A patent is a grant of property right issued by the federal government that grants an inventor the exclusive right to manufacture and sell his or her invention for a period of 20 years. Any infringement of this right is punishable by law. Hence a patent is a monopoly that the government protects for the purpose of encouraging inventors and inventorship. Sole rights to an invention allow the inventor (or joint inventors, as the case may be) to profit from it. He or she can then commercialize the invention, often selling the monopoly in the form of a license to other manufacturers, who in turn must abide by the inventor's stipulations. At the conclusion of the 20-year period, other manufacturers have a right to make the product and sell it to their advantage, without permission. Ideally, the inventor by then has enjoyed the commercial benefits of his or her invention, and has a market edge over any new competitor.
Reality, however, often falls short of this ideal. The giant Xerox Corp., for example, fostered the invention of xerography. When the Xerox patent expired in 1979, the Japanese company Canon Inc. quickly seized and overtook Xerox's market share, and nearly destroyed the company in the process. Hence a patent is meant to encourage invention; what the inventor does with the patent depends on his or her business acumen.
The patent document itself is written by the inventor and describes the invention in great detail, underscoring its uniqueness and setting forth its advantages. The Patent and Trademark Office (PTO) then publishes the document. Nowadays all U.S. patents are accessible online as well as in print. Each year the PTO issues over 100,000 patents to U.S. citizens as well as to foreigners seeking American patents.
The overwhelming majority (80,295) of the 90,649 patents granted by the PTO in 1998 fell under the category of utility patents, which embody the traditional, common-sense concept of an invention, including technical objects, instruments, applications, and formulas (as in chemical compounds in medicine) that are of use to the general public. Design patterns, issued for unique and innovative ornamental designs for an item of manufacture, accounted for 9,914 grants in 1998. The design patent does not protect the functional features of the product, only its appearance. Plant patents, of which 245 were granted in 1998, protect unique, usually asexually produced plants and seeds. The final classification is the reissue patent. Reissues are modifications of previously granted patents that more acutely define specifics that were deemed defective in the original. The PTO granted 195 reissue patents in 1998.
Besides patents, the PTO also registers trademarks, which is a quite different matter. For a business that uses trademarks (brand names and corresponding logos) to identify its products or services, trademark registration does not secure monopoly rights. There is also confusion between patents and copyrights. A copyright, issued by the Library of Congress, is similar to a patent in that it grants to the author of a book, the composer of music, or a sculptor, choreographer, sound recorder, or motion picture producer an exclusive right to not have their work copied without their permission. This right lasts for the lifetime of the creator of the work plus 50 years thereafter.
Hence patents do not cover written works, music, or art, but do include computer software products, because of their technical applications. Both patents and copyrights fall under the rubric of intellectual property. Almost all countries have patent laws. In the absence of patents, there would be little financial incentive for an individual to create an original product or design or a unique plant. Moreover, there would likely be a paralyzing number of lawsuits in the United States if there were no specific patent laws. In the U.S., patents historically have always been awarded to the original inventor, and not to the "first filer," as in all other countries. Hence if an inventor files for a patent in the United States, he must prove that he or she is the first to invent rather than the first to file the invention.
The U.S. Constitution in 1789 explicitly granted Congress the right to authorize patents to inventors. Patents in those days were quite familiar to the general public, and were characteristic of the most advanced countries. Patents in these formative years of the republic were modeled on those of Great Britain; some colonies, most notably Massachusetts and South Carolina, had granted patents to inventors as early as the 1640s. Britain, however, had not been the originator of patents: the Italian merchant republics, specifically Venice and Florence, awarded the earliest known patents in the mid-fifteenth century. The first patents in the British Isles were awarded a century later, in Elizabethan England.
As a result of Article 1, Section 8 of the Constitution that specified "the Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their writings and discoveries," the first patent law was passed in 1790. This law spelled out the criteria for granting patents: they were to go to the original inventor; that the invention was not to have been "known before or used"; and that the invention or discovery be useful. The first inventor to be awarded an American patent under the new law was Samuel Hopkins, for his formula for making "Pot and Pearl Ashes."
The patent law of 1790 would be widely imitated. The law, however, did not establish a separate office or administrator to award patents. Instead, examining and awarding patents was considered a part-time job that the secretaries of war and state and the attorney general could perform in their spare time. It was up to them to give patents, deciding either collectively or individually. Secretary of State Thomas Jefferson, himself an inventor, had perhaps the keenest interest in this sideline. However, soon he, too, was inundated, bringing many public complaints about the slowness and cumbersomeness of the patenting process. Nonetheless, in three years, 57 patents were issued for such inventions as type punches, a machine for manufacturing nails, and various steam-power innovations.
To streamline the patenting process and cut down on the time it took to award patents, Congress passed a new law in 1793 that effectively nullified the previous one. This law was decidedly inferior to the one it replaced, since all it did was require a person to register an invention without the stipulation that it be examined and determined to be original or useful. While this certainly simplified the patenting process, it opened the door for all kinds of chicanery, which gave rise to a large number of lawsuits. For the next few decades, however, this law remained in force, until a backlash produced a reformed and stronger patent law in 1836.
