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United States Patent and Trademark Office

Revision as of 11:27, 14 August 2009 by Ciaran (talk | contribs) (See also: ==Office details== The Director of the USPTO, since August 2009, is David Kappos.<ref>http://www.patentlyo.com/patent/2009/08/kappos-sworn-in-as-director.html</ref>)

The USPTO (United States Patent and Trademark Office) is known for granting software patents.

They are considered as having some of the lowest standards of evaluation.

According to a 2004 paper by Bessen and Hunt, the USPTO approves about 70 software patents per day.(see page 47) Other sources have said that in 2006 the USTPO granted just over 40,000 software patents.[1]

Criteria for patentability

To be patentable, an idea must be:

  • of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection,
  • novel (i.e. at least some aspect of it must be new)
  • non-obvious; and
  • useful.

Further explanation of these clauses is below:

1) The invention must be something that the patent office can legally issue a patent for, this is defined in the regulations, but generally it is taken to be a physical invention. There is considerable argument at the present time about "business method" patents, which according to the in re Bilski ruling are disallowed, however it is being argued by Gene Quinn that the only requirement is that a computer be included in the application for the patent to be issued. Patent lawyers make money from filing patent applications, and herding them through the process, and thus have an interest in the range of patentability being as wide as possible. This may not be in the best interests of society as a whole.

2) The invention must be novel. In industry this is known as the "duh" clause. One example is the KSR vs Teleflex case, where the patent in question covered the shape of a lever. In effect the invention must not have been previously invented. This is not simple however, as the rules disallow certain types of evidence, so it is possible to patent something that has been in general use for years prior to the patent being applied for.

3) Non-obvious means that the idea shouldn't be obvious. Simple modifications of existing devices are not allowed, nor are combinations of existing components. An example would be the motorcycle. If an automobile already exists, taking the engine from an automobile and mounting it on a bicycle frame to make a motorcycle will not be patentable. Lawyers however can write patent applications to obscure the obviousness factor, and sometimes do.

4) Useful. This is known as "You can't fool Mother Nature" clause (from the Chifton Margarine commercials of the 1970's). In simple terms, the invention has to work. If it doesn't work, it's not eligible for patent protection. While this sounds like a no brainer, a lot of patents are issued by the USPTO for inventions that cannot and do not work, as they break natural laws.

In addition to the 4 criteria above there are two other rules which are extremely important:

  • Prior art must be listed. If prior art is not listed, and it is provable that the filer knew about the prior are the patent may be invalidated. Where this is most important is with the obviousness clause, as it may be decided that based on the prior art that the invention was obvious, and therefore not eligible for patent protection.
  • The patent application must contain a description that would allow a person with "knowledge of the art" to build the invention. Deliberate obscuration of the description to block someone from building the device is not allowed (note that this is a also common complaint about software patents, that the description is not clear enough to allow someone to build a device).

Office details

The Director of the USPTO, since August 2009, is David Kappos.[2]

See also

External links

USPTO documents

Third party documents

References