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A patent provides its owner a monopoly on a patented invention that allows the owner to exclude others from making, using, or selling the claimed invention for a period of time from the patent’s filing date.

The provided exclusion period is a balance between allowing the owner to profit from the expense of developing and patenting the invention and allowing other inventors to build off old patents whose statutory protection has expired.

The regulatory and statutory requirements for a patent require the invention to be:

  • Comprised of patent eligible subject matter

  • New or novel

  • Useful

  • Non-obvious

  • Adequately described in a patent application

Patent eligible subject matter may be a new and useful process, machine, manufacture, or composition of matter or a new and useful improvement thereof.

A “process” may be the act, method, or process of performing the steps of a technical or industrial process.

A “machine” may include anything generally considered a machine, such as a tractor or computer.

A “manufacture” may refer to goods that are manufactured.

A “composition of matter” may refer to a chemical composition including mixtures of new or known chemical compounds.

The Supreme Court has held that laws of nature, physical phenomena, and abstract ideas are not patent eligible subject matter.

An invention must differ substantially from the prior art to be novel. The U.S. is a first-to-file patent system. However, in the U.S., there is a one-year grace period to file a patent application from the earliest public disclosure of the invention. Any public disclosures made by the inventors during the grace period will not be considered prior art to the patent application. It is essential to note that most other patent systems do not include a grace period. As such, any public disclosure made before the patent application’s filing date may be considered prior art to that application.

An invention must help solve some problem to be useful. Today, this requirement is easily achieved by defining how the invention solves any defined goal.

An invention cannot be obvious to a person of ordinary skill in the art to be non-obvious. In other words, the invention must contain more than obvious differences from prior art. For example, a non-obvious invention may not be trivial or a non-inventive combination of multiple prior art references. Obviousness is a factual inquiry dependent on the individual invention’s different elements and combinations.

A patent application must describe the invention with enough particularity such that those skilled in the art can make, use, and understand the invention to describe the invention adequately. The specific requirements for a patent application are the enablement, the best mode, and the written description requirements.

  • Enablement requires the inventor to describe the invention in a manner that will allow a person of ordinary skill in the art to make and use the invention without undue experimentation. Enablement allows for bootstrapping into the patent application of knowledge from a person of ordinary skill in the art.

  • Best mode requires the inventor to disclose a preferred way of carrying out the invention at the time the patent application was filed. The American Invents Act (AIA) has eliminated the best mode requirement in that a patent cannot be invalidated for not presenting the best mode.

  • Written description requires that the description of the invention be sufficient to demonstrate that the inventor had possession of the claimed invention at the time the patent application was filed. The written description defines the possible extent of the exclusive rights that the owner may obtain. As such, the written description must sufficiently encompass the breadth of the invention defined in the claims.

As an alternative to and in conjunction with Patents, please see Trade Secrets.

There are three types of patents:


Utility Patents

Utility patents protect functional elements of a claimed machine, process, manufactured goods, and composition of matter, or any new and useful improvement thereof.


Design Patents

Design patents protect the visual appearance and surface ornamentation of an invention or article. In other words, design patents protect only the non-functional ornamental elements of a new and original design of an invention or article.


Plant Patents

Plant patents protect new and distinctive varieties of plants. Plant patents are available only for varieties of plants that the inventor can asexually reproduce.

Prior to preparing and filing a Patent Application, please consider performing a Patent Search.

  • Do I Need a Registration to Sue for Copyright Infringement?
    Yes, owners must register their copyright before filing a lawsuit for copyright infringement. A creator of an original work owns a copyright in his work just by creating it. However, the creator cannot enforce that copyright without first obtaining a copyright regurgitation.
  • What Can I Do About Copyright Infringement?
    A New York copyright lawyer can help you understand your options and take swift action against copyright infringement. Typically, your lawyer will help you take one or more of the following actions. Send a Cease and Desist Negotiate a License Agreement Request an Injunction Pursue monetary damages
  • How Can I Identify Copyright Infringement?
    It’s essential to take steps to monitor your work so you can act quickly to enforce your rights with the help of TCP Law. Enlist an attorney to help monitor for potential violations. This will be the best option as a professional attorney can provide the most thorough scan and take swift action when necessary. Use Google. Unfortunately, while Google is better than using nothing, it will likely catch only a fraction of violations. Try third-party software. Examples of this software is Copyscape and Pixsy which are specifically designed to catch copyright violations. Depending on the type of work you have, programs like these may help you combat infringement.
  • What Is the Difference Between Common Law Trademarks And A Federal Registration?
    Common law trademark rights are based on a judicially created scheme of rights governed by state law and developed through use. Common law trademark rights are limited to the geographic area where the mark is used. Federal registration trademark rights are based on a federal statute and do not initially require use of the mark. Federal registration trademark rights do not have the geographic limitations of common law trademark rights.
  • What Is Needed to Show Use in Commerce?
    For goods, use in commerce refers to the product being sold or shipped within the United States in the ordinary course of trade with the mark displayed on the product itself or on exterior materials such as packaging, tags, and labels. A point-of-sale display or brochure may suffice as a specimen of use for goods. Advertising and marketing alone are generally unacceptable to show use in commerce. For services, use in commerce refers to the services provided within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.
  • What Is a Trademark Clearance Search?
    Before preparing and submitting a trademark application, trademark attorneys will often conduct a trademark clearance search. These searches can identify existing trademarks that may be confusingly similar to yours. Trademark protection for a mark is relative to the goods and services provided under that mark. Accordingly, determining whether allowing registration of your mark will cause a likelihood of confusion with an existing registration or trademark application is also relative to the goods and services described as being offered under your mark. If it is determined that a likelihood of confusion exists, registration will be denied by the USPTO. A trademark clearance search allows a trademark attorney to assess whether there may be a likelihood of confusion issue with your trademark application. Registering a trademark can be expensive, and trademark clearance searches help you avoid the trouble of going through the entire registration process only to discover that your mark cannot be registered.

Not everything can be patented.

To be patentable, an invention must meet several criteria as determined during prosecution with the USPTO:

  • It must define patentable subject matter,

  • It must be novel,

  • It must be useful, and

  • It must be non-obvious.

As a first step to enforcing your Patent rights, consider a Cease and Design Letter.

TCP Law provides expertise in all matters relating to the drafting, filing, prosecution, and defending of patents. For more information, please contact us.

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