The new law reinstated the requirement that an invention's originality had to be proven, which in essence was a restatement of the 1790 patent statute. The 1836 version, however, distinguished itself from its predecessor by its provision for a separate patent bureau with its own staff that worked full-time on patent processing. While Congress in 1802 had created a discrete patent office within the State Department, this one-person office was mandated to do little more than register patents. Hence the 1836 reformed patent statute set up what amounted to a modem patent office, headed by a commissioner of patents; and for the first time, an inventor had the right to appeal if his patent application was rejected.
This new law reinstated the 1790 patent statute's liberal stance toward foreign inventors, who were once again eligible for patents. As in the 1790 and 1793 laws, the inventor, and not the first to file an invention, had the sole right to apply for a patent. That meant that an inventor could freely sound out her ideas or attempt the commercialization of her invention as long as this occurred within 12 months of the first filing date of her patent application.
Even by 20th-century standards, the 1836 patent statute ushered in a modem system of patent processing that was liberal in application, protecting the inventions of foreigners as well as citizens of the United States for a period of 14 years and granting them the right of appeal. While the law would be superseded by another law in 1870 and by the codification of 1952, these later laws would incorporate the features of the 1836 statute. Other changes in patent law occurred in 1842, when design patents were granted for the first time; and 1861, when the 14-year limitation on a patent was extended to the current seventeen years. In 1930, plant patents went into effect, while in 1952, all patent laws were codified.
The United States was so far ahead in its patent application procedure in the 19th century that in 1869 the Patent Office issued seven times as many patents (13,997) than Great Britain, which at that time was considered the world's "workshop." The kinds of inventions no doubt presaged this country's industrial supremacy in the 20th century. Some of the most notable patents were the steam-powered engine (1811), the mechanized reaper (1834), the telegraph (1840), the sewing machine (1846), the typewriter (1868), the telephone (1876), the phonograph (1878), the electric light bulb (1880), and the motion picture projector (1893). Eli Whitney's cotton gin went into use in the first half of the 19th century, but was patented in 1794. In addition, Charles Goodyear's vulcanization of rubber—an example of a process, rather than an instrument or object—received a patent in 1844 and later made the modem bicycle and car tire possible.
Meanwhile, one industrializing country after another was adopting patenting statutes. In 1900 Japan sent an observer to the United States to learn about patenting, and adopted many of the features of the American patent system, including the first-to-invent criterion rather than first to-file. In 1883 those countries which had patent laws in place agreed to the Paris Convention, which meant that an inventor who filed for a patent in one member country could use that same filing date in the other member countries. An American who applied for a patent outside of the United States or its territories, however, would have to file before he or she could disclose the invention publicly. The Paris Convention was followed 87 years later with the Patent Cooperation Treaty of 1970. In this treaty, only a single application had to be filed for a patent, which could be made in English, and was automatically applicable in other member nations.
The U.S. Patent Office, established in its own building as a result of the 1836 patent law, burned to the ground that year, and with it, all of its records, numbering in the thousands. It was quickly rebuilt, becoming part of the Interior Department in 1849. No doubt because of this catastrophe, all patent applications since then, along with their drawings, had to be submitted in duplicate. The Patent Office remained a division of the Interior Department until 1925; since then, it has been a part of the Commerce Department.
Basically, the U.S. patent law and supplements, amalgamated into one single patent law in 1870, remained unchanged until 1952. On 19 July 1952, the new patent statute, which is still in force, became law and went into effect on 1 January 1953. It codified all previous patent laws, modifications and amendments, specified what was patentable, and spelled out the application procedure and the duration of patents. For the first time, it established the principle of "nonobviousness," which meant that an invention not only had to be original, but ingenious, and not obvious to a practitioner or expert on the subject. Excluded from patents was any invention contrary to the public welfare, and any patent that utilized nuclear material for weapons purposes. The Patent Office was renamed the Patent and Trademark Office (PTO), its most important activity being the time consuming, exhaustive study of each patent application.
The Uruguay Round of the General Agreement on Tariffs and Trade (GATT) included provisions for patent legislation that went into effect shortly after the enactment of the World Trade Organization (WTO) Agreement on 1 January 1995. These included measures to guard against discrimination pertaining to the country or territory of inventive activity in issuing patents. In addition, the duration of patent protection was extended from 17 to 20 years, with a possible extension of up to five years in cases involving significant delays stemming from interferences and appeals in the patent process.
Inventions in all categories (utility, design, plant, and reissue) must meet the basic legal criteria for patentability: an invention must be useful, original (beyond what would seem a common-sense or "obvious" advancement, even to a practitioner or expert in the field), and cannot have been publicized more than one year prior to filing. The application process for a patent is not difficult. Typically an inventor hires a patent attorney to assist in writing up the application and in researching the possibility that the invention, or some form of it, might have existed prior to the application (known as the "prior art"), which would disqualify it. An application is not judged ready until there is a workable model, in the form of a drawing or actual model, of the invention. The written application must contain the date of the invention's conception, and must be signed by a witness.
