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A Brief Patent Primer

In my pre­vi­ous post, Catch­ing Whales, I set out the bit­ter­sweet story of a small startup king­dom that over­came star­va­tion by enlarg­ing its cri­te­ria for what counts as food.  Or to para­phrase the moral I pre­sented in that post, while it’s all very nice to aim for the top of the food­chain when din­ing, remem­ber that even off-putting cut­tle­fish can make a meal.

And what does all of that have to do with patents, which are, after all, both my bread and but­ter as an Intel­lec­tual Prop­erty (IP) attor­ney and — unlike fish­ing — the actual sub­ject of my posts on this web­site?  Short answer: the alle­gory is illus­tra­tive of a crit­i­cal mis­take that’s as com­mon to search­ing for patents as it is to search­ing for fish in the sea: you catch only what you set out to catch, so if you cast a net that’s designed only for what you think you want to see, you’ll get that and only that … or noth­ing at all.  And under these cir­cum­stances what you’re not likely to get is a good sam­pling of what’s actu­ally in the water, which is, after all, what you ought be look­ing at.  Or, bet­ter yet, eat­ing,  metaphor­i­cally speak­ing at least.

It’s an essen­tial point for patent search­ing, one that should pop into mind any time some­one says “I know it’s a unique tech­nol­ogy because I searched the patent data­bases and found noth­ing on point!”  But before I pur­sue this fur­ther, I need to stop for a minute and dis­cuss what the patent seas are, and why peo­ple ought be inter­ested in trolling them.  And what turns up when they do.  So, let’s start with some gran­u­lar­ity — in this case the nitty-gritty of nomenclature.


 A patent is a legal doc­u­ment that’s issued by a gov­ern­ment patent office such as the United States Patent and Trade­mark Office (USPTO),1 the Cana­dian Intel­lec­tual Prop­erty Office (CIPO),2 etc.  The hall­mark of a patent is that it grants no pos­i­tive right to make or use the inven­tion it describes; instead, it grants a neg­a­tive right, specif­i­cally the neg­a­tive right to exclude oth­ers from mak­ing or using the described inven­tion in the coun­try where the patent has issued, for a lim­ited time period.3

So why do peo­ple want to patent things, espe­cially when all a patent gets you is a neg­a­tive right, in a lim­ited geo­graph­i­cal region for a lim­ited period of time?  Three basic rea­sons: glory (being a patent holder); duty (insti­tu­tional require­ments or incen­tives); and, com­merce (i.e., money).  I have noth­ing against either glory or duty, but my prac­tice is based on the third premise: that a patent is some­thing that you worry about because you’re doing some­thing that involves com­merce, and you either want a patent in order to make money or you want to legally cir­cum­vent some­one else’s patent(s) for that same rea­son of lucre.

How then does hav­ing a patent help you make money?  I can think of at least three ratio­nales.  First, patents — whether granted or even just applied for — show that you’re seri­ous about what you’re work­ing on, and seri­ous­ness in busi­ness ups your bona fides for doing deals.  Sec­ond, patents — again, whether granted or just applied for — help to demon­strate to poten­tial com­peti­tors and, for fundrais­ing, money part­ners, that you have some­thing pro­pri­etary, which is to say some­thing that’s actu­ally pro­tectable and can’t just be dupli­cated else­where in record time with lit­tle cost and no con­se­quences.  Finally, a granted patent is a legally enforce­able road­block4 to some­one else mak­ing and using the patented inven­tion, a sit­u­a­tion that can have enor­mous com­mer­cial value if the road­block is a sig­nif­i­cant one.5

By the same three tokens, the patent game also often involves legally cir­cum­vent­ing the patents of oth­ers, which, if they can’t be cir­cum­vented, can act to block your own com­mer­cial progress.  So any con­sid­er­a­tion of patents must nec­es­sar­ily con­sider both your own abil­ity to get patents — patentabil­ity — and the pos­si­ble exis­tence of the patent(s) of oth­ers that may affect your abil­ity to prac­tice a tech­nol­ogy — freedom-to-operate.  Let’s take a minute for a brief digres­sion on each of these concepts.


Patentabil­ity is a sim­ple enough con­cept: it’s the abil­ity to get a patent for a par­tic­u­lar tech­nol­ogy given the applic­a­ble legal require­ments for obtain­ing a patent in the coun­try or coun­tries in which you’re seek­ing patent pro­tec­tion.  If you’re likely to meet all those require­ments, you’re likely to be able to get a patent; if not, not.6

A com­plete dis­cus­sion of all the legal require­ments for obtain­ing a patent — whether in the USA alone or in the Rest-of-World (ROW) — is decid­edly beyond the scope of this post, since there are many require­ments, and they can dif­fer between coun­tries.  There are three basic require­ments that are ubiq­ui­tous how­ever, and I’ll dis­cuss them as they’re defined in the USA: statu­tory sub­ject mat­ter; nov­elty; and, non-obviousness.  Again, please keep in mind that this is a brief syn­op­sis of the sub­ject, and not in any way a defin­i­tive dis­cus­sion — i.e., do not rely upon any­thing pre­sented in form­ing any con­clu­sions and, instead, seek the opin­ion of a legal professional.

