4 Colo.Law. 1485
1975, August, Pg. 1485.
Patents: A Broad View of a Limited Subject
1485Vol. 4, No. 8, Pg. 1485Patents: A Broad View of a Limited Subjectby Robert C. DorrGeneral practitioners are usually unfamiliar with patent law, yet increasingly they are being asked questions about inventions and patents by their clients. The purpose of this article is to provide a tutorial tool with which the general practitioner may rapidly familiarize himself with a complex area of law.
In order to appreciate fully the importance of patent protection for an invention, the history of the patent system is initially discussed in this article, followed by a brief look at the operation of the Patent and Trademark Office, the nature and types of patents, the statutory requirements and limitations of patents, the procedure to follow in providing an invention with maximum protection, how to apply for a patent, the preparation of the patent disclosure, how to place notice on the patented invention, and finally, how to enforce the patent.
Patent law, like law in general, enjoys the slow, but occasionally the sirocco winds of change. Be cautioned, therefore, that the following discussion is primarily definitional and that the purpose of this paper is to inform the practicing attorney of basic patent law.
HISTORY OF PATENTS
Although ancient civilizations paid tribute to various gods of invention,(fn1) it was not until March 19, 1474, that the world's first patent law was enacted in the city-state of Venice.(fn2) The Venetians recognized that "clever minds, capable of devising and inventing all manner of ingenious contrivances" if "it is reduced to perfection," would have protection against "any other contrivance in the form and resemblance thereof, without the consent and license of the author up to ten years."(fn3) These concepts of providing a period of statutory protection for an invention reduced to practice are concepts that pervade English and American patent law.
The practical beginnings of the American patent system occurred during the 16th century reign of Queen Elizabeth I with the issuance of Letters-Patent and Letters-Patent for Inventions by the Crown.(fn4) In order to encourage the creation and growth of new industries such as the importation of tea, the manufacture of soap, and the sale of playing cards, the Crown issued legal monopolies authorized by Letters-Patent.(fn5) In 1623, the issuance of Letters-Patent by corrupt officials of the government caused the King to invoke his in terrorem powers and to summarily repeal 20 patents.(fn6) Parliament soon thereafter passed the Statute of Monopolies(fn7) which, based on the principles expressed in the Magna Carta,(fn8) further restricted monopolies. Letters-Patent for Inventions, however,
1486were significantly excepted from restrictions by Section 6 of the Statute of Monopolies. Section 6 "has become the foundation of... [modern] patent law securing exclusive rights to inventors not only in Great Britain but throughout the world."(fn9)
Abuses caused by the English Letters-Patent monopolies were strongly detested in America. The American Revolution was precipitated, at least in part, by popular resentment of the East India Company's monopoly on tea. The Madison-Pinckney proposals for the adoption of the concept of Letters-Patent for Inventions,(fn10) however, were readily received by our founding fathers as necessary for the encouragement of industry and for the benefit of the public good.
The framers of the Constitution, in tune with the feelings of the general population, avoided the words "patent" and "monopoly" in the final draft, although such words were present in earlier drafts.(fn11) Article I, Section 8 of the Constitution nevertheless establishes a legal monopoly for patent holders by granting Congress the power "[t]o promote the Progress of Science in the useful Arts by Securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The patent clause thereby empowered Congress to bestow complete, constitutional monopolies on inventors.
