Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 15
over 2,800 patents to IBM, which now holds about 19,000
U.S. patents. These patents generated over $1.5 billion in
revenue! In fiscal year 2005 (from 2005 July 1 to 2006 Jun 30),
inventors filed 400,000 patent applications in the PTO and
this rate is increasing by 6% to 10% per year!
Since the patent defines the invention monopoly very
precisely, the patent owner can use the patent only against
supposed infringers who make, use, or sell things or
processes that fall within the defined monopoly. This means
that not everyone who makes something similar to your
invention will be an infringer; you can validly sue only
those whose products or processes fall within the scope of
the claims in your patent. (See Chapters 9, 13, and 15 for
more on claims.)
In addition to its above-described use as an offensive
weapon, a patent also provides a prior-art reference that will
block others from getting a patent on anything disclosed
in the patent. In this respect, a patent is like a periodical
(magazine) article or book. This dual nature of a patent is
illustrated in Fig. 1B.
J. What Can’t Be Patented
Despite the large number of things that can be patented,
there are some “inventions” that the law will not allow
to be patented. You can’t patent any process that can be
performed mentally. The reason is that the law doesn’t
wish to limit what people can do essentially with just their
brains. The same rule applies to abstract ideas; inventions
that aren’t reducible to or practicable in hardware form, or
inventions that don’t involve the manipulation of hardware
or symbols (words, letters, numbers) to produce a useful
result; naturally occurring articles; business forms and
other printed matter per se (not associated with some
hardware); scientific principles in the abstract (without
hardware); inventions that won’t work to produce the result
claimed for them (such as perpetual motion machines);
abstract algorithms that merely crunch numbers without a
useful result; human beings (such as cloned humans); and
atomic energy inventions. In 2010, the U.S. Supreme Court
ruled that a process is not patentable unless the process is
tied to a machine or transforms hardware (despite the fact
that a patent statute—35 USC 101—states that “any new
and useful process” may be patented). This decision casts a
cloud over many business method patents and will prevent
the patenting of many new business methods. Bilski v
Kappos, 2010 Jun 28. See Chapter 5 for more information.
When I’m Used as an
Offensive Weapon
1. My claims can be used
to stop infringers and/
or obtain damages from
them.
2. My offensive rights start
when I issue (or when my
application is published—
See Section D, above), and
expire 20 years from my
filing date, provided my
maintenance fees are paid.
3. My powers are based solely
upon my claims.
When I’m Used as a
Prior-Art Reference
1. My specification and
drawings constitute prior
art, just like any magazine
article or book. They can
be used to prevent others
from getting a patent on
what I disclose.
2. I’m effective as of my filing
date and I remain effective
as prior art forever.
3. My claims are irrelevant.
Think of me simply as a
book, a magazine article,
or any other publication.
Fig. 1B—A Patent Can Be Used as an Offensive
Weapon or as a Prior-Art Reference
NoTe
Computer Program Note. Computer programs,
including algorithms, cannot be patented per se. However,
the program, software, or algorithm can be patented if it (1) is
tied to a particular machine or apparatus, or (2) transforms an
article into a different state or thing. Electrical signals and data
are considered patentable articles if they represent physical
objects or substances. For instance, if the algorithm controls a
display, a memory, a keyboard, any other hardware or process,
or if it processes or analyzes a signal that represents a physical
quantity, then it can be patented. If the algorithm merely
manipulates numbers, such as calculating π, or merely solves
an algorithm, then it can’t be patented. Computer programs
and algorithms per se (without hardware) can alternatively
be protected by copyright, and sometimes by trade secret
law. For more information, see Legal Guide to Web & Software
Development, by Stephen Fishman (Nolo).
With respect to designs, as explained, the PTO won’t
grant design patents on:
• any design whose novelty has significant functional
utility (use a utility patent)