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 Chilling Effects Clearinghouse > Patent > Frequently Asked Questions Printer-friendly version

Frequently Asked Questions (and Answers) about Patent

  • Q: What is intellectual property?
  • Q: What is a patent?
  • Q: What can be patented?
  • Q: What may not be patented?
  • Q: What is the purpose behind the patent law?
  • Q: If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?
  • Q: What is an "algorithm"?
  • Q: What are the requirements for patent protection?
  • Q: What happens if an invention is made public before a patent application is filed?
  • Q: What is "prior art"?
  • Q: What happens if prior art is not disclosed in a patent application?
  • Q: What are patent "claims"?
  • Q: What are the elements of a claim?
  • Q: What is a claim's "priority date"?
  • Q: What is a claim's invention date?
  • Q: What is a "provisional" patent application?
  • Q: How long is a patent's term?
  • Q: What does it mean to "infringe" a patent?
  • Q: What are the defenses to patent infringement?
  • Q: What are the consequences of being found to have committed patent infringement?
  • Q: Does it matter if infringement is accidental or innocent?
  • Q: How does copyright protection differ from patent protection?
  • Q: Can computer software be protected by copyright?
  • Q: Can software technology be protected by patent law?
  • Q: Can the same software qualify for both copyright and patent protection?
  • Q: What is a business method patent?
  • Q: Where I can read more about business method patents?
  • Q: How can I search for a U.S. Patent?
  • Q: Where can I find U.S. patent law?
  • Q: What does it mean to obtain a license for a patent?
  • Q: Who may own patents?
  • Q: Are patents assignable?
  • Q: What is due diligence?
  • Q: What is a "continuation"?
  • Q: How can I search for foreign patents?

    Question: What is intellectual property?

    Answer: Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks.

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    Question: What is a patent?

    Answer: A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., Patent law is driven by the language of the Patent Act, 35 U.S.C.

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    Question: What can be patented?

    Answer: [not yet answered]

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    Question: What may not be patented?

    Answer: The following subjects are not entitled to patent protection:

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    Question: What is the purpose behind the patent law?

    Answer: The origin of U.S. patent law can be found in the United States Constitution, Article I, Section 8, Clause 8, which provides that: "Congress shall have the power

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    Question: If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?

    Answer: For years, software was considered outside the scope of patent protection to the extent based on mathematical algorithms, as mathematics is the basic working tool of contemporary science and technology and algorithms can be natural laws. In 1981, the Supreme Court held that software-related inventions are not per se to be excluded from patent protection simply because the process of performing the program's function may involve underlying mathematical algorithms. Software uses a non-physical process by operating electronically through the utilization of a mathematical equation (algorithm) to control the output of the computer program. Mathematical algorithms have a functional application in computer programs, and thus can be protected under the Patent Act. To use an example from physics, electricity was not patentable, but the way in which electricity transmits information may be patentable.

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    Question: What is an "algorithm"?

    Answer: An algorithm is the same as a mathematical equation in its structure, but it becomes a function through its input and output. For example, the equation (a+b = c) is a simple math equation. However, if we take that equation and add values for the letters such as, a=1, b=2, c=3, and then the program starts on a computer, this equation has created a function for simple letters and a summation. When a machine uses an equation to guide its operation, this is called an algorithm and the software for doing this can potentially be patented. If the formula is related to a natural law (such as E=mc^2), it cannot be patented as such, much the same as a simple math equation. However, such natural laws can be used to make patentable inventions in the categories discussed above, including software.

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    Question: What are the requirements for patent protection?

    Answer: To qualify for patent protection, an invention must be new, useful and non-obvious.

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    Question: What happens if an invention is made public before a patent application is filed?

    Answer: In the United States, an inventor cannot patent an invention if he or she discloses it to the public more than one year before filing for patent protection. This is sometimes known as the "on sale" bar to patentability. Public disclosure can occur when the invention is described in any published writing, or when the invention is offered for sale, including any pre-manufacture discussion about the invention that involves describing it. In most foreign countries, there is no one year grace period; the inventor must file the patent application before the invention is publicly offered for sale, used or displayed.

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    Question: What is "prior art"?

