United States patent law


Under United States law, a patent is a right granted to the inventor of a process, machine, article of manufacture, or composition of matter, that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

History

  • 1623 – England adopts Statute of Monopolies, which has been acknowledged as a legal predecessor of the US patent law.
  • 1789 – U.S. Constitution in Article I, Section 8, Clause 8 authorizes Congress "to promote the Progress of... useful Arts, by securing for limited Times to... Inventors the exclusive Right to their... Discoveries." It is believed that, unlike most parts of the US Constitution, which were derived from the British legal tradition, the IP clause was based on the French practice.
  • 1790 – First Patent Act empowered the Secretary of State, the Secretary of War, and the Attorney General to examine patents for inventions deemed "sufficiently useful and important."
  • 1793 – Second Patent Act eliminated examination of patent applications, emphasized enablement requirement. This Act did not have a requirement for claims, but it mandated a distinction "from...other things...and from other inventions" in the description:
description shall "distinguish the same from all other things before known," and in "the case of any machine" shall, explain the "principle... by which it may be distinguished from other inventions."

  • 1836 – Third Patent Act re-introduced examination, recommended the use of patent claims. Subsequent case law developed rudimentary requirements for non-obviousness, subject matter eligibility, written description and the doctrine of equivalents.
  • 1854 – In Winans v. Denmead, the US Supreme Court decided that the interpretation of patent claims is a question of law, decided by a judge, while the finding of infringement is a question of fact, decided by a jury. This remains a binding precedent currently.
  • 1870 – Fourth Patent Act required the use of patent claims in the nearly exact language used today: "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." The practice of dependent claims emerged afterwards.
  • 1890 – Sherman Antitrust Act introduced some remedies to limit abuses of patent monopoly. The SCOTUS under William O. Douglas developed case law on non-obviousness and subject matter eligibility to limit proliferation of weak patents.
  • 1952 – Fifth Patent Act codified US patent law into Title 35 of the U.S. Code including previous case law on non-obviousness.
  • 1980 – US Congress established an ex parte reexamination to allow the USPTO to review validity of issued patents at the request of patent owners and third parties. However, the process was slow and usually favored patent owners in result.
  • 1982 – Establishment of U.S. Court of Appeals for the Federal Circuit, with exclusive jurisdiction over all patent appeals from the USPTO and federal district courts.
  • 1984 – Hatch-Waxman Drug Price Competition and Patent Term Restoration Act encouraged generic pharmaceutical manufacturers to challenge the validity of wrongfully issued pharmaceutical patents.
  • 1999 – US Congress established an inter partes reexamination to allow the USPTO to review validity of issued patents with participation of third party challengers. However, just like the ex parte reexamination introduced earlier, this process failed to gain popularity, in part due to being slow and to barring subsequent civil litigation.
  • 2006 – In eBay v. MercExchange the SCOTUS ended the Federal Circuit's practice of liberally granting injunctions in cases of alleged patent infringement. Instead the same traditional four-factor test of equity used outside of patent law is mandated.
  • 2007 – The SCOTUS created uncertainty in the non-obviousness determination by mixing it up with predictability in KSR v. Teleflex, thus overruling "a clear, bright-line test in § 103 obviousness inquiries such as teaching-suggestion-motivation". Nevertheless, many legal commentators praised the ruling as the need for raising the non-obviousness bar was widely recognized.
  • 2008 – In Quanta v. LG Electronics the Supreme Court reversed the Federal Circuit's ruling and strengthened patent exhaustion doctrine.
  • 2011 – Sixth Patent Act switched from first-to-invent to first-to-file.
  • 2012–2013 – In Mayo and Myriad the SCOTUS limited patentability of inventions based on newly-discovered natural phenomena, requiring a further "inventive concept" instead of routine applications.
  • 2014 – The US Supreme Court limited patentability of business methods, software patents and other abstract ideas in Alice Corp. v. CLS Bank International albeit stopped short of banning such patents completely.
  • 2014 – In a move widely regarded as directed against patent trolls, the SCOTUS's decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. made it easier to recover attorney fees from plaintiffs, who initiate and lose in "frivolous" patent lawsuits.

