A few weeks ago, I discussed the legal significance of patent markings on products sold in the United States. That article raised a more basic question among some readers: “What is a patent?” In this post, I discuss the reason the United States issues patents, how to determine whether your invention is patent eligible, and how to understand the different parts of a United States Patent.
The American Founders decided to grant patents in order to spur economic growth and to encourage inventors to reveal their discoveries to the public. Thus, Article I, section 8, clause 8 of the United States Constitution authorizes Congress to allow for patent rights, or limited time monopoly rights for inventions, stating that Congress has the power
To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
Have you ever seen a patent notice like “U.S. Patent Pending” or “U.S. Patent No. 1234567” and wondered about its implications? Could it be used to scare off potential competitors, or does it have some deeper legal importance? Under federal law, which governs all things patent, patent marking actually plays an important role in patent infringement suits. This article reviews the reasons for marking a product with a patent, the kinds of markings that are legally sufficient under the law, and the practical implications for patent owners and possible infringers alike.
A patent marking is legally relevant. Not just a deterrent, it serves to provide constructive notice to a potential infringer that the item is patented or patent pending. This means that the law imputes notice to an infringer, even if the infringer never actually saw the patent marking. Notice of some kind is required under United States Code, Title 35, section 287 before a patent holder may bring an infringement action. There are two kinds of notice: actual and constructive. Actual notice occurs when someone tells an infringer about their infringement, like, for instance, when a patent holder sends a demand letter. Constructive notice occurs when a patent holder properly marks their patented product. If infringement occurs after either of these events, the infringement is actionable in federal court.
Many start ups begin with limited finances, forcing them to consider what they can and cannot afford at any given stage in development. While most small businesses and start ups question whether they can afford to pursue trademark registration as part of their brand development, what they cannot afford is to wind up on the wrong side of litigation for failing to fully explore on whose turf they may inadvertently be treading. It is easy for businesses of all sizes, whether starting up, re-branding, or expanding their growth into other areas of development, to unwittingly adopt a brand already in use by another business. Learning what, or who, is in a name is a step in the start up process that most cannot afford to skip.
In principle, the answer is “yes,” but doing so has become a lot more difficult under recent court decisions. Generally speaking, to obtain a utility patent you must have something that (1) contains patentable subject-matter; (2) is novel; (3) is non-obvious; (4) is specifically defined and fully disclosed; and (5) has utility. We provide further details on our patents and trade secrets page.
Both processes and machines qualify as patentable subject matter under Title 35 of the United States Code. Software patents are often criticized as patenting non-technical processes or otherwise providing monopoly power for abstract ideas or mathematical formulas, all of which are not patentable under current court precedent. On this basis, many argue that software is not patentable subject matter–that is, no matter how novel and non-obvious particular software is, software should never be eligible for patent protection, so the argument goes. Nevertheless, software is clearly patentable as a component part of a machine, but not as a stand-alone item. The United States Supreme Court suggested as much in its 2010 decision in Bilski v. Kappos, when it held that a business method–including one implemented in software–is not per se unpatentable. In practice, business methods are usually implemented in software.
The idea that software embodied in a machine ought to be patentable makes sense. Notwithstanding the position of software patent detractors, it is a simple and intuitive legal rule that a machine should not lose patent eligibility simply because it is programmable. If that were the case, most electronics would have issues obtaining patent eligibility, as many include a programmable chip to control their functions, and they usually can be updated with new software to change the operation of the chip.