    Answer: Publicly disclosed inventions, including patented inventions, are known as "prior art" that can be cited against a new patent applicant. Publicly disclosed inventions are considered prior art without regard to where (United States, Europe, Asia, etc.) or in what form the public disclosure occurred (a journal article, an archived PhD dissertation, an online publication).

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    Question: What happens if prior art is not disclosed in a patent application?

    Answer: If a patent applicant intentionally fails to disclose relevant preexisting technology of which he or she was aware in his application, the patent could be invalidated on the grounds that the applicant engaged in inequitable conduct. Intentional failure to disclose can be inferred from evidence that the patent applicant was aware of the undisclosed technology and knew that it was material.

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    Question: What are patent "claims"?

    Answer: A patent consists of an abstract, a description of the invention, disclosures of prior art, drawings, and one or more claims. The claims are the only truly enforceable part of a utility patent, and they define the property right owned by the patent holder. They are written in technical language, and must embody subject matter that is within the scope of patent law, is novel and is not obvious. The more broadly written the claims, the less likely they are to avoid rejection or invalidation on the grounds of obviousness or anticipation by prior technology. The more narrowly written, the less likely a competing technology or device infringes the claims. To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim.

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    Question: What are the elements of a claim?

    Answer: Patent claims generally contain an introductory paragraph called a "preamble," which is followed by a series of phrases called "elements." Elements can be recited as a means or steps for performing a specified function, but elements recited in this way may be interpreted more narrowly than if recited by name, structure or as a defined step.

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    Question: What is a claim's "priority date"?

    Answer: A claim's priority date is the date upon which the technical disclosure that fully describes the invention covered by that claim is first filed with some patent office somewhere in the world. A patent must state on its face any such claim of priority. The claim must define the invention over any prior art available to the public before the priority date. If prior art is published after the priority date, the publication does not invalidate the claim. If it is published less than a year before the priority date, it may invalidate the claim unless the inventor can prove invention prior to the publication date. Finally, if a publication date is more than one year prior to a claim's priority date, then the publication invalidates the claim.

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    Question: What is a claim's invention date?

    Answer: Making an invention requires a conception and a reduction to practice. The invention date is normally the date upon which an inventor first conceives his or her invention as defined by a given claim - the "conception date." The inventor must demonstrate diligence in reducing the invention to practice in order to preserve the conception date as the date of invention. Reducing the invention to practice means building a working example of the invention or filing a patent application that has an adequate disclosure of the invention. Sometimes under U.S. law, prior art must predate the invention date in order to invalidate the claim. In all other countries outside the U.S., the invention date has no significance; only the "priority date" is used to determine whether prior art invalidates a claim.

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    Question: What is a "provisional" patent application?

    Answer: A provisional patent application is not examined, it does not have to include any claims defining the invention precisely, it does not have to name the inventors or provide their citizenship, and it expires in one year. The purpose of a provisional patent application is to establish a filing date for the invention disclosure that may later be claimed as a "priority" date in a later-filed regular or foreign patent application.

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    Question: How long is a patent's term?

    Answer: For patents filed on June 8, 1995 or later, the protection lasts for 20 years from the date the patent application is filed. For patents filed prior to June 8, 1995, the term is 17 years from the date of issuance or 20 years from the date of application, whichever is longer.

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    Question: What does it mean to "infringe" a patent?

    Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent.

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    Question: What are the defenses to patent infringement?

    Answer: There are two basic lines of defense: non-infringement and invalidity.

    Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing.

    Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent.

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    Question: What are the consequences of being found to have committed patent infringement?

    Answer: A patent owner may recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be "willful." The patent owner may also be entitled to enjoin further use and sale of the patented invention.

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    Question: Does it matter if infringement is accidental or innocent?

    Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement.

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    Question: How does copyright protection differ from patent protection?

    Answer: A copyright can protect the particular way in which ideas are expressed in a particular computer program. A copyright owner has the right to prevent others from making unauthorized, literal copies of a software program, but not from independently creating software that performs the same functions.

    A patent, on the other hand, grants an inventor exclusive rights in the technology. With a software patent, one may prevent others from making, using or selling a program that performs the same process or function as the patented technology, even if different code is used. Often, a software developer does not merely wish to rely on the prevention of verbatim copying of the software, since a competitor may observe the functions performed by the software, and without knowing the details of the software code underlying the functions, write equivalent code.

