Patent law is implemented by individual countries or regions of the world, there is no international patent law. In other words, each country or region has its own laws about patents and only patents issued by that country or region are protected in that country. For example, a patent issued in China is not enforceable in the United States (U.S.). To have patent protection in both the U.S. and China, the patent applicant would need to have applied for and been granted/issued a patent in both countries.
In the U.S., a patent is the grant of a federal constitutional right. Because a patent is a grant of a federal constitutional right, and it is intellectual property, the law of property applies to patents. With respect to owning a patent, it is convenient to think of patent ownership as an individual federal property right. Inventors are the owners of new patent applications unless and until assigned.
Source of Law on Patents in the United States of America
In the U.S., patent law originates in in Title 35 of the Constitution – “Patents” of the United States Code (U.S.C.). U.S.C. Title 35 (usually written 35 U.S.C.) is authorized by the U.S. Constitution in Article One, Section 8: “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.”
This title both establishes the United States Patent and Trademark Office (USPTO) and the patent law under which to determine what is patentable. The USPTO is the part of the U.S. federal government that administers the issue of patents. Examiners at the USPTO determine the patentability of inventions based on what is patentable under the law in 35 U.S.C. The kinds of inventions that are patentable in the U.S. are found in 35 U.S.C. § 101 through § 105.
Invention Patentability Under United States Patent Law – 35 U.S.C. § 101 Through § 103
The limiting laws in determining whether an invention is patentable are found in 35 U.S.C. sections 101, 102, and 103. Sections 104 and 105 cover patentability of inventions created by citizens of the U.S. in foreign countries and outer space, respectively. Your invention may be patentable if it meets the requirements explained in patent laws 35 U.S.C. § 101 through § 103.
- 35 U.S.C. § 101 governs what is patentable subject matter. This section is used to determine if an invention is patent eligible subject matter and useful.
- 35 U.S.C. § 102 defines the novelty requirement. This section is used to determine if an invention is new.
- 35 U.S.C. § 103 defines the non-obviousness requirement. This section is used to determine if an invention is non-obvious.
Searching for prior art and conducting a patentability study are the first steps in seeking patent protection for a new invention. A patentability study is an analysis of the claimed subject matter of the invention compared to what is already available in the world (prior art) and applying 35 U.S.C. sections 101, 102, and 103 to determine if the invention is patentable. Other than a patent examiner, only a licensed patent practitioner can conduct a patentability study and render a patentability opinion.
In other words, a patentability study can determine if an invention is patent eligible subject matter (U.S.C. § 101), useful (U.S.C. § 101), novel (U.S.C. § 102), and non-obvious (U.S.C. § 103). The claimed invention is compared with the prior art to determine whether it is patent eligible subject matter and whether it is useful, new, and not obvious.
Carson Patents recommends hiring a licensed patent practitioner to conduct a prior art search and patentability study for you. However, if you want to do your own prior art search, we have an article on how to search for prior art.
The Rules and Procedures to Apply for a Patent
The USPTO implements the patent law in 35 U.S.C. through the Code of Federal Regulations (CFR) and the Manual of Patent Examination Procedure (MPEP). There are many rules and procedures to apply for a patent, and all of the details matter. An inventor may file their own patent application, but the process is complex, the documentation must be complete in the proper format, and getting it all correct can be rather very challenging.
The applicable title in the CFR for patents, trademarks, and copyrights is Title 37, referred to as 37 CFR. This title is divided into four chapters, each divided into subchapters and parts that address all the rules to implement patent law. An empty fifth chapter is reserved for future use.
Title 37 – Patents, Trademarks, and Copyrights
- CHAPTER I—United States Patent and Trademark Office, Department of Commerce
- CHAPTER II—U.S. Copyright Office, Library of Congress
- CHAPTER III—Copyright Royalty Board, Library of Congress
- CHAPTER IV—National Institute of Standards and Technology, Department of Commerce
- CHAPTER V—[Reserved]
In implementing the patent law, using the federal rules, the USPTO created an essential treatise or manual, the Manual of Patent Examination Procedure (MPEP). This manual explains how to examine a patent application and the procedures to be used in allowing, objecting, and rejecting patent claims in patent applications. It is a complete disclosure of the patent examination process and is used and referred to by patent examiners in writing office actions to patent applicants.
There are 29 chapters and seven appendices in the MPEP. Many sections include the sample language to be used by the examiners in writing office actions to patent applicants. In printed form, there are seven volumes of about 500 pages each. Luckily, the USPTO keeps a current searchable MPEP version available on their website. A downloadable pdf copy is also available. The MPEP contains detailed information and specifics regarding all steps and parts of a patent application, the procedures involved, and its examination.
The MPEP includes instructions to the examiners and examples of the many kinds of things that come up in a patent application with regard to office actions. This content includes instructions on applicant response options and procedures for questioning the examiner. The MPEP is organized into chapters by subject. Below is the MPEP table of contents.
The Table of Contents of the MPEP Includes the Following Chapters:
- 100 Secrecy, Access, National Security, and Foreign Filing
- 200 Types and Status of Application; Benefit and Priority Claims
- 300 Ownership and Assignment
- 400 Representative of Applicant or Owner
- 500 Receipt and Handling of Mail and Papers
- 600 Parts, Form, and Content of Application
- 700 Examination of Applications
- 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
- 900 Prior Art, Classification, and Search
- 1000 Matters Decided by Various U.S. Patent and Trademark Office Officials
- 1100 Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions
- 1200 Appeal
- 1300 Allowance and Issue
- 1400 Correction of Patents
- 1500 Design Patents
- 1600 Plant Patents
- 1700 Miscellaneous
- 1800 Patent Cooperation Treaty
- 1900 Protest
- 2000 Duty of Disclosure
- 2100 Patentability
- 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
- 2300 Interference and Derivation Proceedings
- 2400 Biotechnology
- 2500 Maintenance Fees
- 2600 Optional Inter Partes Reexamination
- 2700 Patent Terms, Adjustments, and Extensions
- 2800 Supplemental Examination
- 2900 International Design Applications
Patent Application Help Available Online by Video
To apply for a patent for a new invention, Carson Patents has an experience-based process of 5 steps to patent. The 5 steps to patent: the prior art search, the patentability study (evaluation), patent application writing, patent application filing, and finally patent prosecution to get to a final decision about whether a patent can be issued for an invention. We study and practice applying the relevant patent law, rules, and procedures to advance the prosecution of patent applications with the goal of allowance.