoning in rejecting a claim as obvious, by requiring some teaching that would motivate a person of ordinary skill in the art to modify the technology found in the prior to arrive at the claimed invention. In the United States, objective evidence or secondary considerations of non-obviousness can overcome a proper obviousness rejection. Such secondary consideratons can include unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts.

As a practical matter, during examination the patent examiner will attempt to locate two or more references that when combined show all of the features of the claimed invention and indicate that one of ordinary skill would make that combination. Continuing the example of the claim limitation of a blade that is between "5 and 10 cm", if a second reference were found that said something like "in many instances where long blade sizes are required smaller length blades can be used with equal efficacy", then the examiner would argue that the two references in combination teach or suggest the claimed limitation.

The threshold for the obviousness standard can be particularly frustrating in genus- species situations. For example, if an inventor finds two species of a particular genus, e.g. two particular chemical compositions out of 10,000 in the broader genus, should the inventor be entitled to a patent on the entire genus? Further, what if someone has discovered the genus already, but not isolated any of the species, are the species obvious in light of the genus? Under US law, the species may still be patentable if they produce results that are unexpectedly different than that of other previously known members of the genus.

For example, suppose a software inventor unveils the quicksort sorting algorithm to the world but only discloses it using integers (this is the species). The next day, can someone else file a patent on an "improved" quicksort suitable for use on any set where a partial ordering can be defined (this is the genus)? Under US law, this is not a question of obviousness since a claim to the genus lacks novelty as the species is known.

Finally, in spite of all precautions, some patents still give a general impression of triviality. An example is given by the "combover" patent (U.S. Patent 4,022,227, filed December 1975), which has also been awarded the 2004 Ig Nobel Prize in engineering for its apparently unintentional ridiculousness.

4 Term of patent

As TRIPS agreement declares, the term of an issued patent is twenty years from earliest claimed filing date. In the United States, for applications filed prior to June 8, 1995, the patent term is seventeen years from the issue date. For applications filed on or after June 8, 1995, the term is twenty years from the earliest claimed filing date. The rules for patents in force and pending at the transition date (June 8, 1995) are significantly more complicated but grant the patentee whichever term is longer.

Also, in several countries there are multiple types of patents, and the twenty year term frequently only applies to so called utility patents and not design, petit, or other kinds of less heavily examined patents. For example, the term of a U.S. design patent, which protects the ornamental shape of objects, lasts fourteen years from its issue date.

4.1 Example

If the better mousetrap patent is filed on January 1, 1996 and is issued or granted on January 1, 2000, it will lapse twenty years from filing: January 1, 2016. However, if the inventor comes up with a second improvement and claims priority to her first patent when filing the second patent on January 1, 1998, that second patent, after grant, would lapse twenty years from the earliest claimed priority: January 1, 2016.

5 Miscellaneous

While a patent grants an exclusive right on the invention claimed, many national laws provide for special rules on granting compulsory licence to requesting third parties when the invention is not put into to practice within a specified amount of time or is put into practice in a manner that is deemed to be insufficient for the needs of the Country.

Secrecy provisions are also present in many national laws in case the invention for which a patent is filed is deemed to have military interest.

A patent might also be seized by the State under grounds of public utility. For example, during the anthrax scare that followed the September 11 attacks, it was rumoured that the US was considering to seize from the Bayer Corporation the patent on the Cipro antibiotic. However, the anthrax attacks did not continue and eventually the patent was not seized.

6 Early history of patents

Although there is evidence suggesting that something like patents was used among some ancient Greek cities, patents in the modern sense originated in Italy. In 1474 the Republic of Venice issued a decree in which new and inventive devices, once they had been put into practice, had to be communicated to the Republic in order to obtain legal protection against potential infringers.

England followed with the Statute of Monopolies in 1624 under King James I of England. Prior to this time, the crown would issue letters patent providing any person with a "monopoly" to produce particular goods or provide particular services. This power, which was to raise money for the crown, was widely abused, and court began to limit the circumstances in which they could be granted. Parliament eventually restricted the crown's power explicitly through the Statute of Monopolies so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years. Section 6 of the Statute refers to "manner[s] of new manufacture ... [by] inventors", and this section remains the foundation for patent law in England and Australia. The Statute of Monopolies was later developed by the courts to produce modern patent law; this innovation was soon adopted by other countries.

The Patent Commission of the U.S. was created in 1790. Its first three members were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph.

