In this post, I will discuss a few basic concepts in the US patent law. The discussion in this post will be very minimal and skeletal. If you want to learn more about US patent law, I recommend you to read a book on basic patent laws (there are a lot of books on the market). Also, if you really want to know what’s going on, the Manual of Patent Examining Procedure (MPEP) is an excellent resource. The manual is used by the US patent examiners and is probably sitting on the desk of every U patent attorney (well, I know that I have a hardcopy on my desk, an electronic copy in my computer, and another electronic copy in my iPad—before the burgalrs took it). Here is a link for the MPEP http://www.uspto.gov/web/offices/pac/mpep/index.htm. If you have an appetite for reading the black letter laws, there is a link to statutes of the US patent law (United States Code Title 35—Patents) http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf.
First, patent right is a right to exclude; it is not a right to practice the patented technology on the open market. I notice that inventors tend to think that, if he obtains a patent, he can practice the patented technology freely. Not so! Think of it this way—patent right is basically a property right. Think of “claims” in a patent as a “land deed”—the claims describe the boundary of your intellectual property similar to a land deed describing the boundary of your real property. If you own a piece of land, you know that you cannot just go ahead and build a house or a shopping mall on the land. You need to obtain building permits from whatever the government bodies that governs that land. Well, same applies to your “intellectual property land,” i.e., your patent. You need permit to “build” from your patent. If you have a patent on a drug that can cure cancer, you need approval from FDA to sell that drug. Your patent gives you the right to exclude others from selling the drug; but it is not a permit for you to sell the drug.
Second, keep this in mind—as an inventor, you are entitled to a patent as long as your invention is useful, novel, not obvious, and fits under one of these categories: process (method), machine, article of manufacture, composition, or new and useful improvement of one of the first four. Article I, Section 8 of the Constitution gives the Congress the power to promote the progress of science by securing for limited times to inventors the exclusive right to their discoveries. From there, the Congress promulgated the patent law (35 USC). 35 U.S.C. Section 102 states that “a person shall be entitled to a patent unless…” So, look at it this way—it is your constitutional right to have a patent if you invented something new, not obvious and useful. Ok, this is an over implication of patent law. Each of these words in the previous sentence after the “constitutional right” is loaded. Billions of dollars have been spent and are being spent in courts to fight out what each word mean and billions more will be spent. My point is that, if you are an inventor, the default by law is that you deserve a patent. So, get one if you can.
Third, among all the components in a patent, claims define the scope of your patent right. This statement is theoretically correct but practically incorrect. Claims are consisted of words. Therefore, the claim scope depends on the interpretation of the words. This is where it gets tricky—huge bodies of case laws and various rules and regulations collective try to guide the “interpretation.” Because the meaning of the words can be vague, the boundary of the intellectual property can be murky too. This is like drawing a circle with a broad-tip pen. Where exactly is the boundary of the circle? Companies often spend millions of dollars in litigation to find that out.
Fourth, the written description in a patent is important. My second point by no means diminishes the equal importance of the written description in a patent. It is well-established in patent law that a patentee or applicant is free to be his or her own lexicographer. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999); Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990). (I promise that I will try to cite as few cases as possible.) Therefore, the way certain words are defined in the description will affect the interpretation of the claim scope.
Hope this gives you a basic impression about the US patent law. I will continue in my next post.
Thanks for reading.
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