Three-Minute Legal Tips (TMLT)

Patent law grants an inventor the right to exclude others from making, using, offering for sale, selling, or importing his invention for a limited time. Those who infringe the patent may be compensated for their unauthorized exploitation of the invention.


To qualify for a patent, an invention must meet several requirements. These include: the invention must be novel; it must involve an inventive step; and it must be non-obvious.

Patentable subject matter

TMLT talks about how patent law gives inventors the legal right to exclude others from using their invention. Patent attorneys help people and corporations protect their inventions by filing for patents. The attorneys may also defend against lawsuits filed by competitors. They can work in private practice or as in-house counsel for large companies.

To be patentable, an invention must be novel. It must also be non-obvious. The obviousness test is a narrow, subjective test that asks whether an ordinary person would consider the invention to be predictable or trivial. The USPTO and courts will look at the invention in combination with prior patented inventions to determine whether it is obvious.

Similarly, an invention cannot be patented if it was already described in a printed publication, in public use or on sale in the United States or another country before the inventor’s application. This requirement is often referred to as the “one-year rule” and is included in the AIA set of novelty rules. However, it has not been completely implemented yet. A recent Supreme Court decision in the Mortgage Grader case hinted at a revived version of an old rule called the mental steps doctrine, which prevents claims that recite human mental work.

Patent claims

Patent claims are the most important part of a patent, because they define the scope of protection for an invention. They also serve as the basis for determining whether or not a product or process infringes on the patent. As such, it’s important that they are drafted clearly and accurately.

In general, patent claims begin right after the technical specification of an invention and are numbered. Independent claims are the most broad in scope, while dependent claims add further limitations. For example, if a patent contains an independent claim that recite two features AB, then the dependent claim may be broader by requiring that the accused product contain those features.

In patent law, claims are used to describe the new and nonobvious invention, and they give the inventor a right to exclude others from making or using it. However, it’s crucial that these claims are drafted carefully to prevent a hindrance in the patent approval process or a misunderstanding of the patent’s scope. Properly drafting patent claims is essential to safeguarding business investments and delivering profits.

Patentability analysis

Patentability analysis is a form of legal due diligence that focuses on determining whether an invention is eligible for patent protection. While patents typically protect tangible scientific inventions, they can also cover a variety of non-tangible innovations, including coding algorithms and business practices. However, determining what is eligible for patent protection can be difficult. Moreover, the patentability standards set by the OECD are often confusing and contradictory.

Although there are some similarities between patentability searches and freedom to operate (FTO) analyses, they differ in their aims and their results. A patentability search determines if an invention’s claims are novel over the prior art, whereas an FTO analysis considers the likelihood that a product or method would infringe third party intellectual property rights.

As a result, the Supreme Court’s recent decisions in Bilski v Kappos have caused considerable confusion for patent attorneys and inventors. The Court has relied on doctrines that are not required by the statutory text and instead are judge-made exceptions to patentability. Nevertheless, these doctrines have significant practical implications. They can prevent examiners from evaluating the merits of an invention and may lead to inconsistent and uneven application of the law.

Patentability issues

Three-Minute Legal Tips (TMLT): The founders of the United States and early political leaders envisioned patent law as encouraging people to create new products that benefit society. A patent allows the creator to keep others from making, using or selling his or her invention for a period of time. It also allows the creator to recoup some of the costs of the product’s development.

A patent may be granted for a new and useful process, machine, manufacture, or composition of matter, or for a new and useful improvement thereof, or for a novel and useful invention in the field of art, science or literature. To qualify for a patent, an invention must be novel and non-obvious. Novelty is a broad and objective test, while obviousness is a narrow and subjective one.

Many valuable inventions have been denied patent protection because of recent Supreme Court decisions in patentable subject matter and patent exhaustion. The Court has turned down several cases that could clarify these issues, and it will probably take years to get out of its current quagmire.

Patent infringement

When a patent holder believes that someone is infringing on her patent, she can sue them. The patent holder must prove infringement, which can be difficult. Claim construction is a critical part of the case, as different meanings for words can lead to very different outcomes in court. In some cases, the patent holder will be required to use extrinsic evidence like dictionaries and expert witness testimony.

There are two types of patent infringement: literal and nonliteral. A device or process is considered literal if it contains every limitation in the patent claim. Non-literal infringement involves devices and processes that perform substantially the same functions.

Helene invented a camera that takes pictures of real estate properties and prints labels on them. She was awarded a patent for her invention, but a competitor later developed a competing camera that printed labels from ink outside the camera. Helene sued for infringement but she failed to prove her claim under the Doctrine of Equivalents. She also lost the case under prosecution history estoppel, which prevents a patent holder from relying on limitations added during patent prosecution to support an infringement claim.