Vol. 28, No. 4 #6 (August 2005). Patent Law Basics.

• Author: By David R. McKinney and Edwin S. Wall

Wyoming Bar Journal

2005.

Vol. 28, No. 4 #6 (August 2005).

Patent Law Basics

WYOMING LAWYERAugust 2005/Vol. XXVIII, No. 4Patent Law BasicsBy David R. McKinney and Edwin S. Wall

Every attorney ought to understand some of the basics of patent law. Only registered patent attorneys may file and prosecute patent applications on behalf of clients with the Patent and Trademark Office (PTO). Nevertheless, as a non-patent attorney, basic knowledge of patent law will be helpful to your clients. This article presents some basic principles of U.S. patent law and provides useful guidance for attorneys. What is a Patent?

Patents are intangible personal property that provide a collection of exclusive rights. These include the right to exclude all others, for a specified term of years, from making, using, or selling in the U.S., or importing into the U.S. for sale, the invention claimed in an issued patent.(fn1) Like other types of property, patents can be bought, sold, licensed for others' use, and used as collateral for debts. When the patent term expires, the invention passes into the public domain, and the exclusive rights terminate.

Types of Patents

There are two primary types of patents: design patents and utility patents. Design patents cover "any new, original, and ornamental design for an article of manufacture."(fn2) They do not cover the functional features of an invention, but provide the owner with the right to exclude others from making, using, or selling the same product with the same design. Design patents are used to cover stylish products, having important ornamental features.

Most patent seekers want a utility patent, however. A utility patent covers the functional features of an invention, regardless of its form or appearance. Because the coverage is thus broader, utility patents are generally more valuable. Accordingly, the remainder of this article will deal exclusively with utility patents.

Basis of U.S. Patent Law

The United States patent system is authorized by the U.S. Constitution, which declares that "Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to . . . inventors the exclusive right to their respective . . . discoveries."(fn3) The current law, based upon the Patent Act of 1952, is found at 35 U.S.C. 101 et seq. The patent system is intended to promote innovation by granting a limited period of exclusive rights in an

invention in exchange for full public disclosure.

Patentable Subject Matter

When seeking a U.S. patent, the first hurdle is to present patentable subject matter. The patent statutes allow patent protection for any "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . . "(fn4) This broad language is interpreted to "include anything under the sun that is made by man."(fn5) Conversely, things not made by man are generally unpatentable: the laws of nature, physical phenomena, and abstract ideas themselves are not patentable because they are...