    Legislation

The issues of patent validity and patent infringement fall under exclusive jurisdiction of the Federal government. On the other hand, questions of patent ownership are contested in state courts, although federal courts can make decisions about patent ownership by applying the relevant state law, when appropriate.
Most of the US patent law is codified in Title 35 of the United States Code, as authorized by Article One, section 8, clause 8, which states:
. The "patentability" of inventions is defined under Sections 100–105. Most notably, section 101 sets out "subject matter" that can be patented; section 102 defines "novelty" and "statutory bars" to patent protection; section 103 requires that an invention to be "non-obvious".
Although this statement is superficially similar to intellectual property clauses in the constitutions of other countries, the US patent system has several peculiarities:
  • This clause is interpreted as giving the primary IP rights only to individuals rather than to organizations,
  • Until 16 March 2013 the US gave priority to first inventors to invent, although the US adopted first inventor to file system since.
  • The US has provisional patent applications, which can be filed one year before filing regular patent application, thus delaying the start on the nominal 20 year patent term by one year.
  • Unlike most other countries, the US allows extension of patent monopoly beyond 20 years from the filing date via patent term adjustment due to the patent prosecution delays by the USPTO or due to product approval delays by Food and Drug Administration.
  • The US does not have utility models.
  • There is no criminal liability for patent infringement in the US, only civil liability.
  • Although lawsuits for declaratory judgement are prohibited in the US in general, they are allowed in cases of potential patent infringement.
  • A research exemption and fair use is allowed for using patented product or process for research and educational purposes, albeit their scopes have seen reductions in recent years.
  • The large size of the US economy, the strong pro-patentee legal regime and over 200 years of case law make US patents more valuable and more litigated than patents of any other country. The long history of patents and strong protection of patent holders contributes to abuse of the system by patent trolls, which are largely absent in other countries.
The US also has an extensive body of case law comprising federal court precedents that have accumulated over more than 200 years. US Federal District courts have primary jurisdiction in patent infringement cases. Patent validity can be challenged in the same US Federal District courts, as a declarative judgement or counter-claim of non-infringement. Alternatively, patent validity can be challenged at Patent Trial and Appeal Board. The US Court of Appeals for the Federal Circuit reviews the decisions of the Federal District Courts and of the PTAB. The rulings of the CAFC can be reviewed by the SCOTUS, but only on a discretionary basis.

Patentable subject matter (§101)

One author of the US Patent Act of 1952 stated that patentable subject matter should encompass "anything under the sun that is made by man." At that time, the USPTO and US courts interpreted both "anything" and "made by man" quite broadly. However, the meaning of these terms has been narrowed substantially over the years.
There are four types of "anything" : a process, a machine, manufacture, a composition of matter, as well as improvements thereof. Not every object falls into a statutory category: for example, electromagnetic waves, and rules for playing games are not patentable. The most significant restrictions occurred over time with respect to patentability of "processes". For example, patenting of business methods in US was quite common between and 2014, but courts gradually curtailed patentability of business methods to the point of almost complete exclusion in Alice Corp. v. CLS Bank International.
Also, US courts have been struggling with the meaning of "made by man". Since at least 1948 in Funk Bros. Seed Co. v. Kalo Inoculant Co. the Supreme Court made clear, that trivial implementations of a newly discovered natural phenomenon or natural product are not eligible for a patent. However, in 1991 in Amgen v. Chugai Pharmaceutical the CAFC concluded that genes isolated from their natural environment were patentable. This practice came to an end in 2013 when the Supreme Court decided in Association for Molecular Pathology v. Myriad Genetics, Inc. that "mere isolation of genes does not qualify for patent protection". At the same time the Court allowed patenting of complementary DNA without introns, since "it does not exist" in nature. Similarly, inventions based on routine applications of discoveries is not patent-ineligible in the US, since the new elements in such inventions are not "made" but rather "discovered" by man. Although the presence of such "discoveries" helps patentees to meet the non-obviousness requirement, an additional man-made contribution is required to limit this discovery to a patentable invention.
Patent subject matter eligibility is discussed in the details in section 2106 of Manual of Patent Examining Procedure. Additional examples can be found here.