Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
as part of 35 U.S. Code (35 U.S.C. §100 et. seq.), the federal statutory scheme. The 1952 Patent Act has been modified frequently over the past 60+ years to bring some of its requirements into harmonization with international patent laws and treaties, and to clarify or change details in the U.S. law. The latest major revision to the U.S. Patent Law was the America Invents Act (AIA), enacted by Congress in 2011, and which is discussed in more detail in Chapter 18.
The Patent Act authorizes the U.S. Patent and Trademark Office (USPTO) to issue its own Rules of Practice, which set forth in further detail the particulars of how the USPTO operates, procedurally, substantially, and financially. These rules, which are found in Volume 37 of the U.S. Code of Federal Regulations (37 C.F.R.), have been enacted under the Administrative Procedures Act, and have the authority of law.
The USPTO has also issued a rather lengthy tome entitled “The Manual of Patent Examining Procedure” (MPEP), which comprises the set of guidelines the patent examiners and other personnel of the USPTO adhere to when examining or otherwise processing U.S. patent applications. Those of us, patent attorneys and agents alike, also refer to the MPEP as a reference in preparing, amending, and prosecuting U.S. patent applications. The MPEP is a set of guidelines issued by the USPTO, and does not have the effect of law, as compared to the Patent Act (35 U.S.C.) and the Rules of Practice (37 C.F.R.), which both have the effect of law.
The Patent Act, the Rules of Practice, and the MPEP are all available on the website of the USPTO (www.uspto.gov), as well as a wealth of other information relating to patents.
3.2 TYPES OF PATENT COVERAGE
3.2.1 What Is a Patent?
A patent is far more than simply a legal document. It is a technical publication, a sales brochure, and a precise definition of the fence around the technology protected by the exclusive right encompassed by the patent grant. As a technical document, the patent contains a written description of the patented invention sufficient to permit anyone interested in the field of technology to which the patent relates to make and use the invention after expiration of the patent, by reading the information in the patent. It follows, therefore, that the USPTO provides a wealth of technical information available to the public that may be unavailable elsewhere. As a sales brochure, the patent describes the prior art that was known before the invention set forth in the patent, and then describes how the invention improves, advances, and provides advantages over the known state of the art. As a complete description of the invention, along with claims setting forth the metes and bounds of the inventor’s exclusive rights, the patent also acts as an advisory to those who would be infringers as to the limits of the inventor’s exclusive technological territory.
Original issued patents comprise a set of printed pages, and drawings where required, bound together with a red ribbon under a gold seal. Duplicate copies of each patent are available from the USPTO, or from the Internet at www.uspto.gov. In the USPTO, patents are arranged electronically by subject matter, in excruciating detail, by class and sub‐class for ease of searching, which will be discussed in Chapter 8.
As a bottom line, a patent is a grant by the government of intellectual property rights that permits the patent owner to stop others from making, using, selling, offering for sale, or importing the patented invention covered by the claims, and supported by the specification, of the patent. The components of a patent are the drawings, where required, the specification which describes and explains the patented invention, and the claims which define that which the patent right covers. These documents are called “patents” because the word means “open, exposed, or evident.” Letters patent have always been open to public inspection once granted, setting forth the knowledge contained in the grants. Under existing U.S. law, U.S. pending patent applications are published electronically 18 months after filing, unless the applicant states that he or she will not file corresponding patent applications in countries outside the United States and files a non‐publication request.
“Letters patent” and “patent” mean the same thing. The USPTO issues several types of patents, namely: utility patents, including article or apparatus patents; method or process patents; design patents; and plant patents. Upon expiration of a patent, it cannot be renewed, and its subject matter enters the public domain. If an improvement is made to an originally covered invention by either the original inventor, or someone totally different, an entirely new patent on that improvement can be obtained. However, it is important to remember that, once a patent reaches its expiration date, its contents fall into the public domain, and there is no renewal provision.
3.2.2 Article or Apparatus Patents
Article, or apparatus, patents protect new machines, articles of manufacture, and compositions of matter. Article patents can also be written to cover improvements in any of these categories. These patents are granted for a term beginning on the date the patent issues, and normally ending 20 years from the date the application for the patent was first filed in the United States. If the patent claims priority from an earlier‐filed U.S. patent application directed to the same invention, other than a provisional application, 20 years from the date of the earliest such U.S. application would be the date of expiration. The term of patenting in the United States previously was 17 years from the date of issue; however, that was changed by the U.S. Congress in 1994.
3.2.3 Method or Process Patents
Method, or process, patents cover the novel process or steps that transform material from one state to another. They can also cover a novel process or method of manufacturing or using a machine to perform an operation on an article of manufacture or a composition of matter. In method or process patents (the names are synonymous), it is the process used, and not the end result, that must be novel and non‐obvious to support patentability. The enforcement term of method or process patents is the same as the article or apparatus patents described earlier.
3.2.4 Design Patents
Design patents are granted for any new, original, ornamental, and non‐functional design of, or such design placed on, an article of manufacture. Design patents are granted for a term of 15 years from the date of issue and cannot be renewed. These patents cover the esthetic features of the article shown in the patent illustrations; however, functional features of the design are specifically excluded from protection under the design patent. If a functional feature of the article is novel, that particular feature should be covered by an article patent. Design patents are covered in more detail in Chapter 12.
3.2.5 Plant Patents
Plant patents are granted to one who invents or asexually reproduces any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber‐propagated plant or a plant found in an uncultivated state.
Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc. With reference to tuber‐propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch. Examples of plants covered by the term “tuber‐propagated” are the Irish potato and the Jerusalem artichoke.
An application for a plant patent consists of the same parts as other applications: specification, claim, and illustration. The term of a plant patent is 20 years from the date on which the application for the patent was filed in the United States, or, if the application contains a specific reference to an earlier‐filed application, 20 years from the date the earliest application was filed.
The specification of a plant application should include a complete,