Chapter 23 - § 23.2 • PATENTS

• Jurisdiction: Colorado

§ 23.2 • PATENTS

Certain nonprofit organizations whose missions include scientific research and development and other inventive activity, commonly address patent issues, such as whether the results of their research may be patentable. For many other nonprofits, interaction with patent law is far less common.

Article I, § 8 of the U.S. Constitution empowers Congress to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." In accordance with this constitutional grant, Congress enacted Title 35 of the U.S. Code, which is the primary source of patent law in the United States.

The granting of a U.S. Letters Patent is administered by the U.S. Patent and Trademark Office (USPTO). The Commissioner of Patents and Trademarks has established and continues to maintain regulations for the conduct of proceedings in the USPTO. These regulations appear in Chapter 37 of the Code of Federal Regulations. The Commissioner also publishes the Manual of Patent Examining Procedure (MPEP), a compilation of patent laws, regulations, and applicable case law.

The owner of a Letters Patent can exclude others from making, using, selling, offering to sell, and importing the inventions claimed in the patent. The term of this exclusive right for patents pending as of June 8, 1996, is the greater of 17 years from issuance or 20 years from the patent application's effective filing date. For patents issuing from applications filed after June 8, 1996, the term is 20 years from the effective filing date of the application. 35 U.S.C. § 154.

§ 23.2.1—Patentable Subject Matter

Patent protection is available for any new, useful, and non-obvious process, machine, manufacture, composition of matter, or any improvement thereof. 35 U.S.C. §§ 101 through 103. Laws of nature, natural phenomena, and abstract ideas are not patentable, and courts have recently limited the ability to patent business methods and/or basic practices implemented on generic computers. Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). However, some nonprofit organizations may be entitled to patent discoveries related to unique computer systems or other business methods that they develop.

The Utility Requirement (35 U.S.C. § 101)

The "usefulness" requirement may be satisfied by substantially any level of utility beyond mere experimental use in the development of another invention.

The Novelty Requirement (35 U.S.C. § 102)

The "novelty" requirement simply means that the exact invention is not described in a single prior art reference. An invention in a patent application lacks novelty if it was already patented, described in a printed publication, in public use, on sale, or "otherwise available to the public," prior to the date on which the application was filed. 35 U.S.C. § 102(a)(1). Any of this prior art — including sales and public uses — can defeat the patentability of an invention, even if it occurred outside the United States.

However, there is a grace period for prior art created by inventors themselves. If an...