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What Can You Patent?

© Jill Gilbert Welytok, Absolute Technology Group, LLC Excerpt from Entrepreneurs' Guide to Patents, Trademarks, Copyrights Licensing and Trade Secrets (Penuguin/Putnam Press 2004)

A patent operates as a mini-monopoly on a technology. Patent holders have the exclusive right to profit from innovations covered by their patents. They also have the right to keep others from selling a product that has only trivial modifications to the product they've patented and is designed to accomplish the same thing. Society has an interest in promoting technology by rewarding and protecting the investment of the creators. However, an over proliferation of patents can stifle innovation and privatize knowledge that would be of far greater benefit to the world if left in the public domain.

In This Chapter You Find Out:

  • What ideas can and cannot be patented
  • Why business method patents are so controversial
  • The advantages of design patents over copyrights
  • How to avoid inadvertently having your work fall into the public domain

In the fall of 1997, Amazon.com filed the most controversial patent application of this decade. It was entitled "A Method and System for Placing a Purchase Order Via a Communications Network", but most people just refered to it as the as the "1-Click" patent. It described a now familiar online shopping system where customers entered their credit card number and address just once so that on future visits to the website all it takes is one mouse click to make a purchase. On September 28, 1999, two years and one week after filing the application, Amazon.com was awarded Patent Number 5,960,411 for the 1-Click method.

Twenty-two days later, Amazon.com filed a lawsuit against Barnesandnoble.com, its largest competitor. Amazon wanted to stop Barnesandnoble from using their "Express Lane" feature, which allowed the Barnesandnoble's server to recognize the purchaser and access previously submitted shipping and credit information. Amazon alleged that this feature infringes upon its 1-Click business method patent.

On December 1, 1999, the eve of the holiday shopping season, the court issued a preliminary injunction against Barnesandnoble. Barnesandnoble was ordered to remove Express Lane from its Web site. Barnesandnoble appealed this decision and lost. Its Express Lane technology was shelved. 1

Amazon's controversial patent fueled arguments against overly aggressive patenting practices. One of Amazon's founding programmers, Paul Barton Davis, publicly stated that Amazon.com's early development "relied on the use of tools that could not have been developed if other companies and individuals had taken the same approach to technological innovation that the company is now following." He called Amazon's 1-Click patent "a cynical and ungrateful use of an extremely obvious technology."

A Contract Between Inventor and Government

Patents can be viewed as a contract between the government and the patent holder. To encourage private entrepreneurs to undertake all of the research, testing, effort and expenditure that accompany any new technology, the government agrees to afford a twenty-year monopoly. After the twenty-year period, the invention enters the public domain, where anyone can freely make, use, sell or profit from it.

Constitutional Basis: To Promote "Useful Arts"

The U.S. Constitution specifically authorizes Congress "[t]o promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their Discoveries." 2 A patent holder can sue in federal court to enforce the rights granted by Congress.

What exactly are these "useful arts" referenced in the Constitution? This term was originally interpreted to include processes, machines and manufactured goods. All of these types of patents are known as utility patents. In the last few decades, patent law has evolved and expanded to include ornamental design patents, business method patents and patents of certain types of plants.

Patents, as useful arts, protect what an invention does, as opposed to how it looks. Copyright, on the other hand, has historically protected the aesthetic aspects of an invention. There used to be a relatively clear line between patent and copyright law. But that line is blurring with the recognition of design patents. Innovators, in many cases, may now choose between copyright and design patent protections.

What Can You Patent?

Patent protections are not intended to remove existing knowledge from the public domain. For this reason, patents protect some ideas, and exclude others. Case law, statutes and the U.S. Constitution all limit the scope of what can be patented. The U.S. Supreme Court has observed that patents should not "restrict free access to materials already available" but should "add to the sum of useful knowledge." 3

Processes and Business Methods

Processes are a series of useful steps to accomplish a result. They involve some sort of physical or chemical interactions. The popular Scotchgard ® process for treating carpets, furniture and clothing so they're more stain resistant is a process. So are methods for taking the caffeine out of coffee or compressing a file on your computer.

Business Tip: The recent willingness of the courts to grant broad protection to business methods provides new opportunites for businesses to acquire significant protection against competitors.

In 1980 the U.S. Supreme Court decided whether a method for producing genetically engineered form of bacteria constituted a patentable process. The purpose of the bacteria was to break down the components of crude oil. The Supreme Court overturned a lower court decision which had denied patent protection to the bacteria. The lower court had held that the bacteria was unpatentable because the patentee had discovered "only some of the handiwork of nature." The Supreme Court reversed this decision finding that "the patentee has produced a new bacterium with markedly different characteristics from any found in nature." 4

Business method patents are an important outgrowth of the patentability of a process. A business method can fit within the definition of a process. For example a process for calculating mortgage rates is entitled to patent protections, 5 and so is the Amazon.com 1-Click method.

