A Patent System for the 21st Century (2004) / Chapter Skim
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Appendix A: A Patent Primer
Appendix A: A Patent Primer
Pages 143-154
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From page 143... ...
Software, for example, has been patented as either "virtual" machines2 or processes.3 The right -- to prevent others from making, using, selling, offering for sale, or importing the patent holder's invention -- is granted in return for publication of the invention. A patent contains claims setting out the precise legal boundaries of the protection, which applies to anything falling within the scope of the claims, not simply the inventor's exact original work.
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From page 144... ...
WHAT MAY BE PATENTED? The statutory provision on patent-eligible subject matter is brief and has changed little from the version written by Thomas Jefferson: "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The effective scope of patenting has been determined primarily by court cases, among them decisions upholding patents on genetically altered living organisms, isolated genes and parts of genes, computer software, and methods of performing business functions.
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From page 145... ...
HOW ARE PATENTS OBTAINED? Unlike copyrights and trade secrets, which may be asserted by the originator without prior government approval, but like registered trademarks, patents are the product of applications to a government agency (the U.S.
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From page 146... ...
that person to carry out the invention without undue further experimentation or invention. Upon completion of the initial search and examination, whose duration varies among technologies, the examiner issues an official letter, known as a First Office Action, either allowing claims or rejecting them as unpatentable under one or more of the patent statutes.
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From page 147... ...
If additional claimed elements do require new matter for description or enablement, those claims only benefit from the filing date of the continuation-in-part application. If the examiner concludes that the application contains claims to more than one patently distinct invention (not simply variations on a single invention)
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From page 148... ...
The AIPA attempted to ensure that inventors would not get less than 17 years of patent protection unless they delayed the prosecution of the application. To take advantage of the available patent life, the patent holder must continue to pay maintenance fees to the USPTO at regular intervals -- the end of the third year, the end of the seventh year, and the end of the eleventh year.
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From page 149... ...
or Abandon application Application Abandoned Board of Patent Appeals Patent Issues Reverse Examiner or Some or all claims are allowed Affirm Rejections Applicant's Further Response Abandon appeal or Application Abandoned Appeal rejections to the Court of Appeals for the Federal Circuit or U.S. District Court Court of Appeals for the Federal Circuit Patent Issues Reverses Board of Patent Appeals or Some or all claims are allowed Affirms Board of Patent Appeals Application Abandoned FIGURE A-1 Patent application examination process.
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From page 150... ...
named on the patent application, but title is frequently assigned to an employer (for example, firm, university, laboratory) or sponsoring organization as part of a prior agreement governing work products.
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From page 151... ...
If a patent holder faces the possibility of being sued for infringement, having the ability to make a counter claim for infringement of the patent holder's own patent may help to avoid paying licensing fees or being sued or may induce settlement of an infringement claim. · Barring settlement, patent suits can result in injunctive relief stopping the accused activity or substantial damage awards if infringement is established.
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From page 152... ...
Although appeals from USPTO decisions to reject patent applications also result in judicial review of patentability, third parties (potential infringers) may not participate in appeals from regular examinations or ex parte re-examination.
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From page 153... ...
, effective in 1978, designed to streamline the process of seeking patent protection in many countries. Under PCT an applicant may file an international application, designating any number of PCT-member states in which patent protection is desired, and may obtain a prior art search, which is conducted by one of the principal national patent offices designated as an International Searching Authority.
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From page 154... ...
Disagreements over intellectual property rights between members are subject to the WTO's dispute resolution procedure. The U.S., European, and Japanese patent offices have meanwhile pursued harmonization on a bilateral and trilateral basis, with the result, for example, that search results on identical applications are shared although not yet mutually accepted.
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