Here are three kinds of patents that can be filed in the United States:
- Design, and
Utility patents describe inventions for new processes, new instruments and machines that carry out processes, and new types of materials including bio-materials. Design patents cover the ornamental appearance of manufactured materials such as cell phone covers. Plant patents are not very common and describe new varieties of asexually reproduced plants like strawberries.
What Can and Cannot Be Patented?
An invention must be novel, non-obvious, and useful in order to qualify for consideration of grant of a patent. The invention is considered novel as long as it has not been previously patented by you or anyone else anywhere in the world and as long as it has not been published in any written format prior to the claimed date of invention anywhere in the world. An invention is considered to be non-obvious if it would not have been obvious to another person working in the field of the invention. The last criterion for patentability is utility. To be patented the invention must perform some function that is useful to mankind. Utility might seem to be a silly criterion but consider the fact that without it, every new chemical compound synthesized somewhere in the world could potentially be viewed as a possible candidate for a utility patent simply because it was a new type of material!
It is important to understand what rights patents do and don’t grant the inventor(s). Patents are a constitutionally protected entitlement (U.S. Constitution article 1 section 8) granting the inventor the right to exclude others from making, using, selling or importing the invention. Patents do not grant the inventor affirmative rights.
Your Laboratory Notebook – Evidence of Inventorship and Reduction to Practice
The best evidence in support of a patent application is a witnessed, permanently bound, consecutively numbered laboratory notebook. This is one example of why it is important to keep a laboratory notebook and to develop good record keeping skills. The one idea that may be new and unfamiliar to you here is that of “witnessing” a notebook record. Witnessing means that someone else has read and signed your lab notebook confirming that you wrote what you wrote in the notebook on the date indicated in the notebook. Note that the witness doesn’t have to be a technical expert in the type of work described in your lab notebook. Another important point about witnessing is that this doesn’t have to be done every day but it is important that your witness do this regularly as dates can become very important when interference occurs.
The first person or group of people to conceive of the idea and who can provide evidence of this fact (dates are very important) are identified as the inventors. Performing physical labor on the project for which the patent application is filed doesn’t qualify an individual for inventorship. It is also important to understand that inventorship is not the same concept as authorship on a technical paper. Therefore, authorship on a paper doesn’t qualify an individual as an inventor on a patent application nor does a supervisory position of any kind entitle an individual to inventorship.
Invention Disclosure Form
As soon as possible after you have come up with an idea for an invention, it is a wise idea to contact the office in your workplace that handles intellectual property and complete an invention disclosure form. If you are working in a college or university, you should contact the technology transfer office. If you are working at a company, you should contact the in-house patent attorney. This form will typically request information on the invention including a description of the invention, its purpose, advantages, and possible applications, names of the inventors, and information on any information you may have provided anyone in the course of your work regarding the invention including names and dates.
Sometimes when a patent is filed another individual or group of individuals may come forward to contest the patent. This can be done at any time before or after patent filed and the practice is referred to as interference. The key to successfully defending a patent is evidence of the dates of conception and reduction to practice. The individual or individuals who can successfully demonstrate that they in fact came up with the invention first will ultimately be viewed by the law as the rightful owners of the patent.
Inventions are viewed by the law as personal property and as such can be sold or mortgaged to other individuals or companies. When an inventor transfers his/her legal rights to another individual or group of individuals, the recipient is referred to as the assignee. As student working on a research project in someone else’s laboratory, you may be under an obligation to assign ownership of an invention to your employer, likely either a college or university or a corporation.
The whole idea behind obtaining a patent is to realize profit from the commercialization of the invention. Inventors will typically sell their inventions to companies which are able to commercialize their inventions. This practice is referred to as licensing. Once the technology from a patent is licensed and commercialized, the patent’s inventors may receive a share of the licensing royalties if the invention is profitable. At colleges and universities, patents and patent royalties benefit not only the inventors but their academic departments or units, support the institution’s educational, research, and public service missions, and enhance the institution’s reputation.
The United States Patent and Trademark Office
In the United States, patent applications must be filed with the U.S. Patent and Trademark Office (USPTO). The USPTO maintains a full-text, keyword searchable database of all U.S. patent applications and granted patents that may be accessed by the public at no cost on-line.
Types of Patents
There are several types of patents. We will consider three here. Provisional patents are the easiest to obtain and are generally good for 1 year from the date of filing. These patents require little more than a basic description of the invention, the identity of the inventors and the claims do not need to be specified. Provisional applications are often filed by inventors to obtain the necessary time with which to reduce to practice their inventions in support of U.S. utility or a Patent Cooperation Treaty (PCT) applications. U.S. utility patents provide patent protection within the United States while PCT applications provide international protection in over 100 countries.
The USPTO breaks patent applications and patents into three main categories: Mechanical, electrical, and chemical. Each of these three classifications is broken down into hundreds of classes and subclasses. This information is useful whenever performing patent literature searches. For more information, see the USPTO website.
The General Format of a Patent
The major sections of a patent are as follows:
- Field of invention
- Background of invention
- Summary of invention
- Figures, if any, of invention
- Detailed description of invention
- Claims of invention
We will discuss each of these briefly below.
Field of Invention
The field of invention usually consists of a sentence or two that provide information useful in classifying the patent.
Background of invention
The background section of a patent is very similar to the introduction section of a technical paper. This section provides background on the invention, specifically, information concerning what had been done previously that prompted the inventor to pursue their invention. As such this section will provide references to other relevant patents, technical journal articles, conference proceedings, etc. which can provide readers with invaluable information concerning successful inventors in this area, the names of companies that have licensed similar technologies, etc.
This section defines what the invention is, what its applications are, and what its advantages are over existing technologies.
Figures are not a required element of patent applications. However, sketches and drawings are often found in patent applications as they provide an extremely effective visual aid that can help readers appreciate the unique features and/or advantages of an invention.
This section of the patent describes the theory behind the invention, how the invention works, as well as specific details regarding how the invention can be used. These statements are referred to as “preferred embodiments.”
Claims are statements that define the scope of the invention – what the invention is and what it is not.
Standard Format of a Patent Abstract
The following is the standard format of a patent abstract:
Volume Number: Abstract # Title of Patent. List of Names of All Inventors of Patent (Affiliation or Assignees) U.S. Patent #,###,### (Patent Classification) Date of Publication for Patent, Application #, Date of Application for Patent; # of pages. Text of the patent abstract.
Q: Can students be inventors?
A: Of course! Anyone can be an inventor. There is no age limit. You don’t need to have a college degree in order to be an inventor. You simply need to have a good idea, to be able to present the appropriate evidence supporting the fact you are the inventor and that the invention works to the U.S. Patent and Trademark Office.
- M. H. Jester (2004) Patents and Trademarks Plain & Simple. Franklin Lakes, Career Press.
- United States Patent and Trademark Office. Definitive resource on patents and trademarks. Site provides free search engine and free accesss to tiff files of patents. Avail. URL:http://www.uspto.gov
- Patent Cooperation Treaty System (World Intellectual Property Organization). Avail. URL:http://www.wipo.int/pct/en/
- Free Patents Online. Free internet search engine (registration required) providing free access to pdf files of patents. Avail. URL:http://www.freepatentsonline.com