A patent for an invention is the grant of a property right to the inventor, issued by the U.S. Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States and its territories and possessions.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
United States patent laws are codified at Title 35 of the U.S. Code. Patent rules and regulations are codified at Title 37 of the Code of Federal Regulations. International cooperation between nations is largely governed by the Patent Cooperation Treaty and the Paris Convention, which deals with the protection of industrial property (i.e., patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition). To stay abreast of recent changes in patent procedure check Recent Patent-Related Notices, which is provided by the U.S. Patent and Trademark Office.
Recent Developments in Patent Law - Supreme Court and Federal Circuit Cases
Contributed by: Nixon Peabody LLP
By: Russell J. Genet
Global Patent Issues
Contributed by: Nixon Peabody LLP
By: Ronald I. Eisenstein
Below are some articles that address various issues in Patent Law:An Examination of Software Patents
By: Under Secretary of Commerce for IIP & Director of the USPTO David Kappos
November 20, 2012
Enablement Issues Concerning Aggressively Broad Generic Claims* By: J. Benjamin BaiIntroduction:
Most patent prosecutors would probably agree that it is our professional responsibility to obtain the broadest possible claims for our clients. This professional responsibility is often taken to mean obtaining the broadest claims possible in light of prior art. As a result, practitioners may well draft broad generic claims based on a limited number of working examples or species. In some instances, the generic claims may be so broad that they encompass millions or even billions of compounds or species.
The temptation to claim broadly is not new. For example, Samuel Morse, the inventor of the telegraph, claimed not just the telegraph, but all means of communicating electronically at a distance. Similarly in the chemical arts, an inventor of a new chemical compound often attempts to claim not only the new compound, but also the entire genus to which the new compound belongs. In some cases, a generic claim encompassing millions of compounds is based on the discovery of only one or two species. But what is wrong with aggressively broad generic claims? Isn't an applicant entitled to claim as broadly as permitted by the prior art? Not exactly. In addition to being bound by the requirements that an invention be useful, novel, and non-obvious in light of prior art, patent law requires that a claim be fully enabled. Applied to a genus type claim, which often includes multiple embodiments within the claimed genus, this means that the full scope of a generic claim must be enabled such that the scope of enablement bears a reasonable correlation to the breadth of the claimed genus. Is it possible for one or two species to enable an entire genus? The answer is: perhaps. This article explains some of the pitfalls of aggressively broad generic claims and possible ways to avoid them.
*Reprinted by special permission of Northwestern University School of Law,
Journal of Technology and Intellectual Property.