The issues of patent validity and
patent infringement fall under exclusive jurisdiction of the Federal government. On the other hand, questions of patent ownership (like other questions of private property) are contested in state courts, although federal courts can make decisions about patent ownership by applying the relevant state law, when appropriate. Most of the US patent law is codified in
Title 35 of the United States Code, as authorized by
Article One,
section 8, clause 8, which states: . The "patentability" of inventions (defining the types things that qualify for patent protection) is defined under Sections 100–105. Most notably, section 101 sets out "subject matter" that can be patented; section 102 defines "novelty" and "statutory bars" to patent protection; section 103 requires that an invention to be "non-obvious". Although this statement is superficially similar to intellectual property clauses in the constitutions of other countries, the US patent system has several peculiarities: • This clause is interpreted as giving the primary IP rights only to individuals (i.e. "inventors") rather than to organizations (see
Stanford University v. Roche Molecular Systems, Inc.), • Until 16 March 2013 the US gave priority to first inventors to invent, although the US adopted first inventor to file system since (see
First to file and first to invent). • The US has
provisional patent applications, which can be filed one year before filing regular patent application, thus delaying the start on the nominal 20 year patent term by one year. • Unlike most other countries, the US allows extension of patent monopoly beyond 20 years from the filing date via
patent term adjustment due to the patent prosecution delays by the USPTO or due to product approval delays by
Food and Drug Administration. • The US does not have
utility models. • There is no
criminal liability for patent infringement in the US, only
civil liability. • Although lawsuits for
declaratory judgement are prohibited in the US in general, they are allowed in cases of potential patent infringement. • A
research exemption and
fair use is allowed for using patented product or process for research and educational purposes, albeit their scopes have seen reductions in recent years. • The large size of the US economy, the strong pro-patentee legal regime and over 200 years of
case law make US patents more valuable and more litigated than patents of any other country. The long history of patents and strong protection of patent holders contributes to abuse of the system by
patent trolls, which are largely absent in other countries. The US also has an extensive body of
case law comprising federal court
precedents that have accumulated over more than 200 years.
US Federal District courts have primary jurisdiction in patent infringement cases. Patent validity can be challenged in the same US Federal District courts, as a
declarative judgement or counter-claim of non-infringement. Alternatively, patent validity (or examiners' refusals to grant patents) can be challenged at
Patent Trial and Appeal Board (PTAB). The US
Court of Appeals for the Federal Circuit (CAFC) reviews the decisions of the Federal District Courts and of the PTAB. The rulings of the CAFC can be reviewed by the
SCOTUS, but only on a discretionary basis (i.e. there is no right to appeal the CAFC's decisions).
Patentable subject matter (§101) One author of the US
Patent Act of 1952 stated that patentable subject matter should encompass "anything under the sun that is made by man." At that time, the
USPTO and US courts interpreted both "anything" and "made by man" quite broadly. However, the meaning of these terms has been narrowed substantially over the years. There are four types of "anything" (i.e. of statutory categories of inventions): a process, a machine (usually implies moving parts), (an article of) manufacture (usually implies no moving parts, e.g. textile fabric or a chair), a composition of matter (chemicals, materials), as well as improvements thereof. Not every object falls into a statutory category: for example, electromagnetic waves, and rules for playing games are not patentable (but a new and non-obvious type of
dice for playing games
may be patentable as a "manufacture"). The most significant restrictions occurred over time with respect to patentability of "processes" (methods). For example, patenting of
business methods in US (in contrast to other countries) was quite common between and 2014, but courts gradually curtailed patentability of business methods to the point of almost complete exclusion in
Alice Corp. v. CLS Bank International (2014). Also, US courts have been struggling with the meaning of "made by man". Since at least 1948 in
Funk Bros. Seed Co. v. Kalo Inoculant Co. the Supreme Court made clear, that
trivial implementations of a newly discovered natural phenomenon or natural product are not eligible for a patent. However, in 1991 in
Amgen v. Chugai Pharmaceutical the
CAFC concluded that genes isolated from their natural environment were patentable. This practice came to an end in 2013 when the Supreme Court decided in
Association for Molecular Pathology v. Myriad Genetics, Inc. (2013) that "mere isolation of genes does not qualify for patent protection". At the same time the Court allowed patenting of
complementary DNA without
introns, since "it does not exist" in nature. Similarly, inventions based on
routine applications of discoveries (such as that different people metabolize the same drug at different rates as in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., or that pregnant woman's blood contains DNA of fetus' father as in
Ariosa v. Sequenom) is not patent-ineligible in the US, since the new elements in such inventions are not "made" but rather "discovered" by man. Although the presence of such "discoveries" helps patentees to meet the
non-obviousness requirement, an additional man-made contribution (called "inventive concepts" in
Alice Corp. v. CLS Bank International) is required to limit this discovery to a patentable invention. Patent subject matter eligibility is discussed in the details in section 2106 of
Manual of Patent Examining Procedure. Additional examples can be found here.
Novelty (§102) Section 102 of the patent act defines the "novelty" requirement. The novelty requirement prohibits patenting a technology that is already available to the public. Specifically, 35 U.S.C. 102 states: For a technology to be "anticipated" (and therefore patent-ineligible) under 35 U.S.C. 102, the prior art reference must teach
every aspect of the claimed invention either explicitly or impliedly. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." The issue of novelty often arises during patent examination, because of inadvertent and/or partial disclosures by inventors themselves prior to filing a patent application. Unlike the laws of most countries, the US patent law provides for a one-year grace period in cases of inventor's own prior disclosure. Another unique feature of the US patent practice is a
provisional patent application, which allows an inventor to establish a priority and gives them a year to improve on their invention before filing a complete (i.e. non-provisional) patent application.
Obviousness (§103) To be patentable, a technology must not only be "new" but also "non-obvious." The US requirement for non-obviousness corresponds to the
inventive step requirement in other countries. An "invention" is obvious (and therefore ineligible for a patent) if a person of "ordinary skill" in the relevant field of technology would have thought the technology was obvious, on the filing date of the patent application. Legislatively the requirement for non-obviousness was established in the
Patent Act of 1952. Specifically, 35 U.S.C. 103 states: The non-obviousness requirement does not demand that the prior art be identical to the claimed invention. It is enough that the prior art can somehow be modified (or combined) in order to teach the claimed technology. So long as the modification of the prior art (or combination of several prior art references) would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time the application was filed, the applied-for technology will be considered obvious and therefore patent-ineligible under 35 U.S.C. §103. As the practice of the USPTO and US Federal Courts showed later, the PHOSITA criterion turned out to be too ambiguous in practice. The practical approach was developed later by the US Supreme Court in
Graham v. John Deere Co. in 1966 and in
KSR v. Teleflex in 2006. ==Application procedure==