Patents have existed throughout the history of the United States because of their value. In Colonial America, inventions were safeguarded by the governing bodies of the colonies.
After independence but before the adoption of the Constitution, the protection of inventions was handled by the states.
And with the introduction of our Constitution in 1789, Article I, Section 8, Clause 8 formed the foundation for copyright and patent laws:
"The Congress shall have Power ...
"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 ..."
Three types of patents have been established by patent law in the U.S.: utility patents, design patents and plant patents.
Utility patents arise under Section 101 of Title 35 in the U.S. Code and protect "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
Design patents, according to Section 171 of Title 35, apply to "any new, original, and ornamental design for an article of manufacture," language that has been judicially and administratively interpreted to mean that patents are available for three types of designs:
* A design for an ornament, impression, print or picture applied to or embodied in an article of manufacture (surface indicia);
* A design for the shape or configuration of an article of manufacture; and
* A combination of the preceding two categories.
Although the design, in order to be patentable, must not be dictated by the function of a device, it is possible and desirable to obtain both a design patent and a utility patent for the same device.
The U.S. Patent and Trademark Office may also grant a plant patent under the authority of Section 161 in Title 35: "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 ..."
Utility patents and plant patents commonly last for 20 years from the date the patent application was filed, provided that requisite fees are paid three times during the life of the patent.
Design patents continue for 14 years with no maintenance fees.
Even though the preceding is generally current law in the U.S., on Sept. 16, President Barack Obama signed the most sweeping revision of U.S. patent law in decades -- the Leahy-Smith America Invents Act.
Although no one will probably understand the entire impact of this law for many years, there are at least two fundamental changes that are certain.
First, Section 102 in Title 35 has long meant that if two individuals invent (not copy an invention of another) the same item, the patent for that item will be granted to the individual who first conceived of the invention if such individual worked with reasonable diligence either (a) to make a working model of the invention or (b) to file a patent application on the invention (a "first to invent" theory).
Effective on Sept. 16, 2012, however, the patent will be granted to the individual who invents an item and is effectively the first to file a patent application for that item (a "first to file" theory).
Second, for nine months after the grant of a patent, a post-grant review of the patent may be conducted if it is "more likely than not" that a claim in the patent is unpatentable.
Should the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office ultimately determine "by a preponderance of the evidence" that the challenged claim is, in fact, not patentable, the claim will be canceled.
These present major changes in patent law and are still developing. The Patent and Trademark Office is establishing rules to interpret and implement the Leahy-Smith America Invents Act.
To receive public input for this purpose, the office will hold a meeting at 10 a.m. Feb. 27 in the University of Utah's Marriott Library, 295 S. 1500 East, Salt Lake City.
Tom Fehr is an Ogden-based attorney with an international practice concentrating on intellectual property. He can be contacted at firstname.lastname@example.org.