Once the application is submitted to the PTO, the application undergoes detailed examination. To facilitate this, the PTO began an extensive, billion-dollar computerization program in 1984 that will be in place by the turn of the century. It rigorously scrutinizes the prior art of the invention in order to establish its originality, even though the inventor has already done so. This entails researching all previous U.S. patents ever filed, as well as foreign patents, and relevant literature on the topic.
Often an invention is original, but not so ingenious that an expert in the field could not have deduced it. In such cases, it is rejected, and the inventor has the right to appeal the decision. The PTO has its own board of appeals, and from there, an inventor can go even higher, to the Court of Appeals of the Federal Circuit of the District of Columbia (CAFC). Theoretically, it is possible to bring a rejected patent application all the way up to the Supreme Court; surprisingly, this has not yet happened.
A person can apply for more than one patent, and multiple individuals can file a joint patent. In the case of the latter, there is joint ownership of the patent, with neither owner obligated toward the other. This can create problems if one of the owners only contributed marginally to the invention, and sells his or her share, which the joint patentee has the legal right to do. To avoid possible future conflict, joint filers usually have a written agreement between them. Patents are legally considered property, and hence inheritable by law, should the patentee (or one of them) die before the expiration of the patent.
A patented invention is no guarantee of future commercial success. Statistically, the number of successful inventions is minuscule. One avenue of commercialization open to a patentee is licensing his or her patent to a company, or a number of companies, provided a firm is willing to risk investing in a wholly untried product or process. The patent holder, however, cannot demand that royalties from the product continue beyond the stipulated 17-year patent period, nor can the patentee set the product's price or determine its use.
Often an American inventor will seek a foreign patent. The Paris Convention, adhered to by over 90 countries, gives foreign patentees the same rights as their own citizens. Nonetheless, most foreign countries require that a product be manufactured in the country for a stipulated period. Many countries, especially in Asia, Eastern Europe, and Russia, have patent laws that are either not strictly enforced or not as advanced as the heavily industrialized Western nations. This has troubled many manufacturers of commercial software products, who cannot profit from their products in these countries because of lax patent laws or patent laws that do not cover software and computer applications.
The controversy over intellectual property was raging in the late 1990s, particularly as regards more sensational products such as biologically engineered seeds and even life forms. These issues raise serious ethical considerations over, for example, the monopolization of life strains and forms of sustenance. The United States has been a leader in the effort to secure such intellectual property rights, and business leaders have long lobbied for the inclusion of such provisions into international trade agreements.
There is great international pressure on the United States to harmonize its patent criteria with the rest of the world's—i.e., the stipulation that the first to file for a patent is the one who is eligible for a patent, whether or not this person is the original inventor. The PTO also has recommended this change, which would save taxpayer dollars because it would simplify the patent review process. If implemented, the first-to file principle would be a radical change from the tradition of recognizing only the inventor's right to file, first established over 200 years ago in the patent law of 1790. Moreover, it would eliminate the one-year grace period prior to filing, which allows the inventor to publicize or even commercialize his or her invention. Critics of "harmonization," mainly from the academic world, charge that it would benefit only big business, which has ample resources to file first. Filing a patent application costs little—under one hundred dollars. Engaging a patent attorney, however, is expensive. While do-it-yourself patent books abound, few inventors take the risk of filing without assistance. With Congress taking a hard look at patent harmonization and cost cutting, adoption of the first-to-file principle is gaining favor.
Despite the fact that the PTO is considered to be one of the most cost-effective agencies of the government and one of the most efficient, it is subject to criticism on all sides. This has usually preceded major changes in patent law. The criteria for patentability are becoming outmoded, as so much of the world is moving toward technological inventions that defy the traditional concepts of what is useful and tangible, especially in the fast-growing realm of biotechnology and software.
In 1999, for example, the U.S. Supreme Court upheld a lower court's decision in the case of State Street Bank & Trust Co. v. Signature Financial Group, Inc. which struck down long-standing methods of denying patents on such innovations as methods for conducting business and mathematical concepts that were merely abstract ideas. While the case dealt specifically with the legality of rejecting patents for certain types of software, the decision carried implications for most U.S. businesses, intellectuals, and researchers. The ruling immediatelly initiated a rush to the patent office, as companies sought to safeguard the rights to a vast array of products, concepts, and even marketing techniques, many of which could effectively restrict other companies from even entering into certain types of business.
[ Sina Dubovoy ]
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Halpern, Sheldon, Craig Allen Nard, and Keenneth L. Port. Fundamentals of United States Intellectual Property Law: Copyright, Patent, and Trademark. The Haguie: Kluwer Law International, 1999.