8.4 PATENTS
8.401 Introduction.
This discussion is designed to help general practitioners identify issues of concern to patent owners that may affect the rights to an invention or the ability to patent an invention or commercialize a patented invention. General practice attorneys should be familiar with patent law concepts, including patentable subject matter, the term of a patent, novelty, and other topics, all of which may present obstacles to patenting or which may affect an inventor's or business's patent rights. Also, the availability of patents for software and business methods requires businesses to re-think strategic approaches to intellectual property protection and consider the appropriate mix of trade secret, copyright, trademark, and patent protection. An attorney who is familiar with patent law concepts can help his or her clients make sound, strategic business decisions. Because the practice of patent law is so specialized, matters that must be handled by patent attorneys are not discussed here. The discussion does not include issues like patent prosecution procedures, divisional applications, re-examinations, reissue applications, or derivation hearings.
Because patent law is a specialized area of law, if an attorney needs assistance with a patent law matter, he or she should contact an attorney that devotes a majority of time to the practice of patent law. The United States PTO maintains a list of registered patent attorneys, and patent attorneys can be found through the Virginia State Bar's Intellectual Property Law section. Also many areas have regional intellectual property law associations that serve as practice groups. These local intellectual property bar associations are an excellent source of referrals to qualified, local patent attorneys who may be more responsive than a name pulled from the PTO's list. Most of these regional practice groups also have websites, and participating attorneys field intellectual property law questions from general practitioners and potential clients by email, telephone, or otherwise.
8.402 What Is a Patent?
A. In General.
A patent is a grant made by a government that confers upon the creator of a new, useful, and nonobvious invention the sole right to make, use, or sell the invention for a set period. In the United States, the United States PTO administers and regulates the issuance of patents. Authority for the federal government to create and administer the patent system is found in article I, section 8 of the Constitution. 5511 The laws related to patents are found in 35 U.S.C. § 101 et seq.
Although patent law has been relatively stable, Congress passed the Leahy-Smith America Invents Act (AIA) 5512 on September 16, 2011. The AIA is a result of pressures from diverse industries and groups. From international companies and academics, there has been a desire for the United States to conform to international standards and specifically to switch from its first-to-invent system to a first-to-file system. 5513 Furthermore, in view of the high costs of litigation, there was pressure from electronics companies to reduce the uncertainties of litigation by clarifying the law regarding willful infringement and inequitable conduct, eliminating "secret" prior art, and retaining the prior user defense. 5514 There were conflicting pressures from the electronics and pharmaceutical industries about making changes to various types of damages deemed excessive, such as treble damages for willful infringement, as well as mechanisms for having equitable factors play a greater role in determining whether to enjoin infringement. 5515 Additional issues concerned perceived abuses of venue, as well as ensuring patent quality and reducing pendency by enhancing the obviousness standard and increasing funding for the United States PTO so that more examiners could be hired to deal with the increased number of patent applications being filed. As such, the AIA represents a substantial change in patent law. Further, since the AIA was not implemented immediately but in stages, 5516 practitioners must be conscious that the substantive law will vary with respect to a patent application depending on the date of certain actions in the prosecution of that application, making it more important than ever to consult with a competent patent attorney. In the following discussion, the specific sections affected by the AIA will be discussed as well as any pre-AIA laws since, for the foreseeable future, the pre-AIA and AIA rules will co-exist for pending and new applications.
Another recent change has been the interest that the Supreme Court has taken in patent law. Among other topics, the Supreme Court has provided additional guidance on the topics of what can be patented, 5517 the standard for obviousness, 5518 the amount of detail required in a claim, 5519 the appropriate venue for patent infringement actions, 5520 and the effect of pre-patent-filing commercial activities. 5521 In combination with the AIA changes, patent law has become increasingly complex. As such, it is important that a patent attorney be engaged in order to ensure that the invention will be protected in a way that meets the client's needs.
Patents are wholly creatures of federal statute. There is no such thing as a state or common law patent. As in copyright law matters, there is no Virginia patent law. However, state laws can control issues regarding patents, such as how patents may be conveyed or transferred. State laws that interfere or conflict with federal patent laws are preempted. 5522 For instance, while patent assignments are matters of state common law, where patent assignments provide access to federal courts, the Federal Circuit has held that federal common law governs the interpretation. 5523 As such, patents present a complex set of predominantly federal issues with important exceptions on issues such as ownership.
During the limited term of the patent, the inventor has the right to exclude others from making, using, selling, offering for sale, or importing the patented invention into the United States. Utility and design patents do not give the inventor the right to make, use, or sell an invention or patented design but only the right to exclude others from doing so. 5524 A plant patent gives the patent owner the right to exclude others from asexually reproducing, selling, or using the plant. 5525 The purpose of the United States patent system is to encourage the development of technology by making patents public documents, thereby disclosing to the general public new and useful information and inventions. In other words, a patent application and the patent must "teach" the patent to someone skilled in the art.
A nonprovisional utility patent application is composed of (i) the specification; (ii) the claims; (iii) the drawings; and (iv) the oath or declaration. 5526
B. Specification.
The specification includes several subsections, namely, the "background of the invention," the "summary of the invention," a "detailed description of the invention," and a "brief description of the drawings." According to the requirements of 35 U.S.C. § 112, the detailed description describes the invention in sufficient detail to teach those skilled in the art how to make and use the invention, at least one specific embodiment of the invention, and the best mode of the invention. 5527 However, the AIA provides that for patents filed on or after September 16, 2012, the "failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable." 5528 Nevertheless, applicants are still encouraged to disclose the best mode of the invention during prosecution of a patent.
C. Claims.
The patent must include one or more claims "particularly pointing out and distinctly claiming the subject matter" that the inventor has invented. 5529 Since the claims define the scope of protection granted by the patent, the claims are the most important part of the patent. The claims must be drafted using clear, definite terms to pass the PTO examiner's scrutiny. The claims are often drafted using broad language to enable the patent applicant to claim that the broadest scope of rights are covered by the patent. 5530
D. Drawings.
The patent must include any drawings that are necessary to understand the invention. 5531 The drawings are usually in black ink on white paper, without color. Each element claimed in the patent application must appear in at least one of the drawings.
E. Oath or Declaration.
An oath or declaration signed by the inventor is required to file a complete application. The declaration must be accurate and complete to obtain a valid patent. For applications filed before September 16, 2012, the oath or declaration must have identified the specification to which it was related, stated whether the inventor is a sole or joint inventor, 5532 and been signed by all of the actual inventors. 5533 The oath or declaration had to include a statement that the declarant believed the named inventor was the original and first inventor of the invention claimed. The oath or declaration also had to include a statement that the inventors acknowledged the duty to disclose to the PTO all information known to them to be material to the patentability of their invention. 5534 For applications filed on or after September 16, 2012, the AIA provides a change in form for the oath and declaration, as well as expanded rights to continue prosecution even when the oath or declaration is missing but the owner of the patent wishes to continue prosecution. Specifically, due to changes in 35 U.S.C. § 115, the applicant must acknowledge that false statements are punishable under 18 U.S.C. § 1001 but need not aver that the applicant is under a duty to disclose (although this requirement remains). The biggest change from an applicant's perspective is that, before the AIA, until an oath or declaration was...
