Patentable subject matter United States

A fundamental requirement for obtaining a patent is defining an advance, development, or invention which is within those classes of "subject matter" which the law of the United States regards as patentable. Two classes of patentable subject matter, ie, computer software and biotechnology, are the subject of relatively new and evolving law. However, other types of subject matter rest on fairly certain ground as to patentabiUty. Examples of patents directed to various types of subject matter are described in the following. 

Beyond the honesty in communication (candor) required by the U.S. patent system to issue strong patents, there is an affirmative duty on applicants for patents in the United States to disclose any material information that they are aware of that might affect the patentability of their invention. Although we have already learned that examiners at the USPTO will independently search the prior art during patent examination, they often do not have the familiarity with the subject matter that the patent applicants and their representatives do. This collective duty of disclosure, candor, and good faith are critical to the mission of not only the USPTO but to the applicant as well, for at least three reasons. 

The only other 102 section that might apply to the prior inventive acts of the German chemist is 102(g), but it will not. Unlike in part (4), we do not have an interference situation. In the previous hypothetical, the German inventor was pursuing a patent in the United States and found himself in a contest to prove who invented the subject matter first. We learned that the German inventor abandoned his patent application in the United States and thus could not be involved in an interference. As a result of this analysis, the date of the act of the invention itself will not be relevant because none of the 102 sections apply to our fact scenario. 

Patentable Subject Matter Outside the United States, 720... 

To obtain a patent on an invention in the United States, the inventor or inventors must, as the initial step, file a patent application describing the invention in such terms as to teach one of ordinary skill in the art how to make and use the invention and claiming the subject matter that the inventor (or inventors) regards as the invention. The subject matter of the claimed invention must be within the statutory classes of patentable inventions. In addition, the claimed invention must have utility and be both new and nonobvious. The requirements for patentability (especially as to what constitutes patentable subject matter) can vary considerably throughout the world. 

Patentable subject matter in many countries (especially for health-related and biotechnology inventions) is often significantly restricted compared to practices in the United States. Some countries do not allow plants or animals to be patented. The United States, Japan, and the European Patent Office currently allow genetically engineered animals to be protected by patent (55). Many countries do not allow pharmaceuticals or methods of medical treatment to be patented. Each country will, of course, have its own specific limitations and exceptions for patentable subject matter (56). It is not possible in the present chapter to provide an even limited discussion of such patent-able subject matter. Moreover,any details provided could very well be out of date in a relatively short time. However, a few examples for selected countries (57) are helpful to illustrate the variations in patentable subject matter ... 

Japan. Generally similar to patentable subject matter in the United States (65). 

National patent offices act within the boundaries of the country they exist within and apply that country s patent law. Patent applicants may file applications directly with national patent offices in each country where patent protection is required. The decision of where to hie an application is generally based on the predicted potential markets for the invention. For example, a crop plant genetically modihed to be resistant to frost may only be marketable in countries with colder climates and with markets open to genetically modihed foods. Another consideration is the patentable subject matter allowed in each jurisdiction. For this product, an inventor can seek patent protection for a plant in the United States, but not Canada or Europe. The most cost-effective strategy for an invention that is only marketable in a small number of countries is to hie patent applications directly with individual national patent offices. 

In the United States, three statutes set forth the elements required in order for an invention to be patentable. 35 U.S.C. 101 requires that the invention be described in writing , patentable subject matter , and that it be useful . 35 U.S.C. 102 requires the invention to be novel, or new, in the sense of never before made, sold, or described . 35 U.S.C. 103 requires that the invention, in addition to being new, also be non-obvious in view of the state of the art. Most countries that grant patents have similar requirements, although they may be stated in different terms. 

One of the requirements for obtaining a patent is that the claimed subject matter in the patent not be obvious in view of prior art (previously disclosed patents and publications). Obviousness [16] and prior art [17] are legally codified in Title 35 of the United States Code. 

