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Patents: Patent Types


    There are three distinct categories of patents that are protected by the statute: (1) utility patents; (2) design patents; and (3) plant patents. Each are reviewed below with their key attributes summarized.

    Utility Patents

    This category is what most people think of when they think of patents. Utility patents are mechanical, chemical, biological, software, process and other types of what we typically think of as "inventions." In order to obtain a utility patent an inventor must file an application with the USPTO and meet the following requirements: (1) describe the patent full enough to allow one skilled in the art to reproduce it; and (2) meet the statutory mandates of new, useful and non-obviousness. There is no common law protection and no state patent laws—it is all federal and statutory.

    The disclosure requirement is a significant part of the quid pro quo required in order to be granted the patent monopoly. The introductory paragraph is presented below. The disclosure is how the public eventually gets its half (presumably more) of the benefit of the bargain.

    § 112. Specification

    The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

    Notice the requirement for setting forth the best mode. The inventor cannot hold back without the risk of being penalized (i.e. having the patent later invalidated). In other words, an inventor needs to present the most viable implementation. This is one of ways that the public's interest in the invention is protected. Section 112 goes on to detail the nature of the claims that an inventor must make, both their number and their form. The claims are what define the "metes and bounds" of the inventor's property rights. They must be drafted with utmost care. It is the claims that legally define the invention. In an infringement action the core issue will be whether the claims of the defendant "read on to the patentable invention."

    For a utility patent an inventor is granted monopoly rights for a period of twenty years from the filing date of the application. After such time the invention enters the public domain and can be freely used by any interested party. Courts are often quick to reinforce the concept that the patent monopoly is not the “natural right” of an individual inventor but rather an inducement to bring forth new knowledge.

    Design Patents

    These patents are a bit of an "odd bird" in intellectual property law. They overlap with other doctrines such as copyright, trademark and unfair competition law in that they afford protection for non-functional characteristics of useful objects. They have been obtained for a wide assortment of products including shoes, automobile designs and computer graphics. The public policy rationale for design patents, going back to 1842, was to provide "encouragement for the decorative arts." Apparently the artsy folks were feeling a bit left out in the middle of the 19th century. The authors had copyright protection and the inventors had patent protection but the artsy folks had no safe haven in the law with which to protect their intellectual property rights. Obviously this is a bit tongue in cheek since the "decorative design" of a product might have a significant role to play in whether or not it is successful. We all love "beautiful things" and hence Apple's star is again on the rise with the iPod, iPhone and re-invigorated PC products. Look for more and more design patents going forward.

    The core statutory provision for design patents is section 171 provided below.

    § 171. Patents for designs

    Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

    The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

    The duration of the monopoly is for fourteen years as opposed to twenty years for utlity patents. The patentability requirements are also somewhat different. Obviously the "useful" requirement has been omitted since that is not what is being protected. In place of "useful" we have the "ornamentality" requirement. Ornamental means (more or less) creating a pleasing appearance or as one court indicated: "must be the product of aesthetic and artistic conception." Whatever that means, it does not necessarily imply what we normally consider to be art, since the design of a cement mixer has met the requirement. In other cases the requirement has not been satisfied due to concealment during use. In other words, a design cannot be pleasing if it is not seen. In addition, the design cannot be dictated by its function in order to obtain the patent. There are various public policy reasons for the latter rule, including the fact that functionality is protected by utility patents, with all that they entail.

    Both the novelty and the non-obvious requirements of utility patents continue to apply. Novelty is established if no other prior art has exactly the same design. A design is different if the "ordinary observer" would judge it to be so. To be "different" means that it has to be more than modification of a prior design. With respect to the non-obviousness standard, a variation of the standard set forth in Graham v. John Deere (USSC 1996) for utility patents is used. Here the standard is whether a "designer of ordinary capability" could have made the modification. If so, then the modification is "obvious" and no design patent issues.

    If all of this sounds a bit vague and "mushy" you are in good company. However, the American courts are remarkable in their pragmatism. They are quite capable of dealing with this sort of complexity and producing decisions that, on the whole, serve the intended purpose. This despite the criticism from academics and other commentators. They deserve much more credit then they are often given. American jurisprudence is arguably one of the principal factors in why the American economic experiment has flourished, in spite of the many bumps along the way.

    Plant Patents

    Plants can be protected as utility patents if the general requirements for utility patents are met. However, there are also specific statutory provisions that cover plants. Historically plants were thought to be ineligible for patent protection but the Plant Patent Act and the Plant Variety Protection Act have put that argument to rest. However, not all plants are patentable, because obviously plants are part of nature and man did not invent nature. This section will cover the specific requirements that must be met. Section 161 is the core statutory provision.

    § 161. Patents for plants

    Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

    The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.

    Similar to design patents, there are general provisions related to inventions that continue to apply. The first thing to notice is that it is only asexual reproduction of a plant that is the central concern. The ability to creatively isolate and breed "new" types of plants is rewarded. What does "new" mean? In general it means characteristics clearly distinguishable from those of existing varieties. Some of these characteristics include: habit, immunity from disease, soil or conditions, fruit or stems, flavor, productivity (including ever bearing qualities in the case of fruits), storage qualities, perfume, form, and ease of asexual reproduction. Distinctness (i.e. "newness") is usually defined as the aggregate of the plants distinguishing characteristics. With respect to the non-obviousness requirement, it will be met if the new variety: (1) maintains the desirable qualities of the parent; and (2) adds significant improvements; and (3) preserves the new specimen by asexually reproducing it.

    Comments: All of our tutorials represent broad overviews. However, this is more true in the case of patents. The patent universe is so large that patent attorneys often practice patent law and not much else. We are not patent attorneys, but we do provide limited patent advice in a few specific areas that are prevalent in the online business environment. See our Practice Areas for more information. We help clients decide whether or not they have a viable patent and then refer them to specialists for patent prosecution and other patent specialty matters.

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