The Basics of Patent Law

Patent law gives inventors an exclusive right to exclude others from making, using, or selling their invention for a limited period of time. The granting of this monopoly is justified by the Framers’ belief that society benefits from the products of original and creative thought.


The granting of a patent requires meeting statutory requirements for novelty and non-obviousness. This includes a thorough search of the relevant prior art to determine novelty, and a detailed disclosure to demonstrate that an invention is not obvious.

What is a Patent?

Patents are property rights granted by a sovereign government to inventors. They give inventors exclusive rights to their patented invention for a period of time in exchange for full disclosure of their invention. The USPTO handles and approves patent applications. Patents can be either utility or design patents, and they cover a broad range of subject matter, 성범죄변호사 from tangible scientific inventions like circuit boards, car engines, and heating coils to intangible innovations such as computer software, business methods, and genetically modified organisms.

In order for an invention to be eligible for patent protection, it must be novel (not previously made public), useful, and non-obvious. A patentable invention must also be an “original” invention, meaning it can’t have been substantially copied from another person’s work. The USPTO has strict requirements for filing a patent application. Only licensed patent attorneys and agents can file patent applications on behalf of inventors.

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While copyrights protect creative works from publication to the public, such as books, music, motion pictures and art, and trademarks protect intellectual property associated with companies, including taglines and logos, patents offer protection for inventions such as products, machines and processes. Patents are an essential part of the economy. They allow entrepreneurs to invest in new ideas and innovations with the knowledge that they will be protected against others copying their wo 성범죄변호사 rk.

What is a Patentable Invention?

A patentable invention can be a machine, manufacture, process, article of manufacture or composition of matter. It must be new, non-obvious and useful in order to receive patent protection from the USPTO. Most inventions are a combination of existing components or elements that operate in a known way. The patent application must describe the best mode of carrying out the invention so that someone skilled in the relevant technology field or industry could replicate the invention.

To be considered non-obvious, the invention must differ enough from prior art to make it non-obvious that one of ordinary skill in the relevant technological field or industry would not have been motivated to combine the various elements. For example, substituting sodium chloride for potassium chloride in a road salt formula that already included the former ingredient is not considered an invention because it is not new and does not provide a significant advantage over the prior art.

Most manufactured items possess both functional and ornamental characteristics so they may qualify for both a utility patent and a design patent. However, the USPTO and courts have narrowed the meanings of these terms over time and the distinction between what is considered to be functional and what qualifies for design patent protection has become particularly important. Following the CAFC’s Bilski decision, it may be even more difficult to obtain design patents for products that are not strictly ornamental.

What is a Patent Review?

A patent review is a critical process that helps individuals and organizations inspect legal documents for technical accuracy and description completeness related to a particular invention. This is done to help avoid any future legal complications and ensures that the terms and conditions included in the patent are clear and comprehensible for all parties involved.

The patent review process, created by Congress in the 2011 America Invents Act, lets a department of the USPTO called the Patent Trial and Appeal Board hold a quasi-judicial review of a patent. This is known as inter partes review, and it has proven incredibly useful in weeding out bad patents and stopping abuses by powerful patent holders. But the system is a decade old now, and aggressive patent trolls have learned to game it. That’s why a new bill introduced this year would close several loopholes and make it even stronger.

The first step in a patent review is to look at the patent application itself, especially its detailed description. When examining, you should consider whether it sufficiently describes the invention and allows a person with skill in the art to practice it, and if it meets other requirements of patentability such as written description, enablement, and definiteness. Then, if the application looks good, you should make a few comments that will improve it further. These can include pointing out clerical errors, ambiguous drafting language, missing antecedents, and more.

What is a Patent Appeal?

The Patent Trial and Appeal Board, formerly the USPTO’s Board of Patent Appeals and Interferences, is the court within the Office that reviews challenges to patent validity. The Board has the power to reverse a denial of a patent application, or a rejection of claims in a patent, and hears interfering proceedings between applications for a patent and between patents.

The PTAB also hears appeals from adverse decisions by examiners in original applications, reissues and reexaminations. In addition, the PTAB oversees patent trial and review proceedings including inter partes review (IPR), post-grant review (PGR), covered business method review (CBM) and derivation proceedings.

PTAB dockets are available on the PTAB’s website. This free database does not contain underlying pleadings, but it can be searched by participant name, docket number, patent number and technology center, case type, date filed and full text searching. It has a search template geared toward patent law, although it does not have USPQ headnotes.

Finnegan has a strong team of PTAB lawyers that includes experienced patent litigators, technical practitioners and dedicated PTAB paralegals who work in conjunction with our top-ranked district court and ITC teams to help our clients succeed. Our clients rely on our comprehensive PTAB expertise to help them navigate high stakes patent trial and appellate matters. This combination of PTAB, district court and ITC experience allows our clients to prevail in even the most complex patent cases.