Machines

A machine accomplishes a result through the interaction of its parts, such as an engine. An example of a very simple machine is a yo-yo. It has two interacting movable parts, a string and a plastic body with a groove. Recently the PTO granted U.S. Patent No. 6,468,125 to cover a yo-yo shaped like a spinning top.

Articles of Manufacture

An article of manufacture is usually an object without movable parts, such as a chair, a mop or a pen. There's a lot of overlap in the definitions of machines and articles of manufacture, and consequently some leeway in deciding which to categorize your device as.

Compositions of Matter

A composition of matter is a combination of chemicals or other materials that achieves a certain result. In 1941, a man named Roy Plunkett received a patent for the composition of matter commercially known as Teflon. In 1900, Felix Hoffman received a patent for acetyl salicylic acid, known as aspirin. (Subsequent misuse of the trademark name "aspirin" resulted in the loss of protection for this trademark, but that's covered in Chapter 3, The Basis of Trademark Law, What Makes a Mark?)

Chemical and Pharmaceutical Patents

Many drug and chemical patents involve new uses of known substances. The Supreme Court offered the following analysis regarding chemical patents in 1980: 6

The number of chemicals either known to scientists or disclosed by existing research is vast. It grows constantly as those engaging in "pure" research publish their discoveries. The number of these chemicals that have known uses of commercial or social value, in contrast, is small. Development of new uses for existing chemicals is thus a major component of practical chemical research. It may take years of unsuccessful testing before a chemical having a desired property is identified, and it may take several years of further testing before a proper and safe method of using that chemical is developed.

New Uses for Old Products

Suppose someone uses a hairpin to improve the performance of a car engine. This new use of the hairpin can be patented. The new patent would be limited to that use and prior patented uses would be unaffected. Processes, in particular, don't have to be new to be patented. The Patent Act provides that the term "process" includes a new use of a previously known process.

Utility Patents: Concrete Applications Versus Abstract Ideas

Einstein wouldn't have been able to patent his formula, E=MC 2 . This formula is simply an idea, a theory about a law of nature and not a specific device or process. Patent law draws a sharp distinction between abstract ideas and specific, useful applications. Ideas, like Einstein's theory of relativity or Newton's law of gravity, are considered unpatentable laws of nature. But inventions applying these theories are patentable.

Overview: The Four Requirements for Utility Patents.

Humans shouldn't be able to take credit for the work of nature. This is the basic principal underlying the statutory requirements for patent protection. The statute is intended to separate ideas and laws of nature from actual useful inventions.

Utility patents are the broadest and most common form of patent protection. To qualify for one, the invention must be:

  1. Within the classes described by the patent statute

  2. Useful

  3. Novel

  4. Non-obvious

Congress and the courts make occasional, infrequent exceptions, allowing a patent to issue even if one of the requirements isn't completely met. These rare exceptions are limited to situations where the objective of separating man-made innovations from mere applications of naturally occurring phenomena is otherwise met.

Requirement #1: The Invention Must Fall Within the Statute

To be patentable, an invention must fall within one of the categories described by the U.S. Patent Act. The Act provides "[w]hoever invents or discovers any new and useful process, machine, articles of manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore subject to the conditions and requirements subject to this title." 7

A process is a set of steps to achieve an end, and the remaining three categories pretty much represent products that can be brought to market. Machines have moving parts, while articles of manufacture are useful objects like chairs and hairpins. Compositions of matter are chemical inventions and combinations of materials that may come out of labs or are stumbled upon accidentally. New and useful improvements include both upgrades and novel applications of technology in the public domain.

Requirement #2: The Invention Must Be Useful

In the advertising sections of health and fitness magazines you can find advertisements for products that are supposed to burn fat, build muscle or add inches to a woman's bust line. Since the ads appear month after month, the products probably turn a profit. None of them, however, qualify for patent protection absent a showing that they're truly useful.

The use of an invention must be specifically disclosed in the patent application. A patent must specifically demonstrate the functioning application of an idea. If this weren't required, the effect would be to grant a patent on an unknown range of applications, rather than restricting it to the particular application which the inventor has perfected. This would be tantamount to allowing patents to encompass ideas rather than proven applications, undermining the intent and structure of the patent system.

To be useful, and invention must have a stated purpose, and must actually work. Fortunately, usefulness is usually the easiest criteria for a patent applicant to meet because most inventions are developed to serve a need. The use can be purely aesthetic, such as waterproof mascara or a fabric that doesn't wrinkle.

What about a process that results in a product that's currently useless, but might be useful in the future? In 1966, the Supreme Court held that "a patent is not a hunting license." 8 The Court considered a patent application for a chemical process that had no discernable utility. The developers argued that because of the importance of ongoing chemical research, they should only have to demonstrate a possible future utility. The majority of the Court rejected this approach as having the potential to too broad a monopoly on ideas. Justice Harlan, writing for the dissent, argued that it was not as important that the process be useful as it was that the process be successful.

