A Field Guide to Intellectual Property
| Publication year | 1980 |
| Pages | 20 |
1980, January, Pg. 20. A Field Guide to Intellectual Property
One does not patent an "idea," nor register a patent. One does not copyright a brand name, nor apply for a copyright. Neither registration of a corporate name with the Secretary of State, which is mandatory, nor registration of a trademark, which is optional, creates rights of exclusive use in a name.
The purpose of this article is to enable the general practitioner, by following a few guidelines, to categorize a particular problem within the intellectual property field. Intellectual property is commonly broken down into the areas of patents, which include utility, design and plant patents; trade secrets; trademarks, which include trade names, service marks, collective marks, and certain types of unfair competition; and copyrights.
As discussed below, a particular situation may simultaneously involve several areas of intellectual property law. For example, a single article, such as a lamp, may be protected by a patent, trademark and a copyright. Determining the protection afforded can best be accomplished by thinking in terms of the interest for which protection is sought. These interests can be classified as (1) protection of inventions; (2) protection of goodwill; and (3) protection of creative expression.
As provided under Article 1, Section 8 of the U.S. Constitution, ". . . Congress shall have power . . . to promote the progress of . . . useful arts by securing for limited times to . . . inventors the exclusive right to their . . . discoveries . . . ." Since 1790, Congress has enacted statutes to effectuate this constitutional provision. Under the current statute, three types of patents are available for protecting an invention: utility patents, design patents, and plant patents.
It is important to note that a patent is not the sole form of protection afforded an invention. Alternatively, an invention may be protected as a trade secret under applicable state law. Federal patent law does not preempt state trade secret law, even where the subject matter of a trade secret is clearly patentable.(fn1)
The following section is intended to aid the general practitioner in selecting the type of protection, patent or trade secret, which is better suited for a particular invention. The subject matter which may be protected by a patent or trade secret, the manner of obtaining patent or trade secret protection and the relative
A patent is a grant from a government of an exclusive monopoly. In the United States, the government grants to a patentee,(fn2) for the term of seventeen years,(fn3) the right to exclude others from making, using, or selling the invention throughout the United States.(fn4)
As statutorily defined, the subject matter of a patent must be a process, machine, manufacture or composition of matter, as well as be new, useful(fn5) and unobvious.
Process: Processes involving chemical reaction(s)(fn6) or transformations of electrical energy(fn7) have long been recognized as constituting statutory subject matter. A scientific truth, the mathematical expression of such truth, an abstract principle, a motive, phenomena of nature, mental processes and abstract intellectual processes per se are not patentable subject matter.(fn8) However, the application of a law of nature or a mental process, to achieve a new and useful end result, be it a process or article of manufacture, may constitute patentable subject matter.(fn9) Methods of doing business, solving problems and playing games are also not patentable.
Per express statutory authority, processes drawn to a new use of a known process, composition of matter, or material are patentable subject matter.(fn10)
Machines: A machine may be characterized as an apparatus, mechanism, device, or engine. A machine is a device or combination of devices by means of which energy can be utilized or a useful operation can be performed. The actual device or combination of devices or an individual part of a machine constitutes component subject matter under this category.
Manufacture: An article of manufacture and manufacture are the same.(fn11) This statutory "pigeonhole" constitutes an extremely broad, catchall phrase which includes subject matter excluded from the other statutory classes. Naturally occurring products, such as fruit, are not classified as articles of manufacture even when injected with a preservative, since no change in the name, appearance or general character occurs.(fn12) However, if the form of the naturally occurring product is changed to a new form, having new characteristics and advantages, the new form is patentable subject matter.(fn13) "Manufacture" also includes "kits" of interrelated parts, such as a splice connector having interrelated parts adapted to be assembled in the field to connect a pair of high voltage cables.(fn14) Printed matter per se is not patentable, but if there is a unique relationship between the indicia on an article of manufacture and the physical structure of the article, the combination is considered to be statutory subject matter.(fn15)
Composition of Matter: A composition of matter includes both chemical compounds and physical mixtures. In general, naturally occurring substances are not patentable subject matter.(fn16) However, synthetically produced counterparts of naturally existing products have been held to be patentable subject matter.(fn17)
The issue of whether microorganisms or pure microorganism cultures define subject matter which can be statutorily classified as an article of manufacture or composition of matter is currently before the U.S. Supreme Court on petition for a writ of certiorari.(fn18)
As statutorily defined, any improvement of one of the foregoing statutory classes of invention constitutes patentable subject matter. To constitute an improvement, improved results are a necessary requirement. Improved results are
One of the most troublesome patent issues to surface in the last decade is whether computer technology, especially computer software, constitutes patentable subject matter. Two recent Supreme Court decisions(fn21) and intervening and subsequent Court of Customs and Patent Appeals decisions(fn22) have left the questions of patentability for computer software unresolved and thus subject to the flux of future Supreme Court decisions. The question of whether computer "firmware" (a microprocessor chip) constitutes patentable subject matter(fn23) is to date unlitigated, but in view of the computer "software" turmoil, is an issue which will not be resolved easily.
"Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor . . . ."(fn24) If the subject matter invented is ornamental, it must still meet the statutory requirements of novelty and originality (analogous to non-obviousness) to be entitled to the grant of a design patent. Protection by a design patent is only afforded to an article of manufacture, although the portion of a water fountain composed entirely of water has been held to be an article of manufacture(fn25) for purposes of a design patent.
To be ornamental, the design does not have to be "beautiful," but must have a pleasing appearance to the eyes(fn26) of the ordinary purchaser(fn27) and ordinarily must be visible to the eye. Design protection may be granted if the article of manufacture is visible at the sale of a composite article (although not visible as assembled and used), and has an ornamental design which is important to the sale of the composite article.(fn28)
An article of manufacture may be patentable as a design, and also protected by a utility patent.(fn29) However, a design dictated solely by functional or utilitarian considerations is not protectable by a design patent.(fn30) The subject matter of a design patent may be properly protected by a federal trademark where the design serves to distinguish the goods of a trademark owner from the goods of another, even where design patent and trademark protection concurrently exist and trademark protection extends beyond that of a design patent.(fn31)
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other
than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor. . . .(fn32)
While asexually reproduced plants are protected under this statute, sexually reproduced plants (i.e., any production of a variety of seed) are protected by the Plant Variety Protection Act,(fn33) which is administered by the Office of Plant Variety Protection, a bureau of the Department of Agriculture.
Once the subject matter invented or discovered is deemed to fall within one of the statutory classes of invention capable of protection by a utility patent or is subject matter properly protected by a design or plant patent, the subject matter must further meet the requirement of novelty. Novelty requires that the subject matter invented or discovered must be new (i.e., not done before by others) as of the...
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