Overview
From http://www.law.cornell.edu/wex/patent
A patent is essentially a limited monopoly whereby the patent holder is granted the exclusive right to make, use, and sell the patented innovation for a limited period of time. The U.S. Patent Act, 35 U.S.C. §§ 1 et seq., was enacted by Congress under its Constitutional grant of authority to secure for limited times to inventors the exclusive right to their discoveries. See Article I, Section 8, Clause 8.
Granting exclusive rights to the inventor is intended to encourage the investment of time and resources into the development of new and useful discoveries. In exchange for this limited monopoly, immediate disclosure of the patented information to the U.S. Patent and Trademark Office (PTO) is required. Once the term of protection has ended, the patented innovation enters the public domain.
Requirements For Patentability
The five primary requirements for patentability are: (1) patentable subject matter, (2) utility, (3) novelty, (4) nonobviousness, and (5) enablement.
Patentable Subject Matter
The patentable subject matter requirement addresses the issue of which types of inventions will be considered for patent protection. Under 35 U.S.C. § 101, the categories for patentable subject matter are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof. In Diamond v. Chakrabarty, the Supreme Court found that Congress intended patentable subject matter to “include anything under the sun that is made by man.” See Diamond v. Chakrabarty, 447 U.S. 303 (1980). However, the Court also stated that this broad definition has limits and does not embrace every discovery. According to the Court, the laws of nature, physical phenomena, and abstract ideas are not patentable. The relevant distinction between patentable and unpatentable subject matter is between products of nature, living or not, and human-made inventions.
The traditional rules that “printed matter” and “business methods” are unpatentable have recently been called into question. In 1998, the Federal Circuit held that a system of conducting business can be patentable as a process even though it does not act on anything tangible. See State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). The rule against patenting printed matter still retains its force, although printed matter may be patentable if its relationship with the physical invention is either new and useful, or new and non-obvious.
Utility
The second requirement for patentability is that the invention be useful. See 35 U.S.C. § 101. The PTO has developed guidelines for determining compliance with the utility requirement. The guidelines require that the utility asserted in the application be credible, specific, and substantial. These terms are defined in the Utility Guidelines Training Materials. Credible utility requires that logic and facts support the assertion of utility, or that a person of ordinary skill in the art would accept that the disclosed invention is currently capable of the claimed use. The utility must be specific to the subject matter claimed; not a general utility that could apply to a broad class of inventions. Substantial utility requires that the invention have a defined real world use; a claimed utility that requires or constitutes carrying out further research to identify or confirm a use in the context of the real world is not sufficient.
Novelty
The novelty requirement described under 35 U.S.C. § 102 consists of two distinct requirements; novelty and statutory bars to patentability. Novelty requires that the invention was not known or used by others in this country, or patented or described in a printed publication in this or another country, prior to invention by the patent applicant. See 35 U.S.C. § 102(a). To meet the novelty requirement, the invention must be new compared to the prior art. The statutory bar applies where the invention was in public use or on sale in this country, or patented or described in a printed publication in this or another country more than one year prior to the date of the application for a U.S. patent. See 35 U.S.C. § 102(b). In other words, the right to patent is lost if the inventor delays too long before seeking patent protection. An essential difference between the novelty requirement and statutory bars is that an inventor’s own actions cannot destroy the novelty of his or her own invention, but can create a stutory bar to patentability.
Nonobviousness
Congress added the nonobviousness requirement to the test for patentability with the enactment of the Patent Act of 1952. The test for nonobviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made. See 35 U.S.C. § 103.
The Supreme Court first applied the nonobviousness requirement in Graham v. John Deere Co., 383 U.S. 1 (1966). The Court held that nonobviousness could be determined through basic factual inquiries into the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of skill possessed by a practioner of the relevant art.
In 2007, the Supreme Court again addressed the test for nonobviousness. See KSR International Co. v. Teleflex, Inc. (04-1350). In KSR, the Court rejected the test for nonobviousness employed by the Court of Appeals for the Federal Circuit as being too rigid. Under the “teaching, suggestion, or motivation test” applied by the Federal Circuit, a patent claim was only deemed obvious if “some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of person having ordinary skill in the art.” The Court endorsed a more expansive and flexible approach under which “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”
Enablement
The enablement requirement is directly related to the specification, or disclosure, which must be included as part of every patent application. “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains…to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” See 35 U.S.C. § 112. At the end of the specification, the applicant lists “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” See 35 U.S.C. § 112. Enablement is understood as encompassing three distinct requirements: the enablement requirement, the written description requirement, and the best mode requirement.