Under the power granted by the patent clause, Congress passed the Letters-Patent Act of 1790,(fn12) whereby inventors submitted their applications for patents to the Secretary of State, the Secretary of War, and the Attorney General who had authority to grant the patent. Our modern patent system evolves from the Patent Act of 1836,(fn13) which established the position of the Commissioner of Patents and the present system of consecutively numbering patents. To date, almost four million patents have been issued by the Patent Office in consecutive order from 1836. Over 100,000 patent applications are received by the Patent and Trademark Office each year, resulting in an issuance of 80,000 patents per year.(fn14)
Before the legal aspects of obtaining patents by inventors are discussed, the importance of patent protection in the development of America must be understood. The United States Sesquicentennial Committee,(fn15) after analyzing thousands upon thousands of patented inventions, selected the following 18 inventors as being the most important:
Dr. Leo H. Baekeland (1863-1944)Thermo-setting plastics
Graham Bell (1847-1922)Telephone
Dr. Lee De Forest (1873-1961)Grid electrode
Thomas A. Edison (1847-1931)Phonograph
Motion picture projector
Robert Fulton (1765-1815)Steamboa
Charles Goodyear (1800-1860)Vulcanized rubber
Charles M. Hall (1863-1914)Aluminum
Elias Howe (1819-1867)Sewing machine
Cyrus Hall McCormick (1809-1884) Reaper
Ottmar Mergenthaler (1854-1899) Linotype
Samuel Morse (1791-1872)Telegraph
Christopher L. Sholes (1819-1890) Typewriter
Benjamin Silliman (1816-1885)Oil cracking
Nikola Tesla (1856-1943)Induction motor
George W. Westinghouse (1846-1914)Air brake
Eli Whitney (1765-1825)Cotton gin
Wilbur Wright (1867-1912)Airplane
Orville Wright (1871-1948)Airplane
Today, most patents are generated by corporate institutions. Even so, a significant
1487portion of the most important 20th century inventions were created by individuals.(fn16) Edwin H. Armstrong (1890-1954), working independently, received patents on feedback superheterodyne and frequency modulation circuits. Carleton Ellis (1876-1940) received over 800 patents in plastics, paints, and lacquers. Edwin H. Land (1909- ) invented the "Land camera" which forms the basis of the Polaroid Corporation. An individual inventor, Chester Carlson, invented the early Xerox machine after a career as a physicist with Bell Telephone Laboratories, Inc. where he secured a transfer to Bell's Patent Department and then subsequently entered private patent practice. During the Great Depression, Carlson, influenced by the success stories of Edison and others, spent his spare time over three or four years perfecting the idea of xerography.(fn17) His idea resulted in the corporate giant, the Xerox Corporation, which currently owns a "patent thicket" of about 1700 patents in the xerographic field.(fn18)
Often patents provide a source of amusement. Some of the more interesting patents issued by the Patent and Trademark Office include:(fn19) a self-tipping hat (No. 556,248), a poop-scoop (i.e., a "means for collecting a dog's excrement by the dog's owner or walker"---No. 3,685,088), a gun that shoots around the corner (No. 1,187,218), and an automatic hair-cutting machine (No. 3,241,562).
The following sections elaborate on the legal steps and procedures necessary to obtain and protect a patent. It is also important that the inventor be counseled to obtain the advice and counsel of patent attorneys in each of the following: the early development of the invention, the prosecution of the patent before the Patent and Trademark Office, and the subsequent enforcement of that patent against infringers.
PATENT AND TRADEMARK OFFICE
On April 1, 1925, the Patent and Trademark Office was transferred to the Department of Commerce. Today, the organization of the Patent and Trademark Office consists of the Commissioner, the Board of Patent Appeals, Assistant Commissioners, Examiners-in-Chief, Examiners, and the clerical division, responsible for some 300 classes of technical art divided into about 60,000 sub-classes.
The Examiner decides whether to allow the submitted application for patent protection. If the Examiner rejects the application, the applicant can appeal to the Patent Office Board of Appeals and thence to the U.S. Court of Customs and Patent Appeals
1488or to the U.S. District Court for the District of Columbia.
The Patent and Trademark Office maintains an extensive scientific library of foreign patents, American patents, leading technical magazines, and technical works on a variety of scientific subjects.
A copy of any American patent may be obtained by requesting the patent from the Commissioner of Patents and Trademarks, Washington, D.C., 20231, and enclosing the payment of 50 cents for each utility patent, 20 cents for each design patent, and $1.00 for each plant patent.
Numerous inexpensive publications from the U.S. government are available as follows:
From the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402:
(1) Patent Laws: $.75
(2) Patents and Inventions---An Information Aid to Inventors: $.20
(3) Patents: Spur to American Progress: $.35
(4) The Story of the United States Patent Office: $.35
From the U.S. Department of Commerce...