Introduction to the U.S. Patent System

The foundation of the U.S. patent system is built upon England's Statute of Monopolies, enacted in 1623 as a means of counteracting the crown's abuse of market control. In Colonial America, after some debate, control of patents was federalized under Article I, Section 8 of the original Constitution: "[t]he Congress shall have to power... to promote the progress of...useful arts, by securing for limited times to...inventors the exclusive right to their...discoveries".

Over the last two centuries, this Patent Clause has been interpreted, expanded upon, and codified into U.S. statute. The phrase, "exclusive right" has been determined not to convey any affirmative right for an inventor (or patent owner) to practice his or her invention. A U.S. patent simply provides the patent owner with the ability to exclude others from making, using, selling or importing an invention in or into the United States. This right is extended for a limited time (twenty years after application for the patent).

Other portions of the Patent Clause impart requirements for patentability. The Clause specifically refers to useful arts. Therefore, a patent applicant must supply some credible and substantial utility for the invention. The threshold to meet the Clause's intended definition of "discoveries" is high; the invention must be both novel and non-obvious. Finally, the phrase "to promote the progress" sets up the basic goal of the patent system: in exchange for patent protection, the applicant must describe the invention in sufficient detail such that a skilled artisan could recreate it, essentially driving the scientific or technological field forward.

The United States Patent and Trademark Office (USPTO) examines all utility patent applications for adherence to the above and other requirements. Only inventions that are determined to meet such requirements may be granted patent protection. The USPTO website provides full text versions of all patents granted (issued) after 1976 (http://patft.uspto.gov/netahtml/search-bool.html). A search of “Johns Hopkins” under Query Term 1, and “Assignee Name” in “Field 1 ”, results in hyperlinks to all patents issued to the Johns Hopkins University. Typical of the biotechnology sector, JHU’s patents are lengthy with most describing multiple distinct inventions (e.g. the USPTO considers nucleic acids, proteins, and antibodies to be separate inventions). Regardless of how many inventions are described in a patent application, the scope of any particular patent’s protection is determined solely by its issued claims. The USPTO’s acceptance of claims as originally filed by the patent applicant is exceedingly rare. Identification of allowable claims usually occurs only after lengthy legal negotiations between the patent Examiner and the patent owner’s attorney, and/or upon narrowing the scope of the proposed claims (in a process termed patent “prosecution”). Therefore, each patent issued to JHU is a product of much scientific effort, attorney time, and money.

Though the U.S. patent system is old, it is constantly evolving. For example, a new breed of patent application was introduced in 1995 that has significantly changed patent practice for small entities (such as universities). This type of application, called a “provisional” patent application, has a one-year maximum life span, after which it must be converted into a utility application to secure patent rights. Provisional patent applications can provide an inexpensive means of securing a priority date, after which public disclosures related to an invention cannot be used against the corresponding utility application by the USPTO during prosecution. Other recent modifications to the system include timed publication of patent applications, which were previously kept confidential until issuance of the patent.

This piece is the first in a short series of patent-related articles scheduled by Licensing and Technology Development (LTD) to appear in Research WebNotes. Subsequent articles are intended to provide practical information regarding patents in general and insight into LTD’s patenting policies and practices. Currently, selected topics include provisional patent practice, costs of patenting, and what to expect during patent prosecution. However, if there is significant interest in other patent-related topics, LTD shall do its best to accommodate. Please feel free to send suggestions to Heather Bakalyar at hbakal@jhmi.edu, under the subject heading “PATENT TOPICS”.

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