Every patent application must include a specification describing the workings of the invention, and one or more claims at the end of the specification stating the precise legal definition of the invention. To satisfy the enablement requirement, the specification must describe the invention with sufficient particularity that a person having ordinary skill in the art would be able to make and use the claimed invention without “undue experimentation.” See In re Wands, 858 F.2d 731 (Fed Cir. 1988). In In re Wands, the Federal Circuit Court of Appeals listed eight factors to be considered in determining whether a disclosure would require undue experimentation. The Patent and Trademark Office has incorporated these factors in the Manual of Patent Examining Procedure. See MPEP 2164.01(a).
The written description requirement compares the description of the invention set out in the specification with the particular attributes of the invention identified for protection in the claims. It is possible for a specification to meet the test for enablement, but fail the written description test. The basic standard for the written description test is that the applicant must show he or she was “in possession” of the invention as later claimed at the time the application was filed. Any claim asserted by the inventor must be supported by the written description contained in the specification. The goal when drafting patent claims is to make them as broad as the PTO will allow. The writing requirement imposes two important limitations: the applicant may not seek protection for a claim that is broader than the supporting specification; and, if the applicant intends to focus on a particular attribute of the invention in the claims, that attribute must be clearly indicated in the specification.
In addition to disclosing sufficient information to enable others to practice the claimed invention, the patent applicant is required to disclose the best mode of practicing the invention. See 35 U.S.C. § 112. The best mode requirement is violated where the inventor fails to disclose a preferred embodiment, or fails to disclose a preference that materially affects making or using the invention. See Bayer AG v. Schein Pharmaceuticals, Inc., 301 F.3d 1306 (Fed. Cir. 2002). A violation of the best mode requirement involves two essential elements: first, it must be determined whether the inventor actually had a preferred mode of practicing the invention at the time the application was filed; if it is established that the inventor did contemplate a best mode for practicing the invention, the question becomes whether sufficient information was disclosed to enable a person of ordinary skill in the art to practice the best mode of the invention.
Patent Marking
From http://www.senniger.com/article-details.aspx?article=2950
The 2011 Leahy-Smith America Invents Act has made it easier to comply with patent marking requirements.
“Patent Marking” refers to the notices “Pat. 7,000,000,” “Pat. Pending,” and the like that appear on products to notify the public and competitors that products are patented. Failure to comply with the patent marking and notice requirements of US law can be a costly oversight for patent owners. The Philips Electronics Corporation sued a group of other electronics manufacturers for infringing two of its patents regarding universal remote controls for household appliances. Because Philips did not mark its patented remote control, or provide actual notice to the infringer, the District Court of Delaware barred Philips from recovering monetary damages for over three years of infringing sales. Implementing a consistent marking regimen that fully preserves the right to past damages for infringement can be a daunting task for patent owners. Fortunately, the 2011 Leahy-Smith America Invents Act (“AIA”) has made it easier to comply with the marking requirements through virtual marking.
From Dale Lischer (IP attorney at Smith, Gambrell & Russell) via email to Bryan Dunford, 9/13/16:
35 U.S.C. §287 requires that the patent notice include the words “patent” or “pat.” and the patent number or a website address which, when accessed, associates the patent number with the product. If the product does not lend itself to affixing the patent notice, then the patent notice can be placed on the package for the product.
Failure to affix the patent notice precludes damages for infringement prior to the giving of actual notice.
I have set out §287(a) below.
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
(a) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
From http://www.senniger.com/article-details.aspx?article=2950
(1) How can I comply with the notice requirement of US law?
Under 35 U.S.C. § 287, a patent owner can collect damages for an infringing product only if adequate notice is given of the patent(s) at issue. The patent act provides two ways of providing notice: actual and constructive. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice is achieved by affixing a product with, for example, the word “patent” or abbreviation “pat.” along with the patent number.
The AIA permits a patentee to put the public on constructive notice via “virtual marking.” This “virtual marking” is satisfied by the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers.
(2) Do I have to mark the product itself, or can I mark the packaging instead?
