Patent Act

The federal laws pertaining to the issuance of patents is codified at 35 U.S.C. §§ 1-376. The laws relate to the function and structure of the United States Patent and Trademark Office (USPTO), the patentability of inventions and granting of patents, patent rights and the protection of those rights, and the Patent Cooperation Treaty (PCT). Each of these aspects of the U.S. patent law constitutes an integral component of the U.S. intellectual property system.

Part 1 pertains to issues that relate to the USPTO and the proceedings that take place there. Some issues covered are addressed in greater detail in USPTO regulations, for example the Manual of Patent Examining Procedure (MPEP) as it pertains to patent prosecution, but Part 1 of 35 U.S.C. provides the basis for such USPTO-generated regulations. Part 1 also covers issues relating to testimony in patent and trademark office cases, subpoenas and witnesses, requirements for attorneys practicing before the USPTO, and the fees associated with patent filings.

Part 2 pertains to the patentability of inventions, and covers the major bars to patentability including whether the subject matter is patentable and whether the subject matter is useful, novel, and nonobvious. It also codifies other bars to patentability, such as the requirement that the subject matter of the patent was already patented or described in a printed publication anywhere in the world more than one year prior to the date of the application for the patent. Part 2 also sets forth the basics of the patent application procedure, patent examination procedure, judicial review of the USPTO and the appeal process, and patent issuance. Certain sections also cover particular types of patents including patents on plant varieties and patents on design.

Part 3 deals with the patent owner’s ability to amend or correct a patent, as well as the transfer of patent rights and addresses the rights of joint patent owners. Perhaps most critically, this section deals with patent infringement. Specifically, the infringement section discusses the situations in which a person or entity will be found to have infringed a patent, when one is found to have induced infringement, and where one is found to be liable for contributory patent infringement. In other words, this section of Part 3 allows for the enforcement of each of the patentees rights to exclude others from making, using, offering for sale or selling the invention throughout the United States, and importing the invention into the United States. The part also addresses remedies for those patent holders whose patents have been infringed, and provisions relating to reexamination of patents where an adverse party requests it. Part 4 relates to the PCT and sets forth the USPTO’s role as a “receiving office” as well as an International Searching Authority and International Preliminary Examining Authority for international patent applications.

The U.S. patent laws are complex and may require the interpretation and analysis of an experienced patent attorney. That said, taking some preliminary steps in understanding the relevant U.S. patent laws could be helpful for would-be inventors.