In existence for more than 200 years, the United States Patent and Trademark Office (USPTO) is the government agency responsible for processing patent and trademark applications and disseminating related information to the public. Patents are a type of constitutionally sanctioned property right granted to inventors for exclusive development and deployment of their discoveries. Located in the Department of Commerce, the agency has been fully fee-funded since 1991.
Not without its fair share of controversy, the USPTO has long been criticized for long waiting times, inefficiency, and granting patents for unjustifiably ridiculous “inventions.” Although the Office only grants patents and trademarks valid in the U.S., its issue of U.S.-company patents for genetic modifications of biotechnology in foreign countries makes it susceptible to criticism of facilitating biopiracy, and makes it part of a larger debate over international intellectual property. Recently the agency had its statutory wings clipped by a U.S. district court that ruled the agency had gone too far in changing rules to the patent applications process meant to prevent abuse and cut back on bureaucracy. Current Congressional reforms are on the table, some aiming at a major overhaul of the patent system, especially with regard to patent infringement litigation.
USPTO history spans more than 200 years. In 1790, President George Washington established the first Patent Act, under which the Secretary of State and Executive signed off on patents. The responsibility was soon transferred to clerks in the State Department, and in 1802 given to the newly created role of clerk in the Department of State, which became the first patent office. Trademark registration was added to the Office’s functions in 1881.
The USPTO has issued more than 6.3 million patents since the Patent Act of 1790, and generally receives more than 326,000 patent applications and 232,000 trademark applications per year.
15 U.S.C. 1051-1127 contains provisions of the Trademark Act of 1946 that govern the administration of the trademark registration system of the Patent and trademark Office.
15 U.S.C. 1511 states that the Patent and Trademark Office is under the jurisdiction and supervision of the Department of Commerce.
35 U.S.C. contains basic authorities for administration of patent laws, derived from the Act of July 19, 1952, and subsequent enactment. Revenues from fees are available, to the extent provided for in appropriations acts, to the Commissioner to carry out the activities of the Office. The Patent and Trademark Office is authorized to charge international fees for activities undertaken pursuant to the Patent Cooperation Treaty. Deployment of automated search systems of the Office to the public is authorized.
44 U.S.C. 1337-1338 contains authority to print patents, trademarks, and other matters relating to the business of the Office.
Patents are a property right issued by the USPTO to inventors, defined as “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” it into the U.S. Patents are only applicable within the U.S., its territories and possessions. The USPTO has three years to issue a patent, which usually last 20 years from the date of filing. Once issued, responsibility for enforcing the patent is with the recipient.
There are three types of patents issued by USPTO:
· Utility patents are granted to one who “invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”
· Design patents are granted for a “new, original, and ornamental design for an article of manufacture.
· Plant patents “may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.”
Other criteria for judging patentability require that it be “novel” and “nonobvious,” and the invention must be described beforehand in enough detail to enable use for its intended purpose.
Article I, Section 8 of the Constitution gives Congress the power to regulate patent law: “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.” Patent law specifies the subject matter for which patents can be issued and conditions for patentability.
Existing law provides that anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” In this language “process” is legally defined as “a process, act or method,” including industrial or technical processes. This and the other classes of subject matter provided for (machine, manufacture, composition of matter) together are meant to cover most all man-made things and related processes. A major exception is made for inventions solely intended for “special nuclear material” or atomic weaponry, which are not patentable.
Patent law requires subject matter be “useful,” meaning it has a useful purpose including “operativeness” (an invention must perform its intended purpose in order to be patentable). Further, a complete description of the invention or manufacture is needed to warrant a patent.
Over time, court decisions have determined limits of the field of patentable subject matter, holding that laws of nature, physical phenomena and abstract ideas or not eligible. Raw natural products of nature are not patentable, but DNA and genetic modifications of natural phenomena become patentable when they have been isolated, purified or modified to result in a unique form. Regulations regarding the patenting of gene technology are still extremely controversial and evolving. (See biotechnology in controversy section)
Trademark or Servicemark
A trademark is a “word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others” that users register with the USPTO. A service mark is the same but identifies the source of a service rather than a product. Trademark rights can be used to prevent others from using a similar symbol (which can easily be confused by consumers) but not to prevent others from making or selling the same goods and services under a different mark—and can be used in interstate or foreign commerce.
Copyrights are issued to protect authors of “‘original works of authorship’ including literary, dramatic, musical, artistic and certain other intellectual works, both published and unpublished.” A copyright protects the form of expression rather than its content. Under the 1976 Copyright Act, owners have the exclusive right to reproduce and distribute the protected work, to produce derivative work, and to publicly display or perform the work. Copyrights are registered by the Copyright Office of the Library of Congress.
Help for Inventors
Facts of Interest
- The X-Patents (the first 10,000 issued between 1790 and 1836) were destroyed by a fire in December 1836 and less than 3,000 of those have been recovered and re-issued.
- On July 31, 1790, the USPTO awarded its first patent to Samuel Hopkins for an improvement “in the making of Pot ash by a new Apparatus and Process.” This patent was signed by then president George Washington.
- Legal fees for the preparation and filing of a U.S. Patent application can total more than $20,000, which is why a lot of inventors file their own patents.