The best practice is to mark the product itself with either the patent number or the “virtual marking” internet address. But the law provides for alternatives if marking the product itself “cannot be done.” Patent owners might satisfy the marking statute by marking the packaging if, for example, the size of the product itself renders marking unfeasible, or if the cost to mark is disproportionate to the cost of the product itself. But patent owners should be cautious not to decide to mark the packaging rather than the product itself just because it may be more convenient. The language of the statute is strict, stating that marking the packaging is acceptable only if marking the product “cannot be done.” A court is not likely to accept marking the packaging instead of the product if similar third-party products are marked on the products themselves. In one case, for example, a cable maker was not entitled to certain monetary recovery because it put the patent number on the cable packaging rather than on the cable itself.
(3) Who must comply with the marking requirement?
A patent owner who makes and/or sells a product covered by a patent must mark that product with all applicable patent numbers. A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products. This includes demanding that any non-compliant licensee the patentee discovers properly mark its product(s). The law recognizes, however, that maintaining one-hundred percent compliance by all licensees may not always be feasible. A failure by a licensee to properly mark is thus not necessarily fatal, so long as there is “substantial compliance” with the marking statute. That being said, the patent owner should consistently monitor its licensees’ activities to the extent practicable to ensure they comply with the marking requirements.
(4) Do I have to list every patent number relating to the product?
Yes, every valid patent that applies to the product must be listed in any physical or virtual marking. If an applicable patent is not included, damages resulting from the infringement of that patent are not available until actual notice is established.
(5) What are the advantages of virtual marking?
Virtual marking provides many benefits over traditional patent marking. The most significant advantage is that the patent owner can avoid the expense and effort required to update and maintain patent information on its products. Rather than retooling its manufacturing process or changing product packaging every time a patent issues or expires, the patent owner can simply update its “virtual marking” website. This not only ensures potential infringers will have constructive notice of the existing patents, it can also ease concerns over potential false marking claims.
(6) Does the marking requirement apply to all types of patents?
No, it does not. There is no marking requirement for patents that contain only method claims as there is no physical product that can be marked. But if a patent owner wants to give notice of method patent claims, products may be marked with “Made under US Pat. 7,000,000” or “For Use under US Pat. 7,000,000.” If the patent contains only product claims or has both method and product claims, the product should be marked. Marking is also required for design patents to obtain the full scope of remedies available for infringement.
(7) My product is just a component of the patented product. Do I still have to mark my product?
Marking one component of a multi-part patented product is sufficient when the components are packaged together. If your product is sold separately, the best practice is to mark it as “for use” pursuant to the patent number(s). If your component is separately patented, it should be marked and the assembled product should also be marked.
(8) My product is software. What, if anything, must I mark?
Where there is a “tangible item” embodying the software, it must be marked to comply with the marking statute. Simply providing notice at the start-up screen is likely insufficient. Stated simply, if there is a way the product can be marked, it should be marked. If there is a website that embodies the software, or that provides access to a program or downloadable software covered by the patent, the website should be marked. However, if the patent contains only method claims, there is no need to mark.
(9) What is the effect of using “Patent Pending”?
The purpose is to warn copyists that a patent covering the product may issue. But the patent statute does not provide any advantage to using “Patent Pending” or penalty for not using “Patent Pending.” Using “Patent Pending” does not entitle one to damages prior to issuance of a patent; nor does it provide any basis for objecting to copying.
(10) What is false marking and what steps can I take to avoid it?
False marking most frequently involves (1) marking an unpatented product with a patent number, the word “patent,” the abbreviation “pat.” or other similar statements; or (2) placing the words “patent pending” or similar terms on a product for which no patent application is actually pending. Marking a product with a patent that has been found invalid may also be grounds for a false marking claim.
Recent years have seen a significant spike in the number of false marking claims filed in federal courts across the country by seemingly uninterested parties. This was because the false marking statute at the time allowed “any person” to sue for false marking, and the penalty for false marking was up to $500 per item falsely marked. The AIA includes provisions intended to stem that practice.
For example, only the United States may now pursue the “up to $500 per item” fine. A person or entity that suffers a “competitive injury” may bring a civil action against the false marker, but can only seek damages sufficient to compensate for that injury. Furthermore, if a patent expires, a mark on the corresponding product with that patent number does not amount to a false marking violation under the AIA.
False marking problems are expected to be relatively rare in view of the 2012 law changes. The best way to avoid a potential false marking problem is to periodically review your products and active patent estate to make sure marked products are actually covered by the specific language of your active patent claims. Monitoring licensees is also a necessity.