Statu­tory Sub­ject Matter

You can’t get a patent for things that aren’t patentable, in the fun­da­men­tal sense of being out­side the patent frame­work.  In the USA, abstract ideas, laws of nature and nat­ural phe­nom­e­non are not patentable,7 with par­tic­u­lar cases such as DNA sequences, liv­ing organ­isms and busi­ness method patents cre­at­ing par­tic­u­lar con­tro­versy.8


If the inven­tion is within statu­tory bounds, one of the key fac­tors affect­ing its patentabil­ity (but again, not the only fac­tor) is its nov­elty.  For the USA, for exam­ple, 35 USC § 1029 defines nov­elty as includ­ing the absence of any sin­gle ref­er­ence which, within its four cor­ners, con­tains every ele­ment of the inven­tion for which patent­ing is sought.10  For our sim­ple pur­poses here, the thing to keep in mind is that, if there is a ref­er­ence out there that 1) dis­closes every aspect of your inven­tion and 2) became pub­lic within a cer­tain rel­e­vant time period,11 then the inven­tion is not patentable because it is not-novel in light of this reference.


In the USA, 35 USC § 10312 defines the require­ment that an inven­tion be non-obvious; again, keep in mind that even if non-obvious an inven­tion must still sat­isfy all the other require­ments for patentabil­ity (includ­ing, but not lim­ited to, statu­tory sub­ject mat­ter and nov­elty) in order to be patentable.

What exactly is “obvi­ous­ness,” in this case as defined by United States law and the court cases inter­pret­ing that law?  Again, a com­plete dis­cus­sion of this term is well beyond the scope of this post; how­ever, one com­monly accepted way of begin­ning to think about obvi­ous­ness is that obvi­ous­ness occurs when a num­ber of ref­er­ences (or other sources of infor­ma­tion, includ­ing infor­ma­tion com­monly known) could have been com­bined at the appro­pri­ate time to obtain all of the aspects of the inven­tion.  Thus for exam­ple an inven­tion for a par­tic­u­lar paint color might be deemed obvi­ous in light of the known exis­tence of pri­mary paint col­ors and the knowl­edge that, when com­bined in the appro­pri­ate amounts, these pri­mary col­ors can form a paint of the color of the invention.

If you know your bible, you’ll know the “there’s noth­ing new under the sun” quote from Eccle­si­astes, and, given that level of eru­di­tion, you’re undoubt­edly won­der­ing what the rea­son­able lim­its of the obvi­ous­ness require­ment are.  After all, in the “noth­ing new under the sun” sense all com­bi­na­tions are obvi­ous; the only ques­tion, then, is to what extent the USPTO (for exam­ple) hews to Ecclesiastes?

Well, ask a meta­phys­i­cal ques­tion, get a meta­phys­i­cal answer — in the USA in the form of a 2007 U.S. Supreme Court deci­sion cast­ing new (meta­phys­i­cal) light on this require­ment, KSR Inter­na­tional Co. v. Tele­flex Inc.13 (KSR).  Again a detailed dis­cus­sion is beyond the scope of this post, but in brief the KSR case dealt with the ques­tion of when it’s appro­pri­ate to fairly find that ref­er­ences could rea­son­ably have been com­bined to make an inven­tion obvi­ous.  Or, alter­na­tively, when such a find­ing is merely post hoc, that is, based only on the after-the-fact imper­mis­si­ble hind­sight recog­ni­tion of the ratio­nale of a com­bi­na­tion of ref­er­ences, rather than on a recog­ni­tion in the appro­pri­ate time-frame of the inven­tion itself.

I’ll leave the detailed dis­cus­sion to the state­ments of the U.S. Supreme Court itself,14 but I rec­om­mend the USPTO’s own gloss15 on var­i­ous ratio­nales under which it’s rea­son­able to com­bine ref­er­ences with­out it being imper­mis­si­ble hind­sight to do so.  For our pur­poses per­haps the most impor­tant out­come of the KSR case has been to seem­ingly shift the form of rejec­tions made by the USPTO16 from nov­elty rejec­tions under 35 USC § 102 to many more obvi­ous­ness rejec­tions under 35 USC § 103. If you’re a cynic, you’ll see this as the inevitable result of the KSR case hav­ing opened the door to the (more meta­phys­i­cal) obviousness-type rejec­tions; but what­ever the rea­sons, since this is a brief dis­cus­sion of patentabil­ity, it’s at least worth not­ing that obviousness-type rejec­tions seem to be much more com­mon now than they used to be.

