The United States patent system is built on a “carefully crafted bargain” between inventors and the public. In exchange for a disclosure teaching the public how to make and use an invention, the federal government grants the inventor an exclusive right to protect the invention for a limited time. There are three different types of patents: (1) utility patents, which cover new and useful functional products and processes, (2) design patents, which cover non-functional, ornamental designs of objects, and (3) plant patents, which cover new plant varieties. Take a look at our recent post on the different types of patents available in the United States for a closer look at which inventions fall within each category.
Despite a common misconception about patents, the purpose of a patent is not to provide an affirmative right to make, use, or sell your own invention; rather, it is the opposite. The essence of a patent right is the ability to prevent others from making, using, selling, or importing the invention during the term of the patent without a license. The patent holder’s right to practice his or her own invention is subject to the prior rights of others, as well as other applicable statutes and regulations, such as the federal antitrust and food and drug laws.
In this piece, we explore the laws governing patents. Stay tuned for a follow-up piece, where we will look at the Executive and Judicial bodies that impact the issuance of patents and the continuing existence of a patent.
The foundation for the United States patent system finds its roots in Article I, section 8, clause 8 of the U.S. Constitution. From this clause, Congress is empowered to pass laws “to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Supreme Court has explained that the grant of “monopoly privileges that Congress may authorize” under this Clause is “intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”
In exercising its authority, Congress has enacted laws governing patents, namely the Patent Act. The Patent Act is codified in Title 35 of the United States Code. Among other things, the Patent Act sets forth the requirements that an invention must meet to be eligible for patent protection, the types of conduct that constitute patent infringement, and the remedies available for patent infringement.
What is Patentable?
Under Title 35, an invention must meet several conditions to be patentable. The invention must qualify as “patent-eligible” subject matter: a “process, machine, manufacture, composition of matter” that is not “directed to” subject matter encompassing patent-ineligible laws of nature, natural phenomena, and abstract ideas. The invention must have utility and provide a benefit to the public. In other words, the invention must have a useful purpose. An invention that is inoperative (e.g., a perpetual motion machine) or does not have an immediate “real world” use (e.g., a gene sequence with an unknown underlying function) would fail to satisfy the usefulness requirement.
The invention must also be new or novel. Novelty is very broad, objective test: did the invention exist before? An invention cannot be patented if it was already patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the filing of the patent application.
And the invention must also be non-obvious. The test for obviousness is narrow and subjective: would someone of ordinary skill in the art at the time the application was filed have considered the invention to be a predictable, trivial, or a common-sense improvement over what existed before?
Both of the tests we have just discussed, novelty and nonobviousness, are substantive tests on the invention itself, but more particularly they are measured against the numbered sentences, called “claims,” which are found at the end of an issued patent. There are structural tests that the patent specification, including its claims, must meet as well. These include whether the invention is sufficiently described in clear and definite terms in the claims, and further whether the detailed description and accompanying figures are sufficient to enable a person of ordinary skill in the art at the time to make and use what is claimed.
What is Patent Infringement?
As is mentioned above, a patent is not an affirmative right: it does not give the patent owner the affirmative right to make her own invention, but rather to prevent others from making what was invented. When someone exercises that right, it is with a legal claim of patent infringement.
The Patent Act defines the kinds of conduct that qualify as patent infringement. There are two categories of patent infringement: direct infringement and indirect infringement. Direct infringement occurs when someone, without authorization, makes, uses, offers to sell, sells, or imports a patented invention during the term of the patent. Indirect infringement occurs when someone (1) actively induces infringement of a patent by encouraging, aiding, or causing another to infringe a patent or (2) contributes to infringement of a patent by providing a component of a patented article that, while not itself infringing, is a material part of the invention and is not a “staple article or commodity of commerce suitable for substantial noninfringing use.” In other words indirect infringement is when the indirect infringer causes someone else to directly infringe the patent. For both types of indirect infringement, the accused indirect infringer must have at least some knowledge or intent with respect to the patent and the allegedly infringing acts. However, for direct infringement there is no knowledge component: the infringer might have been completely oblivious to the fact that it was infringing someone’s patent.
What Are the Remedies for Patent Infringement?
Finally, the Patent Act specifies the remedies available for patent infringement. These remedies include damages in the form of a reasonable royalty or lost profits, and possibly injunctive relief. In addition, if an infringer is found to have deliberately or “willfully” infringed a patent, the patent owner may be awarded with “enhanced” damages up to three times the amount found or assessed. And in “exceptional cases,” the prevailing party in a patent litigation may be awarded attorney fees.
Stay tuned for our follow-up piece on the Executive and Judicial bodies that impact whether a patent may issue, and whether a patent may continue to exist.
Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 879 n.4 (Fed. Cir. 1991) (“It is elementary that a patent grants only the right to exclude others and confers no right on its holder to make, use, or sell.”).
Id. at § 101; Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
 35 U.S.C. § 101; Brenner v. Manson, 383 U.S. 519, 534 (1966) (“The basic quid pro quo contemplated by Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility.”).
Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1985).
In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Esha Bandyopadhyay, a Principal in Fish & Richardson’s Silicon Valley office, has been practicing intellectual property and technology-related commercial litigation and counseling in the Bay Area for close to two decades. She has successfully tried and managed...
Philip Chen is an associate in Fish & Richardson’s Boston office. He previously worked as a summer associate with the firm, where he worked on various patent litigation matters. During law school, Philip worked with the BU/MIT Technology & Cyberlaw Clinic, in which he provided counseling and representation to students with their...