On July 31, 1790 inventor Samuel Hopkins of Pittsford, Vermont became the first person to be issued a patent in the United States. His patented invention was an improvement in the "making of Pot Ash by a new apparatus & process.". The earliest patent law required that a working model of each invention be produced in miniature.

The Patent Law was revised for the first time in 1793. It adopted a simple registration system where a patent would be granted for a $30 fee. The Patent Board was replaced by a clerk in the Department of State. James Madison, Secretary of State, created a separate Patent Office within the State Department and he appointed Dr. William Thornton as its first superintendent in May 1802 .

On May 5th, 1809 Mary Dixon Kies became the first woman to be awarded a US patent. Later, in 1810, the Patent Office moved from the Department of State to Blodgetts Hotel. In the same year, they opened the patent model storage to the general public.

In 1834, the first black man granted a patent, Henry Blair (of Glenross , Maryland), patented a corn planter. In 1836, on August 31, Blair was issued a cotton seed planter patent. In 1863, Alfred Nobel gained a Swedish patent for the preparation of nitroglycerin (originally called "blasting oil"). In 1868, Nobel patented its safer-to-handle form dynamite.

The first 10,000 patents issued by the USPTO from July 1790 to July 1836 were perished in a fire in December 1836. About 2800 of them were later recovered. But the majority of them are still missing. The recorvered patents are now called X-Patents because their patent numbers end with an "X."

6.1 Patent models

One of the most interesting early features of the U.S. patent system was the requirement of patent models. A patent model was a scratch-built miniature (small-scale model) no larger than 12" by 12" that showed how the patent works. Since most early inventors were ordinary people without technological or legal training, it was difficult for them to submit formal patent applications. Actually, the patent system then was very crude by today's standards. It was a good idea for these amateur inventors to submit a model with a brief explanation or drawing of it.

Patent models were required since 1790. The Congress of the U.S. abolished the legal requirement for them in 1870. The U.S. Patent Office kept this requirement until 1880. However, some inventors still willingly submited models at the turn of the 20th century.

7 Quotes

If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of everyone, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property.

- Thomas Jefferson

Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. Nobody wishes more than I do that ingenuity should receive liberal encouragement. In the arts, and especially in the mechanical arts, many ingenious improvements are made in consequence of the patent right giving exclusive use of them for fourteen years.

- Thomas Jefferson

In the field of industrial patents in particular we shall have seriously to examine whether the award of a monopoly privilege is really the most appropriate and effective form of reward for the kind of risk bearing which investment in scientific research involves.

- F.A. von Hayek, Individualism and Economic Order, 1948

8 Related articles

• Chemical patent
• Community Patent
• Essential patent
• Intellectual property
• Letters patent
• List of software patents
• List of top United States patent recipients
• Organizations and patent offices
  • Eurasian Patent Organisation (EAPO)
  • European Patent Organisation (EPO or EPOrg) (incl. European Patent Office)
  • United States Patent and Trademark Office (USPTO)
  • World Intellectual Property Organization (WIPO)
• Patent attorney
• Patent clerk
• Patent information
• Patent law concepts
  • claim
  • Patent infringement
  • Person having ordinary skill in the art
  • Prior art
  • Reasonable and Non Discriminatory Licensing
• Software patent
• Software patents under the European Patent Convention
• Submarine patent
• Treaties, conventions and other legal texts
  • Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement)
  • EU Directive on the Patentability of Computer-Implemented Inventions
  • European Patent Convention (EPC)
  • Paris Convention for the Protection of Industrial Property
  • Patent Cooperation Treaty (PCT)
  • Patent Law Treaty (PLT)
• X-Patent

9 External links

• US Patent and Trademark Office
• Delphion IP Research
• Canadian Patents Database
• Japan Patent Office
• European Network of Patent Databases
• European Patent Office
• UK Patent Office
• ipwatchdog.com - Web and News site about IP including Patents(incl. weeky obscure patent)
• mp3board.com - News site which aggregates patent news (and other IP news).
• Paper: Exceptions to exclusive rights and compulsory licenses(incl. experimental and private use)
• Some thoughts on how the patent process may be improved
• General Information About Patents
• FreePatentsOnline.com - Free patent searching database and list of funny patents.
• Brown & Michaels, PC - General information about intellectual property, including a patent FAQ and a funny collection of Weird and Wonderful Patents.

9.1 Patent organizations

• The Public Patent Foundation

9.2 Patent discussion

• Quotes from Fritz Machlup report 1958
• Netflix patent buys time - shumans.com article, June 29, 2003. [Related to patent number US 6584450]
• EOLAS (Example of a patent privateer)

Intellectual property Patent law

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