Freedom-to-Operate (FTO)

I’ve just dis­cussed patentabil­ity, which is the process sur­round­ing get­ting a patent — and again, let me empha­size that my dis­cus­sion has been emphat­i­cally USA-centric. Freedom-to-operate (FTO) is not patentabil­ity — it’s prob­a­bly bet­ter to think of FTO as either the hand­maiden of patentabil­ity17 or, if you pre­fer, its evil twin.18 There’s habit­u­ally a great deal of con­fu­sion about the dif­fer­ence between patentabil­ity and FTO, par­tic­u­larly when the paten­tee dis­cov­ers that hav­ing a patent does not give her the right to ignore (infringe) other people’s patents, and that the thou­sands of dol­lars (or more) she’s spent to get that patent were wasted because she can’t pro­duce her inven­tion with­out run­ning afoul of the patent (or patents) of others.

FTO is a com­plex sub­ject, and it’s far beyond what I’m able to dis­cuss here. There are at least two basic points to keep in mind: whether or not you get a patent you still have to worry about whether you’re run­ning afoul (infring­ing) the patent or patents of oth­ers; and, it’s crit­i­cal that you seek the opin­ion of legal coun­sel regard­ing issues of patent infringement.

Patentabil­ity, FTO and Search­ing The Patent Seas

Time to put it all together. I’ve talked about patentabil­ity — the process of meet­ing all the legal require­ments for a patent appli­ca­tion and get­ting an issued patent as a result — and also briefly touched on FTO — the neces­sity of deter­min­ing whether there are patents out there that affect your own abil­ity to prac­tice your inven­tion (i.e., your “free­dom to oper­ate”). What should be obvi­ous is that for both processes, there’s a crit­i­cal need to sur­veil the patent seas — for “prior art”19 pub­lished and issued patents that might affect the nov­elty and obvi­ous­ness of an appli­ca­tion (patentabil­ity), and for pub­lished or issued patents that might affect your FTO.20

Which brings us full cir­cle to the Catch­ing Whales alle­gory, and the impor­tance of net design in search­ing, whether for fish or for prior art or FTO-related patent appli­ca­tions or issued patents. As I said at the out­set of this post, if you cast a net that’s designed only for what you think you want to see, you’ll get that and only that, and you’ll very likely miss what’s actu­ally in the water, i.e., the prior art or FTO-related doc­u­ments you actu­ally need to know about. I’ll dis­cuss this more in my next post.

  1. See []
  2. See []
  3. There are many good dis­cus­sions of patent basics; see, for exam­ple the USTPO web­site at []
  4. Cer­tain legal rights can also accrue for pub­lished patent appli­ca­tions, although this topic is beyond the scope of this post.  See, e.g., 35 U.S.C. 154(d) at []
  5. And, con­versely, worth­less if there are easy workarounds. []
  6. Note that “likely” is the oper­a­tive word, since patentabil­ity is never cer­tain until the patent or patents actu­ally issue; thus patentabil­ity is in some sense one of the many types of augury.  I would say that it’s a more straight­for­ward art than, say, tasseo­mancy, and cer­tainly a more pleas­ant art than anthro­po­mancy (see, e.g., the clas­sic descrip­tion of this form of prog­nos­ti­ca­tion in Roger Zelazney’s “Crea­tures of Light and Dark­ness”), but frankly the con­stant changes in patent law some­times make me won­der if that state­ment is alto­gether true. []
  7. See, e.g., []
  8. Although these top­ics are quite fas­ci­nat­ing, I do not dis­cuss them here. []
  9. See, e.g., []
  10. Again, this is a thumb­nail sketch of the nov­elty require­ment, and should not be relied on in reach­ing any legal con­clu­sions. []
  11. Set by statute, with the specifics of tim­ing often dif­fer­ing in dif­fer­ent parts of the world.  Please con­sult a patent pro­fes­sional in this regard, as some or all patent rights can be lost by fail­ing to cor­rectly con­sider the legally man­dated tim­ing. []
  12. See, e.g., []
  13. 550 U.S. __, 82 USPQ2d 1385 []
  14. See–1350.pdf []
  15. See, e.g., /–43.jsp []
  16. Again, this post is focused on law in the USA rather than the ROW. []
  17. Which has rel­a­tively nice Rhinemaiden-like con­no­ta­tions, a sort of Brünnhilde-in-patent-garb visual effect. []
  18. An anti-Kirk con­no­ta­tion, as it were. []
  19. Note that this term “prior art” strictly refers to any rel­e­vant prior doc­u­ments, includ­ing pub­lished lit­er­a­ture, adver­tis­ing brochures, hand­outs, etc., as well as patent doc­u­ments. []
  20. Pub­lished patents can have cer­tain latent rights that affect FTO; see note 4 above. []