FAQ: Questions and Answers

[back to notice text] Question: Who may own patents? Answer: The presumptive owner of an invention is the human inventor(s). The inventor may transfer ownership to anyone (including a corporation). Employees often assign the rights to their invention to their employers as part of their employment contracts. [back to notice text] Question: What is a patent? Answer: A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., Patent law is driven by the language of the Patent Act, 35 U.S.C. ? 101, et seq., and by court cases interpreting the Act, which have added a good deal of jargon, complexity and some confusion over the years. [back to notice text] Question: What is intellectual property? Answer: Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks. [back to notice text] Question: How can I search for a U.S. Patent? Answer: Issued U.S. patents can be found on the United States Patent and Trademark Office website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/. [back to notice text] Question: What is the purpose behind the patent law? Answer: The origin of U.S. patent law can be found in the United States Constitution, Article I, Section 8, Clause 8, which provides that: "Congress shall have the power ?. [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Thus, Congress created a patent system to promote creativity by rewarding the inventor with a limited monopoly on using, making, and selling his inventions. In exchange for the right to exclude others from using, making, or selling the invention, an inventor agrees to make public her invention. Once issued, patents become public record. Inventors are also required in the patent application to disclose the "best mode" for making or using the patented invention. Failure to do so can result in an invalid patent. [back to notice text] Question: What can be patented? Answer: [not yet answered] [back to notice text] Question: What are the requirements for patent protection? Answer: To qualify for patent protection, an invention must be new, useful and non-obvious. ? New or "Novel": An invention must not be in the public domain before the patent applicant invented the invention. The U.S. Patent Office will not grant a patent on an invention that was publicly used or "on sale" - by anyone, including the inventor -- more than one year before the inventor filed a patent application. Identical or similar inventions that others publicly disclose anywhere in the world before an inventor files her patent application - known as "prior art" - may prevent the inventor from obtaining patent protection because her invention would not be considered "novel." ? Useful: An invention must be useful for some purpose, and cannot be inoperative. Utility is not presumed, but must be disclosed as part of the patent application. Note that a patent need not have commercial potential to be valid. Moreover, a patent gives its owner the right to exclude others from "making, using or selling" the invention in the U.S. It does NOT confer the right to actually use the invention, and indeed many times use is blocked by the need to employ other technologies or machines patented by another. Such situations are often resolved by trading patent licenses. ? Non-obvious: Even if a no particular prior art anticipates an invention exactly, it can still be "obvious" and thus barred from patent protection. To determine whether an invention is non-obvious one asks, "In light of known, similar products, processes or designs, would a person of ordinary skill (but not extraordinary skill) working in the field related to the inventor's invention consider the differences between the invention and similar products, processes or designs obvious?" Obviousness may also be established by combining what is disclosed by several pieces of prior art, as long as there is a motivation in the prior art for combining them. [back to notice text] Question: What is a business method patent? Answer: A business method patent is a specific type of software patent on a computer implemented way of transacting business. As in the case of other software patents, business method patents can have process claims in the form of a sequence of steps comprising the business method carried out using a computer system, the system configuration defined by the software for carrying out the business method, or an article of manufacture, such as a CD having the software for carrying out the business method stored on it. Some business method patents are controversial because they appear to cover otherwise conventional business techniques, such as auctions, when implemented on the Internet or other networked computers. Other business method patents have been allowed without considering the best prior art and may be overbroad. Patents have issued on methods and systems covering -- or purporting to cover -- such things as: all Internet-like browser/display systems (to Prodigy Services Company); reverse auctions over the Internet (to E-Bay); placing a purchase order via a communications network (the "one-click" patent to Amazon.com), and the like. Many computer program and so-called "business method" patents have been challenged as invalid and improvidently granted on the grounds that the innovation lacks sufficient uniqueness or inventiveness. Nonetheless, because a patent can confer broad and powerful rights upon its owner, and once issued is presumptively valid, patent owners are attempting to enforce their rights against rival software developers or website operators. [back to notice text] Question: What is an "algorithm"? Answer: An algorithm is the same as a mathematical equation in its structure, but it becomes a function through its input and output. For example, the equation (a+b = c) is a simple math equation. However, if we take that equation and add values for the letters such as, a=1, b=2, c=3, and then the program starts on a computer, this equation has created a function for simple letters and a summation. When a machine uses an equation to guide its operation, this is called an algorithm and the software for doing this can potentially be patented. If the formula is related to a natural law (such as E=mc^2), it cannot be patented as such, much the same as a simple math equation. However, such natural laws can be used to make patentable inventions in the categories discussed above, including software. [back to notice text] Question: If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection? Answer: For years, software was considered outside the scope of patent protection to the extent based on mathematical algorithms, as mathematics is the basic working tool of contemporary science and technology and algorithms can be natural laws. In 1981, the Supreme Court held that software-related inventions are not per se to be excluded from patent protection simply because the process of performing the program's function may involve underlying mathematical algorithms. Software uses a non-physical process by operating electronically through the utilization of a mathematical equation (algorithm) to control the output of the computer program. Mathematical algorithms have a functional application in computer programs, and thus can be protected under the Patent Act. To use an example from physics, electricity was not patentable, but the way in which electricity transmits information may be patentable. [back to notice text] Question: What does it mean to "infringe" a patent? Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent. [back to notice text] Question: Does it matter if infringement is accidental or innocent? Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement. [back to notice text] Question: Can software technology be protected by patent law? Answer: Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example). [back to notice text] Question: What does it mean to obtain a license for a patent? Answer: A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner's rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a "license," a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties. [back to notice text] Question: What are the defenses to patent infringement? Answer: There are two basic lines of defense: non-infringement and invalidity. Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing. Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent.

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