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    Question: Can computer software be protected by copyright?

    Answer: Yes. Software copyright law is a recent branch of the 1976 Copyright Act that was intended to protect artistic creations and creativity. Initially there was a question of whether copyright law could protect software because computer programs contain functional instructions regarding what a computer should do if given a command. Strictly functional instructions and ideas are not copyrightable because they do not meet the minimal copyright requirement for creativity. The existence of a requisite level of creativity was questioned in software. During the 1980s, however, through court decisions and congressional guidance, copyright law became a major form of legal protection for computer programs, some databases, and software technology. Through copyright protection, creators of computer programs can prevent or seek damages for unauthorized copying of programs. This right is not absolute, however. Courts still question whether particular elements of computer programs are sufficiently expressive to be protectable under copyright law. For example, some courts have held that a software program's graphical user interface (GUI) (or at least some elements of it) is insufficiently expressive for copyright protection.

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    Question: Can software technology be protected by patent law?

    Answer: Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example).

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    Question: Can the same software qualify for both copyright and patent protection?

    Answer: Yes. Software may qualify for both copyright and patent protection provided, of course, that the software satisfies the requirements for those intellectual property rights.

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    Question: What is a business method patent?

    Answer: A business method patent is a specific type of software patent on a computer implemented way of transacting business. As in the case of other software patents, business method patents can have process claims in the form of a sequence of steps comprising the business method carried out using a computer system, the system configuration defined by the software for carrying out the business method, or an article of manufacture, such as a CD having the software for carrying out the business method stored on it. Some business method patents are controversial because they appear to cover otherwise conventional business techniques, such as auctions, when implemented on the Internet or other networked computers. Other business method patents have been allowed without considering the best prior art and may be overbroad.

    Patents have issued on methods and systems covering -- or purporting to cover -- such things as: all Internet-like browser/display systems (to Prodigy Services Company); reverse auctions over the Internet (to E-Bay); placing a purchase order via a communications network (the "one-click" patent to Amazon.com), and the like. Many computer program and so-called "business method" patents have been challenged as invalid and improvidently granted on the grounds that the innovation lacks sufficient uniqueness or inventiveness. Nonetheless, because a patent can confer broad and powerful rights upon its owner, and once issued is presumptively valid, patent owners are attempting to enforce their rights against rival software developers or website operators.

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    Question: Where I can read more about business method patents?

    Answer: The U.S. Patent Office has a great deal of useful information on its website, at http://www.uspto.gov/web/menu/pbmethod/.

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    Question: How can I search for a U.S. Patent?

    Answer: Issued U.S. patents can be found on the United States Patent and Trademark Office website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/.

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    Question: Where can I find U.S. patent law?

    Answer: The Patent Act is codified at 35 U.S.C. 100 and following, available from http://www4.law.cornell.edu/uscode/35/pII.html.

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    Question: What does it mean to obtain a license for a patent?

    Answer: A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner's rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a "license," a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties.

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    Question: Who may own patents?

    Answer: The presumptive owner of an invention is the human inventor(s). The inventor may transfer ownership to anyone (including a corporation). Employees often assign the rights to their invention to their employers as part of their employment contracts.

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    Question: Are patents assignable?

    Answer: The patent laws provide that patents shall have the attributes of personal property, and as such, can be assigned by a written document. The inventor, who is initially the presumed owner of the patent rights to the invention, may transfer ownership to anyone, including a corporation. Employees often assign the rights to their inventions to their employers as part of their employment contracts.

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    Question: What is due diligence?

    Answer: Due diligence is an intellectual property investigation that, among other things, determines what the intellectual property is, who owns the rights to the property, and whether those rights are enforceable. The information can then be used to evaluate the viability of a particular business transaction.

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    Question: What is a "continuation"?

    Answer: Applicable mainly in the US, continuations are second or subsequent applications which are subsequently filed while the original parent application is pending. Continuations must claim the same invention as the original application to gain the benefit of the parent filing date.

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    Question: How can I search for foreign patents?

    Answer: Several online search services are available to find foreign patents. A collection can be found here: http://www.library.okstate.edu/patents/foreign.htm.

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