Patent statute

The Patent Statute. A patent represents a "contract" between an inventor and the public. The inventor offers full disclosure of his or her invention in sufficient detail to instruct the public about the invention and its use. In exchange for public disclosure and the societal benefits derived therefrom, a patent holder is granted exclusive rights to make, use, and sell the invention and the right to exclude all others from the same for a period of 20 years. Thus inventions that would otherwise remain preciously held secrets are made known for greater advancement of the public good. 

A thornier issue than written description for ESTs and SNPs, however, is that of utility. Section 101 of the patent statute requires that the subject of a patent must be a "useful invention." Under the Guidelines, an application satisfies the utility requirement if the invention has "specific, substantial, and credible" utility such that "a person of ordinary skill in the art" would recognize the claim as credible "in view of disclosure [contained in the patent application] and any other evidence of record. .. that is probative of the applicant s assertions"(Utility Examination Guidelines, 2001). The Guide-... 

The Supreme Court considered the objective of the Ohio trade secret laws and considered that their laws were not at odds with the patent statutes. Neither removes matter from the public domain. If trade secrets were to apply only to non-patentable subject matter, an innovator would be at great risk in evaluating patentability. The court records on holding patents invalid clearly show that many inventors have invalid patents. To ask for a judgment on whether to seek protection as a trade secret or a patent puts too heavy a burden on the innovator. Quoting further ... 

If a new patent act changes the patent statutes, its impact on trade secrets should be considered as to length of protection, costs, and effectiveness of protection. 

The wording in the oath is actually based on the patent statute which specifies that a person is entitled to a patent for an invention, plant, or design unless (35 U.S.C. 102) ... 

We have now seen what the categories are for patentable inventions and which contain those patents which relate to chemistry and metallurgy. Let us suppose then, that as an inventor, you carefully follow the provisions of Rule 71, and the Patent Office approves your specification as to form, and after a thorough search of the art, finds your invention to be novel, do you then get the patent The answer is not necessarily, because you still must surmount the hurdle provided by Section 103 of the patent statutes, which reads in part as follows ... 

Thus, in the year 1950, an inventor named Tolkmith (IS) presented a patent application claiming a certain methane phosphonic chloride. The only utility stated for the compound was that it was of value as an intermediate for the preparation of more complex phosphorus derivatives and as a constituent of a parasiticide. The Patent Office Board of Appeals in its decision, held that the applicant s showing of utility did not comply with Section 112 of the patent statutes requiring that the manner and process of making and using the invention be described in such exact terms as to enable one skilled in the art to make and use the same. The board went on to say ... 

There is nothing in the patent statutes, or any statutes called to our attention, which gives the Patent Office the right or duty to require an applicant to prove that compounds or other materials which he is claiming and which he has stated are useful for pharmaceutical applications are safe, effective, and reliable for use with humans. ... 

Further, the court held the process claims invalid because they were too broad and indefinite and hence did not comply with the then Section 33 of the patent statutes this is none other than our old friend, Rule 75, which states that the applicant shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. In considering these last two grounds, we may recall that it has been frequently held that a patentee is not to be charged with a knowledge of the correct theory or even understanding of his invention (21). Yet we see that, as a practical matter, a misunderstanding of the theory was one reason which caused the court to strike down the method claims. 

The subject of disclaimers underwent considerable revision in the new Patent Code of 1952. The effect of this was to reduce greatly its effect on the patent as a whole.. More than a century ago, if one or more claims of a patent was held invalid, the entire patent was likewise invalid. To relieve the harshness of this rule, the original disclaimer statute provided, in 1837, that the patentee could still sue on the other claims, provided a so-called disclaimer were filed and, provided further, that the patentee had not unreasonably neglected or delayed to enter the disclaimer. This language was fruitful of much controversy and has now been done away with. The only penalty now for not filing a disclaimer is that the patentee can no longer recover costs of the suit. The disclaimer in the patent under discussion was filed in 1949, before the new patent statute became effective Jan. 1, 1953. 

Chemicals are classified as compositions of matter from a patent statute viewpoint. A claim on a composition protects the inventor without regard to the use of the product. Where a new use is found for an old chemical, if the new use incorporates a change in the physical form or packaging, sometimes product claims can be obtained. More commonly, the new discovery must be claimed as a method of using. Examples are given to illustrate the type of wording which has met acceptance in the Patent Office. No matter how worded, the legal requirements for patentability, particularly unobviousness, must be met. 

