In order for a developer to obtain a patent, the work must qualify as an
"invention." In this regard, the Patent Act establishes five requirements:
1. The applicant must be the inventor;
2. The invention must be "patentable subject matter";
3. The invention must be novel;
4. The invention must be useful; and
5. The invention must not be obvious, i.e. "nonobvious."
1. The applicant must be the inventor.
As a general rule, the person who applies for a patent must be the first person to
conceive of the invention and reduce it to practice. An invention is conceived when there
is a definite idea of the complete invention and all of the steps necessary to create it.
An invention is reduced to practice when it is actually created or when the patent
application is filed with the Patent Office.
There is an exception if a person is hired for the purpose of inventing or if
employees have assigned their rights to the patent. In those cases, the employer, rather
than the actual inventor, may be given ownership of the patent. In addition, if an
employee used the employer's facilities in order to create the invention, then the
employer may be given a non-exclusive license to use the invention through Shop Rights.
The Shop Rights Doctrine provides that although the employee retains the patent, the
employer has a royalty free license to use the invention.
It is also common practice for inventors to join together in developing inventions -
for example when each inventor is responsible for a certain part or module. If the
inventors seek a patent jointly, then each must have made some original contribution to
the invention. Mere cooperation in a project will not qualify all parties as inventors.
2. The invention must be "patentable subject matter."
The Patent Act lists the categories of patentable subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof . . .."
Ideas are specifically not patentable, although the application of ideas are. For
example, Einstein's formula "E=MC2" is merely an idea; it is not a
particular concrete application of the principle of atomic energy, but the very idea
itself. This is sometimes referred to as a "law of nature." A law of nature,
even if written as a mathematical formula, is not patentable. It is believed that
mathematical formulas are the fundamental building blocks of science and should not be
In cases of computer software, the courts have been
forced to define more precisely which inventions involving the use of mathematical
formulas or algorithms are disqualified under the Patent Act.
1972, the United States Supreme Court held that a "process" for converting binary-coded decimal
numerals into pure binary numerals could not be patented. The court stated that the
algorithm was a scientific truth and was so abstract that it covered all applications of
the algorithm. Subsequently, in 1978 the Supreme Court denied a patent for a
mathematically based process for updating alarm limits in catalytic conversion processes.
The court stated that a process utilizing a scientific principle is patentable only if the
process itself, not merely the mathematical algorithm, is new and useful.
The continued uncertainties concerning patentability of computer software led the
Supreme Court to again consider the issue in 1981. In that case, a computer was used to
calculate and monitor the exact curing time and temperature for rubber oil seals. The
software was based upon a well known formula. The claimants, however, did not ask for a
patent on the formula itself but on the entire process, which they claimed was unique. The
Court, in a 5-4 decision, granted the patent and reiterated the test for patentability of
Transformation and reduction of an article "to a different state or thing"
is the clue to the patentability of a process claim that does not include particular
The court then reasoned that the method for curing rubber, described in detail in the
patent application, involved such a transformation. The court stressed that the use of a
mathematical equation and a computer in the process did not prevent the availability of a
patent. Thus, despite previous uncertainties concerning the patentability of software, it
is clear that under proper circumstances software may be patented.
3. The invention must be novel.
To be patentable, the process embodied in software must be "novel," i.e. new
and different from any prior processes. If a process was previously disclosed to the
public, then it is considered to be "anticipated" by the prior artand
thus, it is not novel.
The Patent Office considers an invention to be
previously disclosed if it was publicly known or used by others in the United States or
was patented or described in a printed publication in any country more than one year prior
to the date of filing the application. Thus, inventors should be extremely cautious when
publicly testing potentially patentable subject matter.
Novelty is a patent requirement because it would benefit only the inventor, rather
than the public, if a patent were granted in exchange for disclosing information which is
4. The invention must be useful.
The utility requirement is derived from the United States Constitution which gives
protection to "useful" arts. The utility of an invention must be affirmatively
demonstrated in the patent application because otherwise the patent would give such broad
protection that it would be protecting the idea itself rather than the application of the
5. The invention must be nonobvious.
"Nonobviousness" means that the process embodied in the claim represents
more than merely the next obvious step in the development of the art to which the claim
relates. The difference between novelty and nonobviousness is that novelty asks whether
the invention "existed" before; nonobviousness asks whether a person could or
would have thought of the invention given exposure to the prior art.
