35 U.S. Code § 101 – Inventions patentable

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
The U.S. Patent and Trademark Office (USPTO) is responsible for promulgating the administrative rules and procedures for patents and trademarks. The USPTO requires that all practitioners be licensed to practice before the U.S. Patent and Trademark Office. In order for an individual to test for licensure that individual is required by the USPTO to have a substantive background in scientific or engineering related disciplines. Unlike most legal fields that only allow individuals to practice within specific state boundaries an individual that is licensed to practice before the USPTO may offer nation-wide services.

Although a patent search is not a formal requirement for filing a patent it is highly advisable from a business perspective. For many inventors a patent search is the first step in the patent process because a detailed patent search report can be used to determine whether filing for a patent is a worthwhile investment. A patent search may be used to assist an inventor in identifying previously granted patents, published patent applications, internet publications, commercial sales, etc. for similar existing technologies and inventions. Furthermore, a proper patent search will search international patent databases and publications. This search may uncover potential competition in the marketplace and give a general sense of the “state of the art” as it relates to a specific invention. This information may be highly beneficial to the patent applicant and the patent practitioner. A skilled patent attorney may use the information gleaned from a patent search to counsel an applicant on specific ways to strategically draft a subsequent patent application such that it is reasonably differentiated from the prior art contained in the search report. It is important to keep in mind that the USPTO will not grant a patent on two inventions that are substantially the same, thus knowing the state of the prior art and how to differentiate your invention may be the key to a successful patent application.

Conducting a proper patent search is very difficult. Typically, an individual must have significant experience performing patent searches, as one must search through national and international patent databases by classification. Additionally, a patent search may be supplemented by a broad keyword search utilizing various Boolean operators. A specific attention to the dates of publication of prior art and the legalese language found in the claims of a patent application may also benefit the applicant. Without proper legal counsel, an individual performing a patent search on their own is likely to miss crucial information regarding the patentability of an invention or to misinterpret the law regarding the patentability of similar concepts, technologies, and inventions.

Retaining the representation of a competent attorney can be invaluable during the application process because they can conduct a patent search for you. They can also explain your rights and options, while also helping you realize that a patent search may be used to assist an applicant increase the likelihood of patentability it does not guarantee patentability. If there is not a consensus between your attorney’s analysis and the opinion of the examiner, you may not receive the patent.

Patent attorneys are well aware of the laws and can provide the counsel and business guidance you need regarding the viability of your patent. If your attorney discovers a similar existing idea, invention, manufacture, or useful product, they can work to help you overcome any obstacles and differentiate your patent. If you want to effectively file for a patent, and believe that a patent search would help you assess the viability of your invention, it is recommended to contact a patent attorney before you begin the process on your own.

Strategic Patent Application Drafting

In order to obtain a patent, you must first complete an application with accurate information regarding your useful process, composition of matter, machine, manufacture, or new and useful improvement to a product. The patent application is typically filed after successfully conducting a patent search to determine if your invention or idea is patent worthy. As discussed in the Patent Search section above a detailed patent search report may additionally help the applicant and legal practitioner strategically draft a patent application. An experienced attorney can help you thoroughly complete the application process and counsel an applicant on the “duty of disclosure” and the enablement requirements of an invention. It is paramount that a patent application be written with accurate details.

A patent application may be strengthened by including all of the following:

  • Written explanations of the way your invention functions
  • Any detailed illustrations or sketches of your creation
  • Written descriptions of problems your invention solves, as well as how it overcomes the deficiencies in similar, existing products

It is important to understand that patent laws and the application process are different from country to country. A patent attorney can help you build a strong application with all necessary details no matter where you are trying to protect your intellectual property. With critical experience, legal counsel can assist drafting of the application so it is filled out in detail, with accuracy, and in a timely fashion so you can prevent others from misusing, selling, or using your idea as soon as possible.
When it comes to protecting your hard work, you want someone who is passionate. Patent law is very particular and specific, and a competent attorney can be beneficial to helping you throughout the process. Without proper representation, you may miss some key details on your patent application, and risk being denied. Contact a patent attorney to receive the representation you need.

Patent Opinions

There are many different types of patent related opinions that each offer alternate benefits for distinct purposes. For example, an individual or business may desire to acquire a patentability opinion on the likelihood of an invention being deemed patent eligible by the USPTO before spending the money to apply for a patent. Another example may be that a business wishes to develop a product and bring it to market but that business may have a concern that the product could infringe on another’s patent or trademark. In this instance a non-infringement opinion, also known as a freedom to operate opinion would be beneficial for the business.

Patent attorneys can provide you with the following types of opinions:

  • Validity opinions: A validity opinion provides an assessment of whether a patent is enforceable.
  • Invalidity opinions: This opinion is if you are the subject of an infringement suit.
  • Infringement opinions: Offers guidance on whether you should take action against an infringer.
  • Non-infringement opinions: Refers to whether or not you are breaching a patent owned by someone else.
  • Clearance opinions: Informs you of any potential violations of active patents to avoid infringement suits.
  • Patentability opinions: Analysis regarding the patentability of your invention or idea.

