§ 1.03 Patents

• Jurisdiction: United States
• Publication year: 2020

§ 1.03 Patents

If copyright is the law of works of authorship, patent is the law of inventions. The scope of the subject matter eligible for patent protection is quite broad and includes processes, machines, manufactures, and compositions of matter.⁴⁷ Congress took this permissive approach to patent eligibility to ensure that " 'ingenuity should receive a liberal encouragement.'"⁴⁸ Over the past 225 years, the Supreme Court has carved out three specific exceptions to these broad patent-eligibility principles: "laws of nature, physical phenomena, and abstract ideas."⁴⁹ The Supreme Court has stated that:

"[w]hile these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be 'new and useful.' . . The concepts covered by these exceptions are 'part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.'"⁵⁰

In addition to falling within the class of patentable subject matter, the invention must also meet several requirements. First, it must be useful.⁵¹ This requirement is generally not difficult for the inventor to satisfy as long as it can meet one of the invention's stated objectives. It does not have to be embodied in a commercial product although success in the marketplace is seen as establishing utility.

Second, the resulting product or process must be novel. This means that the invention as compared to what has gone before must be new. For the purposes of patent law, the universe of "what has gone before" is known as "prior art" and includes prior inventions, as well as patents, patent applications and publications that disclose prior inventions.⁵² The date of invention is complete when it is both conceived⁵³ and reduced to practice.⁵⁴ If the claimed invention is identical to subject matter disclosed or embodied in the prior art reference, the invention or a particular claim (the portion of the patent defining the invention) is "anticipated" and invalid for lack of novelty.⁵⁵

Third, the invention must be non-obvious.⁵⁶ Unlike novelty, obviousness does not require that the claimed invention be identical to the prior art, rather, the test for obviousness focuses on the differences between the claim and the prior art, and asks whether a "person of ordinary skill in the art" at the time the invention was made might have come up with the invention.⁵⁷ Further, while anticipation requires that all the elements of the claimed invention be found in a single prior art reference, obviousness can be based on the combination of more than one reference.

On September 16, 2011, President Obama signed into law the American Invents Act (AIA),⁵⁸ which, among other things, changed the U.S. patent system from a first-to-invent to a first-to-file system. Under the previous regime, the United States Patent and Trademark Office awarded a patent to the first person to invent; while, under the AIA, a patent will be awarded to the "first inventor-to-file" for patent applications filed on or after March 16, 2013. This represents a major change to U.S. patent law and makes U.S. law consistent with almost every other country in the world. Applicants should also be aware that the AIA also expands the definition of prior art used in determining patentability. Actions and prior art that bar patentability will include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within...