Patent It Yourself - PDF Archive

10 | Patent it YOURSELF
• Utility Patents: As we’ll see in Chapters 8 to 10,
a utility patent, the main type of patent, covers
inventions that function in a unique manner to
produce a utilitarian result. Examples of utility
inventions are Velcro hook-and-loop fasteners, new
drugs, electronic circuits, software that is tied to some
form of hardware, semiconductor manufacturing
processes, new bacteria, newly discovered genes, new
animals, plants, automatic transmissions, Internet
techniques and methods of doing business (provided
physical things are involved), and virtually anything
else under the sun that can be made by humans. To get
a utility patent, one must file a patent application that
consists of a detailed description telling how to make
and use the invention, together with claims (formally
written sentence fragments) that define the invention,
drawings of the invention, formal paperwork, and a
filing fee. Again, only the actual inventor can apply
for a utility (or any other) patent. The front or abstract
page of a typical utility patent is illustrated in Fig. 1A.
• Design Patents: As discussed in more detail in Chapter
10, a design patent (as opposed to a utility patent)
covers the unique, ornamental, or visible shape or
surface ornamentation of an article or object, even if
only on a computer screen. Thus if a lamp, a building,
a computer case, or a desk has a truly unique shape,
its design can be design patented. Even computer
screen icons and an arrangement of printing on a piece
of paper can be patented. The design must be for an
article that is different from an object in its natural
state; thus a figure of a man would not be suitable for a
design patent but if the man is an unnatural position,
this can be patented. For an example, see patent Des.
440,263 (2001) to Norman. However, the uniqueness of
the shape must be purely ornamental or aesthetic and
part of an article. If the design is functional, then only
a utility patent is proper, even if it is also aesthetic. A
good example is a jet plane with a constricted waist for
reducing turbulence at supersonic speeds: Although
the novel shape is attractive, its functionality makes it
suitable for a utility patent only.
A useful way to distinguish between a design
and a utility invention is to ask, “Will removing or
smoothing out the novel features substantially impair
the function of the device?” If so—as in the jet plane
with the narrowed waist—this proves that the novel
features have a significant functional purpose, so a
utility patent is indicated. If not—as in a woodshop
wall clock that is shaped like a circular saw blade, or
a phone that is shaped like a shoe—a design patent is
indicated. Two useful questions to ask are:
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Is the novel feature(s) there for structural or
functional reasons, or only for the purpose of
ornamentation? and
Does the novel feature make it look better or work
better? (If the novel feature fulfills both purposes,
the utilitarian function always prevails.)
Sometimes the state of the art, rather than the
nature of the novelty, will determine whether a design
or utility patent is proper for an invention. If a new
feature of a device performs a novel function, then a
utility patent is proper. However, if the state of the art
is such that the general nature of the feature and its
function is old, but the feature has a novel shape that
is an aesthetic improvement, then only a design patent
will be proper.
The design patent application must consist
primarily of drawings, along with formal paperwork
and a filing fee.
• Plant Patents: A plant patent covers asexually
reproducible plants (that is, through the use of
grafts and cuttings), such as flowers (35 USC 161).
Sexually reproducible plants (that is, those that use
pollination), can be monopolized under the Plant
Variety Protection Act (7 USC 2321). Both sexually
and asexually reproducible plants can now also be
monopolized by utility patent (35 USC 101). Plant
patents are a comparatively recent innovation (1930).
Luther Burbank, the great botanist of Santa Rosa,
California, goaded Congress to act, stating, “We
plant inventors cannot patent a new plum, though
the man who makes an automobile horn can get a
patent and retire to Southern California and wear silk
underclothes the rest of his life.”
C. The Novelty and Unobviousness
Requirement
With all three types of patents, a patent examiner in the
Patent and Trademark Office (PTO) must be convinced that
your invention satisfies the “novelty” and “unobvious ness”
requirements of the patent laws.
The novelty requirement is easy to satisfy: Your invention
must be different from what is already known to the public.
Any difference, however slight, will suffice. (Note: When
I refer to your invention, I am referring to the manner in
which it is “claimed” in your patent. The claims, as we’ll
discuss later, define your invention.)
Novelty, however, is only one small hurdle to overcome.
In addition to being novel, the examiner must also be
convinced that your invention is “unobvious.” This means