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The Inventor's Mentor

January 2011

Intellectual Property – Utility 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…(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).

An invention cannot be patented if:

·         It was known or used in the US or published anywhere in the world prior to its conception. In other words, the invention must be your own and cannot be in the public domain. One cannot patent an invention described in a patent which has expired either because the inventors did not pay the maintenance fee or because the maximum patent life of twenty years has lapsed. Therefore, you cannot patent the wheel which has never been patented or the light bulb whose patent was issued on January 27, 1880 and is now expired.

·         It was patented or has been in public use or for sale in the US, or published anywhere in the world for more than one year prior to filing in the US.  Any invention already in the public domain is not patentable.

·         It has been abandoned. Unless you can show that you have been diligently working on your invention since the date that you first conceived of it, you cannot claim that date if someone else files an identical invention.

·         It has been filed in a foreign country more than one year prior to US filing.

·         It was derived from another person’s idea.  The invention must be your own.

·         It has already been conceived by another person in the US, or any NAFTA or WTO country (35USC102). Copying a foreign invention is not permitted.

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 if it produces a useful, concrete and tangible result tied to a particular machine or apparatus, or if it transforms a particular article into a different state or thing. 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 types of patents:

·         Utility patents

·         Design patents

·         Plant patents


Utility patents may be granted to anyone who invents, discovers or improves anything new and useful. Patentable subject matter includes:  


·         Processes. These include, for example, manufacturing or business methods as well as software (as long the software produces tangible results).


·         Machines. These cover mechanical as well as electrical devices, from mouse traps to 3D TV’s.


·         Compositions of matter. These include chemicals, mixtures and compounds ranging from toothpastes to pharmaceuticals to dishwasher detergents.      

·         Articles of manufacture. These include manufactured objects which are neither machines nor composition of matter, but which, nevertheless, can be claimed because of the function they perform, for example a mechanical cam or a computer disc.


Recent advances in biotechnology have stimulated the filing of numerous patents based on genetic sequences of amino acids. Another type of patent, called “method of doing business” has also become common. These include, for example, processes used in Internet commerce.


I will be discussing design and plant patents in subsequent issues of this newsletter. 


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This newsletter should not be construed as legal advice.

                   ©2011 by George Levy