When you are trying to patent an invention, it is important to obtain the opinions of individuals who fully understand the laws pertaining to patents. A competent patent attorney can offer multiple types of opinions and potentially package them depending on your goals and the unique nature of your financial situation and invention.

No matter what type of opinion you are looking for, only a licensed patent attorney with years of experience can provide you with a worthwhile legal opinion. Patent attorneys can help you understand your legal rights options and counsel you on various approaches. If you believe you or your business would benefit from a custom tailored and thorough legal opinion you should contact a patent attorney.

Patent Prosecution

Patent prosecution is a term that confuses many people. Outside of patent law, prosecution is usually used to refer to litigation occurring from the plaintiff’s perspective. For this reason, many confuse patent prosecution with the act of patent litigation. In the intellectual property legal markets the two terms mean entirely different things and involve entirely different processes. If an individual wishes to take legal action against another party for patent infringement that individual may likely seek patent litigation services of an attorney. If an individual wishes to apply for a patent and respond to the numerous USPTO office actions that are issued after filing of the patent that individual may commonly be referred to as in need of patent prosecution services.

Patent prosecution may be defined as the process of filing a patent application and providing fully responsive answers to office actions issued by the USPTO in reference to the patent application. An individual may require patent prosecution services ranging from drafting a patent application and responding to a USPTO office action. All patent applications within the United States are examined by a professional governmental examiner. The examiner will usually issue several responses concerning the formatting, claims, drawings, and description of the patent application to ensure that it complies with the USPTO rules and procedures. The Manual of Patent Examining Procedure is a reference manual that examiners use when assessing whether a patent application complies with the rules and procedures of the USPTO. This manual is thousands of pages long, and is riddled with legalese and ambiguous language. The complexities of the MPEP directly correlate to the difficulty of providing a fully responsive answer to the examiner’s office action. Without significant experience working within the MPEP it is next to impossible to effectively prosecute a patent application. Therefore, obtaining legal counsel is highly recommended during this stage of the patent process if you have not done so already. If you would like to obtain legal counsel to draft a patent application or respond to the USPTO contact a patent attorney.

Patent Litigation

Patent litigation may refer to the process of suing or being sued by another party for violating patent laws in a court of law. A right of action for infringement and damages (money) may only be brought in a federal court. Patent litigation may also refer to the process of invalidating or appealing a patent directly with the USPTO. Patent litigation may also involve pre-emptive measures such as writing or responding to a cease and desist letter that may allege patent infringement. Tactfully drafting a cease and desist letter and or responding to one may directly correlate with the likelihood of costly litigation. If you have received a cease and desist letter it is highly advisable not to respond until after speaking with a patent attorney. If you believe another may be infringing on your intellectual property it is highly advisable to speak to a patent attorney about the implications of sending a cease and desist letter so that they may counsel you on the various options and legal ramifications of doing so.

Patent litigation in a federal court can be brought forth if any of the following actions have occurred:

  • Unauthorized use of a patented invention
  • Unauthorized sale of a patented invention
  • Unauthorized manufacture of a patented invention

Patent litigation at the USPTO may be brought under the following:

  • Inter Partes Review
  • Post Grant Review
  • Covered Business Method
  • Various Patent Appeals

With an experienced patent litigator on your side, you can receive the counsel you need for infringement allegation matters, or sue an opposing infringer attempting to misuse your intellectual property. A skilled patent attorney may also provide a litigation opinion of the likelihood of success of a suit. An opinion may be an invaluable first step that provides the client with a detailed understanding of what may be at stake and the estimated likelihood of the merits of the case. The patent attorney may render an opinion by analyzing the patent and prosecution history, conducting exhaustive infringement searches, examining the validity of an infringement claim, and constructing potential counter challenges and business strategies such as potential licensing agreements.

For any patent litigation matter, it is best to obtain reliable legal counsel by contacting a patent attorney.

Types of patents

In many instances an inventor is unsure of what type of patent to apply for, how to go about completing the patent process, and what type of legal coverage a certain patent may grant. For example, a utility patent is used to protect the way an invention is used and works while a design patent is used to protect the way an article appears.

There are several different types of patents including:

  • Design patents:These patents protect new, original, and ornamental design and the way it appears.
  • Utility patent: An invention or discovery of a new and useful process, machine, composition of matter, or machine, or any new and useful improvement to an already existing product would qualify for this patent.
  • Plant patent: A plant patent covers invented or discovered and asexually reproduced distinct varieties of plants. The plant must be other than a tuber propagated plant or a plant found in an uncultivated state.

Utility Patents

If you or your business has discovered or invented a new and useful machine, process, or idea, you may be able to obtain a patent to protect your intellectual property.


