The Inventor's Mentor

November 2013

Patents Basics

The first Congress adopted a Patent Act in 1790 to reward inventors for their contribution to the advancement of civilization. Since then, innovation has been the spark that has energized the American economic engine. An invention is defined in the US law as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent…(35USC101)” Thus an invention must be new and useful.


In addition an invention cannot be obvious: a patent cannot be granted if “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” (35USC103a). The issue of obviousness has been refined in a recent court case, KSR vs Teleflex.


An invention cannot be patented if:

  • It was known or used in the US or published anywhere in the world prior to its conception.
  • It was patented or has been in public use or for sale in the US, or published anywhere in the world more than one year prior to filing in the US.
  • It has been abandoned.
  • It has been filed in a foreign country more than one year prior to US filing.
  • It was derived from another person’s idea.
  • It has already been conceived by another person in the US, or any NAFTA or WTO country (35USC102).

Non-patentable items include

·         Printed matter (can be copyrighted).

·         Naturally occurring objects. For example you can discover America (Columbus did already), but you cannot invent it. The same goes for new animal or plant species, stars, and genes. However, you can patent methods of using such new objects or treating or detecting defective genes.

·         Scientific principles such as Relativity Theory or laws of nature. These are not invented, they are discovered.

·         Non-functionally interconnected groupings of objects such as a microwave oven combined with a television. The whole must be greater than the sum of its part.

·         Pure algorithms cannot be patented as long as they remain in someone’s head. However, software that run on a digital computer and that produces a real non-transitory effect on the world can be patented.

·         Atomic bombs cannot be patented. However, other applications of nuclear technology in areas such as medicine or power generation can be patented.

A patent does not give the patent holder the right to use the invention. It gives him the right to exclude others from using it unless he provides them with a license: “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.” (35USC271a).

There are three basic types of patents:

  • Utility patents are applicable to new or improved machines, processes, methods and compositions. These patents have a life term of 20 years from the date of filing.
  • Design patents are applicable to ornamentals and artwork and do not refer to the functionality of the patented object. They have a term of 12 years.
  • Plant patents are applicable for asexually reproduced new plants. These patents last 20 years.


For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.            

This newsletter should not be construed as being legal advice.                  ©2013 by George Levy