THE APPLICATION PROCESS
In the patent application, the inventor publicly discloses and describes the
invention. The application must include: 1) a description of the invention and the process
of making and using it; 2) a declaration that the applicant is the first inventor; 3)
drawings and flow-charts which are necessary for an understanding of the invention; and 4)
the filing fee, which is usually between $170 and $340. However, legal and incidental fees
for a patent may cost as much as $10,000.
Because the government grants a patent in return for the information disclosed in the
patent application, it is imperative that the application be skillfully drafted. For
example, if an application is described in broad terms, the possibility is increased that
the examiner will reject it for lack of specificity. Alternatively, if the application is
drafted too specifically, then the inventor will be forfeiting areas of potential legal
THE PATENT EXAMINATION
After the application is filled-out and filed with the
and Trademark Office, it is assigned to an examiner. The examiner reviews the
application and researches various public records to ensure that the patent requirements
have been satisfied. While the examination is being conducted all of the inventor's trade
secrets are maintained. Following the examination, the examiner will make a determination
as to whether the work is patentable. If the patent is granted, it is presumed to be valid
until successfully challenged through litigation. If it is rejected, the inventor may
amend the claim and seek reconsideration. However, if the claim is rejected twice and if
no agreement can be reached, then a Final Rejection is issued. The inventor must then
appeal to the Patent and Trademark Office, and possibly to the federal courts.
During the application process, it is common for the applicant and the examiner to
have extensive negotiations concerning the terms of the patent. This negotiation process
is very important because the inventor will be bound by any decisions made during that
time. For example, in a subsequent infringement suit, the applicant will not be allowed to
state that the patent was meant to provide greater legal protection than that which was
agreed upon during the application process. Thus, if an applicant agrees with the examiner
on a particular issue during the examination, then the applicant may not later assert that
the examiner was incorrect.
After an invention is approved and all fees are paid, the "Letters Patent"
are issued to the applicant. The process may take two or three years to complete.
INFRINGEMENT AND REMEDIES
A patentee has the exclusive right to make, use, or sell the invention for a period of
17 years. During this period, an infringement will occur if someone develops, or induces
another person to create a work that performs substantially the same function, in
substantially the same way, to achieve substantially the same result as the patented work.
If there is an infringement of a patent, the Patent Act allows: 1) injunctive relief,
2) damages which may be trebled; 3) attorney fees; and 4) court costs. The Patent Act
authorizes damages "in no event less than a reasonable royalty for the use made of
the invention by the infringer." When there is an established royalty amount, there
is little problem setting a minimum amount. However, if the royalties are depressed
because of the infringement then the court may issue treble damages or adjust the amount
Before damages will be granted, however, the inventor must show that the alleged
infringer was on notice that the invention was patented. Notice of the patent is provided
by marking the invention with the word "patent" or the abbreviation
"pat." followed by the number of the patent. Although the notice is not required
to have a valid patent, if the notice has not been used, then the patent owner will be
allowed to recover damages only for the period subsequent to the date on which the
infringer received actual notice that the invention was patented.
In addition, since patent protection does not begin until the actual issuance of the
Letters Patent, competitors are basically free to copy an invention even if the
application has been filed. The words "patent pending" give no legal protection
during the period prior to the actual grant. In fact, use of such symbols can result in
fines if the notice misrepresents the truth. However, if a patent is issued, then the
competitors will be required to remove the infringing goods from the market.
In conclusion, patents often provide the most powerful form of protection for creative
works. However, in exchange for such comprehensive protection, the inventor must submit to
a technical, time-consuming and expensive application process. Furthermore, patent
protection is not always appropriate. For example, in cases of computer software, because
of the speed with which technology advances, the 17 year patent protection is often
unnecessary. However, when appropriate, a patent can provide the most valuable form of
protection for the work of an inventor.
Also, see our link to the
Patent and Trademark Office.
Zegarelli Law Group, PC
can assist you with understanding and applying the law to your particular
situation. We Represent the Entrepreneurial Spirit®.