Ultimately, courts have moved more toward Justice Harlan's approach. To give pharmaceutical manufacturers some breathing room, courts have held that successful clinical trials on animals demonstrate a probability that the drug will be useful for humans. 9

A final caveat to the usefulness requirement is that the use must be legitimate. The Patent and Trademark Office will reject applications for products that have only the purpose of deceiving or endangering the public. For example, the Office probably wouldn't issue a patent for counterfeiting money or turning back the miles on an odometer. The Atomic Energy Act of 1954 prohibits people from patenting atomic weapons.

Requirement #3: The Invention Must Be Novel

One of the legally strongest and commercially successful patents of all time is the Polaroid camera patent. Prior to Polaroid, instant imaging simply didn't exist. Consumers had to wait hours, days or even weeks for their photos to be run through a heavily equipped dark room. The debut of the Polaroid meant that you could watch your picture develop in minutes, before your very eyes. The Polaroid camera was clearly a novel invention.

In the 1970's, Polaroid was successful in enjoining Kodak from introducing its own instant imaging technology on the market. Kodak's version could hardly be regarded as novel since it employed many of the same or analogous chemical processes to achieve a substantially similar result. Kodak was not only required to stop making the infringing camera, it had to turn over all of its profits from the sale of the device to Polaroid. 10

The Patent Act provides that a patent cannot issue if the invention is known, used or published by others in the U.S. or patented in a foreign country prior to the date of invention disclosed on the application. 11

In deciding whether or not an invention meets the novelty requirement, patent examiners may consider factors such as:

  1. What's covered by prior patents issued prior to the filing date of the present application?

  2. What inventions have been published prior to the date of the application?

  3. What kinds of similar inventions are being publicly used, sold or known by others in the United States?

  4. What kinds of similar inventions are in the public domain?

  5. Has another inventor or manufacturer built or used a similar invention, without having abandoned, suppressed or concealed it?

Requirement #4: The Invention Must Be Non-Obvious

Non-obviousness would seem to automatically result from novelty, but they're really two distinct requirements. Non-obviousness speaks to the level of creativity.

Anything that's new is, by definition, novel. Non-obviousness is a requirement that the invention be sufficiently creative so that it's an actual contribution to field to which it's introduced. Anything less than an actual inventive contribution doesn't justify the grant of the monopoly conferred by patent protection.

Non-obviousness is decided in the context of "prior art." What has been the practice and scope of knowledge prior to the introduction of the invention? What is the difference between the new invention and previously used devices or processes?

In 1941, the Supreme Court held that a device wasn't patentable because it lacked the "flash of genius" normally associated with a non-obvious invention. 12 The court explained that non-obviousness requires a unique insight, which would not be disclosed by simple research.

Combinations of well-known technologies and devices can meet the non-obvious requirement if they're more useful than the mere sum of the components. This is known as the concept of "synergism." The combination of old elements must produce a synergistic result to be patentable. 13

The courts also take into account so-called secondary considerations. If a new product takes the market by storm, selling like wild fire, that's a pretty good indication that it's non-obvious.

In 1966, the Supreme Court established the following four part test for analyzing whether invention is non-obvious: 14

 

  1. What prior art does the invention incorporate?

  2. What is the difference between the invention for which the patent is sought from inventions under prior art?

  3. What level of skill do people engaged in the prior art ordinarily possess?

  4. What secondary considerations, such as commercial success of the claimed innovation, justify the grant of the patent?

 

  1. Amazon.com, Inc., v. Barnesandnoble.com, Inc., 239 F.3d 1343 (2001).

  2. United States Constitution, Article I, Section 8, Clause 8.

  3. Graham v. John Deere Co., 383 U.S. 1 (1966).

  4. Diamond vs. Chakrabarty, 447 U.S. 303 (1980)

  5. State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).

  6. Dawson Chemical C. v. Rohm & Haas Co. 448.S. 176 (1980).

  7. 35 U.S. Sec. 101

  8. Brenner v. Manson, 383. U.S. 519 (1966).

  9. See, e.g., Campbell vs. Wettstein, 476 F.2d 642 (C.C.P.A. 1973)

  10. Polaroid Inc. v. Eastman Kodak Co., 228 USPQ 305 (D.Mass 1985), aff'd 229 USPQ 561 (Fed. Cir. 1986).

  11. 35 U.S. Sec. 102.

  12. Cuno Engineering Corp. vs. Automatic Devices Corp., 314 U.S. 8 (1941).

  13. Sakraida v. Ag Pro Inc., 425 U.S. 273 (1976).

  14. Graham v. John Deer Co., 383 U.S 1 (1966).

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