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The Inventor's Mentor

January 2008

 Introduction To Patents

This is the first column of a series that will discuss patent law from the point of view of the individual inventor. The first topic is a general introduction to patents.

 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. This will be a topic of a future column.

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 substances, scientific principles or laws of nature, and non-functionally interconnected groupings of objects. Pure algorithms cannot be patented. Software can be patented because it can run on a digital computer – that is, software is a method of using a digital computer. 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.

 Next month we’ll discuss another topic. Stay tuned.

For archived newsletters and a lot of information for the small inventor go to: If you have any question you can contact me at (858)259-2226 or email me at This newsletter should not be construed as legal advice. ©2010 by George Levy.