There are numerous decisions that hold product claims to chemical compounds as compositions of matter to be valid within the meaning of the patent statutes. With few exceptions there are no specific references to the rule that products of nature are unpatentable. The statements in the decisions are in sharp contrast with the thought that the rule was at all applicable. For example in the Kuehmsted case (tf), the pure chemical compound known generally as aspirin was held to be patentable because of its new utility. The court held that whatever may have been its antecedents chemically, aspirin in pure form was a new thing. The formerly known crude material was legally a different material in that it had no utility as a medicinal. The court held that aspirin was an article of manufacture within the meaning of the patent law. 

The standard set by the EPC lies between these extremes. Many countries throughout the world have similar policies or have adopted the EPC statutes on patentable subject matter either literally or with minor modifications. It is likely that, wherever future changes of patent statutes are expected (e.g. in Eastern European and South American countries), these will also adopt at least major parts of the EPC standards. 

Complete information about the patents of the competitors is useful before the beginning of a new research program. Liberty of exploitation (freedom to use) has to be evaluated before the commercialization and preferably, before the development of a new product, a process, or a machine. In this case, patent applications, patents and the corresponding patents statutes of competitors must to be studied in detail. 

Although the Federal patent statute provides for 17 years of exclusive rights to an invention, the actual amount of time a dmg manufacturer is usually able to market its dmg without competition is substantially less. Because firms usually seek patent protection once a potential dmg compound is identified (284), a large portion of the patent period can be taken up by the sponsor s research and development (R D) activities and the U.S. Food and Dmg Administration s review of the marketing application (507). In 1984, Congress passed the Dmg Price Competition and Patent Term Restoration (DPCPTR) Act (Public Law 98-417), which allowed PTO to add up to five years to the patent term of dmgs when the patent term was eroded by regulatory review.8 As of May 1992, the PTO had issued 142 patent extensions most often for a period of... 

In the United States, an invention to be patentable must be both new (114)andunobvious (115) over the prior art. Generally the prior art is the body of existing technological information (i.e., the state of the art) against which the invention is evaluated. Prior art may include other patents from anywhere in the world, printed publications or printed patent applications Ifom anywhere in the world, U.S. patent applications that eventually issue as patents, public use or offer for sale in the United States of the subject matter embodying the invention, and, depending on the circumstances, unpublished and unpatented research activities of others in the United States. These types of prior art are defined in 102 of the Patent Statute. 

Trade secret and patent protection have coexisted in the United States for more than 200 years. The U.S. Supreme Court in 1974 made it clear that federal patent law does not preempt state trade secret law (275). Nonetheless, the disclosure requirement of patent law and the secrecy requirement of trade secret law are often in conflict. The Patent Statute requires a patent specification that teaches one of ordinary skill in the art how to make... 

For an invention, such as a composition of matter, to be patentable it must first be new or novel. Under the EPC, an invention shall be considered to be new if it does not form part of the state of the art. The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. In the United States, novelty is defined by categories within the patent statute with reference to, for example, the date of invention or the application filing date, whether or not the prior disclosure was by the inventor or another, and the type of disclosure, for example a publication, a public sale or a patent application. In the United States, novelty-defeating prior art is said to anticipate a claimed invention. An invention is anticipated only if each and every element in the claim is found, expressly or inherently, in the prior art. Thus, when assessing the novelty of an invention, the differences between the invention and the prior art are important. 

All modem patent statutes require that the claimed invention be novel, i.e., not previously patented or described in a single reference. A patent claim is not novel (is anticipated ) if the claim limitations would include subject matter already in the public domain. For example, a claim reading... 

For Baekeland s struggle to defend his patents, see Mercelis, Leo Baekeland s Transatlantic Struggle for Bakelite House Committee on Patents, Oldfield Revision and Codification of the Patent Statutes, No. 4(1912), 29-30. 

Codification of the Patent Statutes, No. 4. 62nd Cong., 2nd sess., April 12, 1912, H.R. 23417. Washington, D.C. Government Printing Office, 1912. 

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