An Intellectual Property Primer: What Every Attorney Should Know About Patents, Trademarks and Copyrights
| Publication year | 1994 |
| Pages | 8 |
| Citation | Vol. 7 No. 1 Pg. 8 |
Bryan A. Geurts, J.
I. INTRODUCTION
A recent article in the American Bar Association's Journal comments on the tremendous upsurgence of that area of the law collectively known as intellectual property: "Intellectual property for the 1990s will be what deal-making was for the 1980s."[1] Accordingly, if you have not experienced it yet, chances are you soon will have an increased number of businesses and individuals, many from your existing client base, who call upon you to render information and/or advice regarding patents, trademarks and copyrights.
The scope of this article covers these three traditional aspects of the intellectual property field, although the field also includes many related doctrines protecting intellectual property, including trade secrets, franchising, misappropriation of undeveloped ideas, rights of privacy and of publicity, licensing, and unfair competition law. Space limitations require this restriction in scope. This article is not intended as comprehensive. Therefore, detailed questions and individual fact situations should be referred to experienced intellectual property practitioners.
Specifically, when a patent matter arises, a duly registered patent attorney (one who has been admitted to practice before the U.S. Patent and Trademark Office) should be consulted. Most registered patent attorneys practice all aspects of intellectual property law, although many non-registered attorneys are qualified to practice in the areas of trademarks and copyrights. In all instances, it is appropriate to question whether a practitioner has adequate experience and expertise to be of assistance in a particular case.
II. PATENTS — THE PROTECTION OF INVENTIVE GENIUS
A. What is a Patent?
A patent is a grant issued by the United States Government giving an inventor the right to exclude all others from making, using or selling his or her invention within the United States, its territories and possessions for a set period of time. In general, patents fall into one of three categories: utility, design or plant. The most common of these categories is the utility patent, which serves the purpose of protecting the function of an invention. Since the original Patent Statute was passed by the First Congress in 1790, over five million utility patents have been issued by the Federal Government.
In contrast to the utility patent, a design patent protects a new, original and ornamental design, and a plant patent protects any distinct and new variety of plant, other than a tuber propagated plant, which is asexually reproduced. For example, the athletic shoe company L.A. Gear was recently held to have infringed ornamental design patents held by competitor Avia Group International.[2] Both utility and plant patents have a 17 year effective life from the date of issuance, while a design patent has a 14 year term.
B. What may be Patented?
By statute, a utility patent may be granted on "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."[3] The original intent of Congress in enacting this statute was to protect "anything under the sun made by man."[4] More recently, however, the Court of Customs and Patent Appeals, now the Court of Appeals for the Federal Circuit, has ruled that the utility patent statute applies to "any process machine, manufacture or composition unless it falls within a judicially determined exception."[5]
Some of the possible exceptions include abstractions, such as scientific principles, ideas and results; business plans; mathematical equations or formulas; natural phenomena; algorithms and mental steps; and things that do not work, i.e. perpetual motion machines. Among the currently debated issues arising under the heading of patentable subject matter are the patentability of living organisms, and the patentability of computer programs.
C. Standards of Patentability
Assuming an invention falls within the allowable parameters of patentable subject matter, the next question is whether the invention meets the required standards of novelty, usefulness and nonobviousness. Each of these standards is a term of art and has generated literally volumes of case law. Of these, novelty is perhaps easiest to define; here the essential question is whether anyone else has done identically the same thing before? In other words, is the invention found within the "store of common knowledge."[6]
Closely related to the question of novelty is the more complex question of obviousness. The statute reads in relevant part:
A patent may not be obtained though the invention is not identically disclosed or described [i.e. the standard of novelty is met] ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.[7]
For example, mere shifting of a hinge plate from one side of a plow to the other side was held to be an obvious modification in the landmark case of Graham v. John Deere Co., 383 U.S. 1 (1966).
Furthermore, simply rearranging old elements which still perform the same function has been held to be an obvious change, not worthy of patent protection.[8] While federal courts have attempted to provide guidelines in an effort to more precisely define obviousness, the question of whether an invention is obvious in light of the prior art remains the most intensely contested issue in the realm of patents.
The final standard of usefulness or utility presents some interesting contrasts in interpretation. For example, consider the case of the attempted patenting of a slot machine. After a denial by the Patent Office Examiner to patent the "one-armed bandit" on the basis that it was not useful because of its injurious effect on public morals, the inventor appealed. In overturning the Examiner's decision, the Board of Appeals stated that an invention is useful for patent purposes if it can be used, designed or adapted "to accomplish a good result, though in fact it is oftener used (or is as well or even better adapted to be used) to accomplish a bad one."[9]
Consider next the case of a chemical I process, which, while an important scientific discovery, was denied a patent because it did not produce an immediately useful product. In the case of Brenner v. Manson,[10] the U.S. Supreme Court indicated:
We [do not] mean to disparage the importance of contributions to the fund of scientific information short of the invention of something 'useful,' or that we are blind to the prospect that what now seems without 'use' may tomorrow command the grateful attention of the public. But a patent is not a hunting license. It is not a reward for the search, but a compensation for its successful conclusion. 'A patent system must be related to the world of commerce rather than to the realm of philosophy."[11]
As a general rule, the Brenner case notwithstanding, usefulness is a weak requirement. Courts merely require some minimal showing that the invention has some beneficial use. An inventor need not show that his invention is commercially successful or that it will accomplish all intended functions.
D. Preclusions to Patentability
In addition to the requirements mentioned above, the patent statutes enumerate other conditions which will bar the issuance of a patent on an invention. Of greatest practical consideration are the "on sale" and "public use" bars found in 35 U.S.C. § 102(b). That section states that an inventor shall be entitled to a patent on his invention unless "the invention was ... in public use or on sale in this country, more than one year prior to the date of the...
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