An individual who invents something shall be entitled to a patent, unless:

  • The intended invention has already been created, patented, on sale, in public use, described in printed publications, or available to the public in some way before the claimed invention’s effective filing date
  • The invention was already described in an issued patent, or in an application for patent that has been deemed published, or was already published, before the effective filing date of the claimed invention

There are certain classifications of items and ideas that cannot be patented. It is important to keep in mind that many of these exceptions are Judicially established by the Supreme Court and are without clear statutes promulgated by the legislature. Knowing the full evolution of the caselaw and precedential opinions of patent eligible and non-patent eligible subject matter is a difficult task.

Non-patentable items, inventions, and pieces include:

  • Things that are naturally-occurring including mathematical formulas
  • Any inventions that serve illegal ends
  • Abstract ideas
  • Printed or published materials that require a copyright not a patent
  • Inventions or ideas that are not operational
  • Human actions such as new workout regimes or physical therapy techniques

Design Patents

If the appearance of your invention is unique and crucial to the integrity of your work, you may wish to pursue a design patent. This gives you legal protection for new and ornamental features that may serve as the identifying mark of your invention. For example, Apple Inc. has patented the design features of their iPhone product. Recently, a U.S. court ruled that Samsung Electronics Co. Ltd. encroaching on design aspects of the iPhone and awarded Apple Inc. hundreds of millions of dollars.

Provisional and Non-Provisional Patents?

Briefly, a provisional patent application may be represented as a stepping-stone to filing a non-provisional patent application. A provisional patent application is not examined by the USPTO, will never issue as a patent, but may be used to stake one’s claim to a “filing date”. Additionally, a provisional application may be seen as a cheap way to secure a “filing date” and is a highly beneficial process to a patent applicant. However, a provisional patent application will never become a patent unless a non-provisional patent application is subsequently applied for. The primary benefit of filing a provisional patent application is that it is cheaper to file and can be completed quickly. An applicant can file a provisional patent application early, perform a business assessment, find funding, etc. while pursuing a non-provisional application within one year of filing the provisional application. The United States is the only country in the world that offers inventors the option of a provisional application. Frequently, international inventors may utilize The United States provisional patent application route.

A provisional patent application may be used to establish an earlier filing date. A provisional patent application does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year and claims priority to the provisional patent application. There are many reasons why an individual may desire to file a provisional patent application and a patent attorney can counsel an individual on the numerous beneficial reasons.

A non-provisional patent application is examined by the USPTO and may mature into a patent if it is deemed patent eligible. Many non-provisional patent applications claim the benefit of an earlier filed application, such as a provisional application, divisional application, continuation Application, or even an international application). Filing a Non-Provisional Application starts the official examination process with the USPTO to determine if the invention is patentable.

If you would like to discuss filing a provisional, non-provisional, or international patent application contact a patent attorney.

Why should I retain a Patent Attorney?

While it is not mandatory to retain a patent attorney for the application process, it is highly advisable. Individuals that represent themselves may make mistakes along the way that could cause a patent not to issue because of a mere technicality. It is considered a widely held belief that the true value of a patent directly correlates first to the invention itself but is also inevitably tied to the skill of the patent draftsman. The misuse of a single word can make a world of difference in the scope of a patents protection and the rights that it confers.

Patent attorneys are experienced in patent law and can help you by conducting a thorough patent search, strategically drafting your application, entering international jurisdictions, and guiding you through the many steps of the process.

A patent attorney will help you determine which kind of patent you are qualified to apply for and provide guidance throughout the application process. Many individuals are astounded that it may take the USPTO 3 or more years to issue a patent and in between filing and issuance there are many other hurdles that the USPTO places on the applicant. Protect your intellectual property to the fullest extent today.

If you need dedicated assistance with your patent application, please complete the request services form and start talking to a patent attorney today! Do not allow the full potential of your invention to be unrealized by foregoing adequate legal representation. Contact the legal representation you need and get the process started today.

Any questions you have regarding the pursuit of your patent should be directed to an attorney. A skilled attorney can help you decipher the statutes and legalities of patenting an invention so you can better understand the requirements and qualifications that are necessary. Furthermore, they help make strategic decisions that affect the likelihood of patenting your invention.

Protecting your intellectual property is important, and having a patent attorney on your side who is passionate about safeguarding your hard work can be crucial. A competent attorney can guide you through the entire process, from the patent search and application, to patent litigation. If you are ready to move forward in patenting your original invention or idea, turn to a trusted patentattorney or a group of attorneys operating as an intellectual property firm dedicated to providing you with the legal counsel you need at this time. Furthermore, it is paramount to retain legal representation for specialized purposes by specialized counsel.

The United States, and most international jurisdictions, utilize a first to file system. This means that the first entity to file for a patent application will be awarded a patent if it is considered patent eligible. If an alternate entity files for the same invention after the first entity, they may not be entitled to a patent even if the concept is considered patent eligible because they were not considered the “First to File.” Please do not hesitate to contact a patent attorney as days, hours, and minute’s difference in filing may make all the difference.