Today, nearly every important reagent or method reported in the literature has a patent or patent application associated with it, especially if it has potential commercial value. A search of the patent databases, such as the United States Patent and Trademark Office (http //www. uspto.gov/) or the European Patent Office (http //ep.espacenet.com/) for key words or the potential names of inventors can provide a list of any existing issued patents or patent applications related to a bioconjugate technique or compound. In addition, a fee-based service such as Delphion is particularly effective at finding patents related to any subject matter (http //www. delphion.com/). 

Perhaps its author is trying to tell us something about the rate of change in trade secret law by publishing this treatise in loose-leaf form with yearly supplements. A U.S. patent has a fixed term of 17 years and extends protection to the United States only—although its disclosures are worldwide. Foreign patents can be obtained separately in each country and may be quite costly. The scope of protection and subject matter which is patentable varies tremendously. There is action towards patents common to several countries, but the cost is apt to remain high, and many years will be required to determine their effectiveness. 

From time to time, different persons invent the same subject matter and intend to protect it by patent rights. In these cases, two or more patent applications are filed by the inventors claiming substantially the same invention. Most countries in the world apply the first-to-file principle to determine who is entitled to the patent. In contrast, the United States do not give priority in case of conflict to the first applicant, but to the first to invent. Interference proceedings are instituted to determine who is the first inventor and consequently entitled to the patent (see 35 U.S.C. 102 g (1)). The parties involved in such a proceeding may provide evidence of facts to prove their date of invention. 

Only one party can be awarded a patent to an invention (die same invention cannot be patented twice), and die prize usually goes to the party that can establish that it was die first party to invent the contested subject matter. This is a consequence of die United States being a first-to-invent country (more will be explained regarding this facet of U.S. law in Chapter 3). The first-to-invent system makes a provisional patent application less critical than if die United States were a first-to-file country like the rest of the world. However, filing a provisional patent application in the United States is still advantageous because any... 

The USPTO classifies claimed subject matter according to an internal classification system whose mysteries are not completely fathomable to the common man. The Index to the United States can be found at www.uspto.gov/web/patents/classification/uspcindex/indextouspc.html. 

The word probably is used because 102(e) prior art can be antedated by showing prior invention. On the surface, the applicant s chances don t look especially promising because he just filed die patent application, whereas the competitor s patent application just published. Since the normal time from filing a provisional patent application to publication of an application properly claiming priority to that application is approximately 18 months in the United States, there is at least a good chance die competitor actually invented the subject matter before the applicant as well. 

In addition to the above three requirements, inventors must also clearly and completely describe the invention. This is called sufficiency of disclosure. The specification of a patent application must clearly and sufficiently describe the subject matter, so that it can be carried out by a skilled person in the subject. Some countries (such as Brazil and the United States) also require an indication, when applicable, of the best way of executing the invention, called the best mode of the invention. 

In the United States priority of invention is important because the first inventor rather than the inventor first to file a patent application is entitled to award of a patent. An interference is a proceeding initiated hv the Patent Office to determine which of two or more parties claiming the same or overlapping subject matter was first inventor and therefore entitled to an award of priority and issuance of a patent on the common matter. 

Classification, as exemplified by the system employed by the United States Patent Office, groups together in fixed compartments items having certain common features. In the Patent Office classification, the subject matter of the patent is analyzed by the classifier in terms of the features on which the classification system is built. Terminology ranging from the highly generic, e.g., carbon compounds, toys, medicines, poisons, and... 

For competitive reasons, a patent application must be filed as soon as possible. In fact, a patent application for a new compound or series of compounds must be filed as soon as the new compound or series of compounds have been made and found to have significant and interesting activity. This is necessary because others may have made the same invention, and failure to file promptly may result in a total loss of patent rights (in most of countries, except the United States patents are granted to the first party to file a patent application on the subject matter). There are many cases in which the same invention has been independently made by more than one party within as short a period as 2 or 3 weeks. 

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