ROBERT E. MALM, Ph.D

ATTORNEY AT LAW

CLAIMCRAFTED™ PATENT APPLICATIONS

A patent is a grant made by the federal government to an inventor conveying the right to exclude others from making, using, offering to sell, or selling his invention in the United States for a term of 20 years. Pursuant to 35 U.S.C. 261, an inventor may assign his rights in an application for patent, a patent, or any interest therein to an individual, a corporation or other private group entity, or the government. Thus, in making decisions regarding the patenting of an invention, some other entity may stand in the shoes of the inventor. However, in the interest of simplifying the discussion of the patenting process, I will assume for the purposes of this web site that the inventor remains in control of his invention.

A person who invents or discovers a new and useful process, machine or apparatus, article of manufacture, or composition of matter, or new and useful improvements of the foregoing, may obtain a patent. A patentable item must be something that you can ultimately touch and feel and not just an idea or concept. However, the item need not have been built to be patentable.

An invention cannot be patented if (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States.

The subject matter of the invention must be sufficiently different from what has been made and used before that it cannot be said the invention would have been obvious to a person having ordinary skill in the technology related to the invention.

An inventor obtains a patent as a result of a process prescribed by the federal government and performed in accordance with certain rules by the inventor or his representative and an examiner, the representative of the federal government.

The foregoing suggests that obtaining a patent is a straightforward task. The inventor contracts with a patent attorney, the patent attorney submits a patent application to the patent office, the examiner determines whether the application satisfies all of the rules, and if it does, a patent issues. But will the patent that issues enable the inventor "to exclude others from making, using, offering to sell, or selling his invention in the United States"? The answer to this question depends on the quality of the patent "claims"—the legal definitions of the invention. If the inventor is only interested in having a document suitable for display, he need not be concerned with the quality of the claims in his patent. But the inventor who wishes to protect his intellectual property from infringers would be well advised to develop an understanding of the patenting process and the motivations of the players who are involved in executing the process.

A company infringes, i.e. violates a patentee's rights, when it makes, uses, or sells a product or service with attributes that are the same as those specified in one of the patentee's claims. A patentee is provided the greatest protection for his invention and his claims are of the highest quality if they only exclude prior-art products and services, where "prior art products and services" are those products and services that were known or used prior to the reduction to practice of the patentee's invention.

© 2002 Robert Malm