Gerald B. Treacy, Jr.

Surviving and Thriving in the “Tax Patent” Era

Patent Law

Mercifully, the statutory provisions relating to patents, set forth in U.S. Code Title 35, are relatively pithy; key elements can be summarized briefly. The USPTO is responsible for granting and issuing patents in a manner consistent with “the public interest in continuing to safeguard broad access to the United States patent system.” The patent holder and the original patent holder’s successor in title each are referred to as the “patentee.” Patents are available to “[w]hoever invents or discovers any new and useful process,” or “any new and useful improvement thereof.” The term “process” includes “a process, art or method, and includes a new use of a known process.”

A person is “entitled to a patent” unless, inter alia, “the invention was known or used by others in this country . . . before the invention thereof by the applicant for patent,” or “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,” or the person “has abandoned the invention.”

A patent “may not be obtained” if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

The reach of the patent statutes is virtually all-encompassing as to matters within their scope, including even, rather imaginatively, “inventions in outer space,” which enjoy their own dedicated provisions.

To protect the patent applicant in accordance with the policy purposes of the patent statutes, applications for patents are “kept in confidence” by the USPTO, and applications are published on the USPTO website only after 18 months from the earliest filing date. At the request of the applicant, an application may be withheld from publication and kept confidential even after that 18-month period, so long as it is not and will not be the subject of an application filed in another country. Patents granted for unpublished applications are sometimes referred to, informally and colorfully, as “submarine patents.”

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