- The USPTO rejects 83% of applications the first time they are filed
Patenting Business Methods
Since 1998 Federal Circuit court State Street Bank decision ruled that business methods could qualify as patentable subject matter, the agency has been inundated with such applications, especially for software. Objections to patenting of business methods range from arguments of unconstitutionality to the evident poor quality of many patents issued for business methods.
In a March 2008 interview, USPTO head John Doll commented that, “Probably in the last three years, of all the (business method patent) applications that have come in the door, the office has said 85 percent of these are not allowable. The patent system, I believe, is working very well... We're starting to get a higher percentage of business method patents being approved, probably in the 20 percent range.”
Immunity for Banks
Biotechnology and Intellectual Property
In 2007 a U.S. Federal court threw out a lawsuit challenging Deputy Director Margaret Peterlin’s appointment, brought by four inventors and patent attorneys alleging that she lacked the “professional background and experience in patent or trademark law” required by federal statute.
User Interface and Interaction Patents
Bad and Ridiculous Patents
RiceTec Patents Indian Rice
By granting patent rights to biotech companies for genetic modifications of traditional agricultural varieties in developing countries, the USPTO has landed itself in the middle of an international biopiracy controversy.
In 1997 the USPTO granted U.S. biotech firm RiceTec
a patent that included five individual claims for three “novel” rice lines derived from Indian Basmati rice. As in other cases involving the debate between biotechnology and biodiversity and the patenting of gene technology in developing countries (See Monsanto’s patenting of other traditional Indian agricultural products and the country’s controversial adoption of the TRIPS treaty), attention turned towards issues of India’s national sovereignty and the dynamics of intellectual property in an international trade environment dominated by multinationals.
Critics accused the Indian government of negligence for allowing a situation which could threaten the country’s export business, and a global grass-roots opposition campaign mounted against RiceTec’s biopiracy of Basmati. After India formally requested that the USPTO re-examine 3 of an original 20 claims made by the company, only five were upheld by the agency. Among the claims dismissed were titular reference and RiceTec’s dubious assertions that it had invented breeding methods and traits (including plant height, grain length, aroma) naturally found in traditionally cultivated Basmati varieties.
While some viewed the USPTO’s revocation of a major section of the RiceTec patent as a major victory for India, others claimed it was a superficial one, allowing the company to produce and market a genetically modified version of Basmati as “superior Basmati rice” under a different name. The decision amounts to a sanctioning of RiceTec’s claims that its modifications are not known in “prior art” and have unique genetic characteristics, and are therefore patentable. While public discussion considered whether the patent USPTO granted RiceTec adhered to current patenting norms and the effects on India’s economic export business, the question of whether and how derivative “rice lines” from traditional varieties in the developing world should be patentable by foreign corporations—under the authority of foreign government agencies—was largely ignored in mainstream debate.
Biotech companies like RiceTec, then, are given the go-ahead to profit from thousands of years of evolved, communal growing and cultivation techniques—as in the case of Basmati rice—without having to pay for them. Many critics argue that these stolen technologies cannot be protected as property of any single agent (less a foreign one) and are not patentable. Under this system, the U.S. government provides protection for RiceTec for a technology it is accused of pirating from farmers in developing economies.). This same protection is not afforded to the farmers who created and developed the source product.
RiceTec: Profiting from Derived Knowledge
(by C.P. Chandrasekhar, Macroscan)
Can the USPTO Set Its Own Rules?
Responding to a backlog of patent applications, cramped resources and alleged abuse of the system, USPTO recently introduced a new set of rules to the patent application process. (See Suggested Reforms section). While the agency claimed the rules will prevent abuse and allow for a more effective review process, critics countered that they would unfairly inhibit innovators seeking patents. In August 2007 an inventor sued the agency, claiming that the agency’s proposed rules regarding continued applications (those re-filed after a rejection) would cause him to lose potential right to inventions that result from his original work. The case was later joined by pharmaceutical giant GlaxoSmithKline.
In the October 31, 2007, Tafas v. Dudas
decision, the U.S. District Court for the Eastern District of Virginia ruled in the plaintiffs’ favor, issuing a preliminary injunction against the USPTO. Then in late March 2008, the court threw out the USPTO rules, saying it had overstepped its authority. USPTO Director Dudas has said that the agency is still considering whether it will appeal the decision.
The central issue at hand in Tafas is whether the USPTO is legally authorized to make substantive changes to the patent application. As a federal agency with a statutory mandate, there is some discrepancy as to how far it can go in deciding the nature and limitations of its own operations. The U.S. District Court’s decision established that the agency’s rule making was substantive and not procedural, and that it had therefore overstepped its statutory authority. The decision marked a major blow for the agency, and a huge victory for patent lawyers and the biotech industry—arguably one of the biggest beneficiaries of the current system.
The patent process for the biotech industry is inherently different from others, argue its proponents, because the discovery and development process require a different time frame: Drugs can’t be changed after an application is submitted, but information—as from clinical trials—may be added along the way to provide supporting evidence. Applications are usually approved, then, based on lab data. For competitive reasons, the biotech industry will often submit applications before the completion of clinical trials, which “prove” the drug’s curative powers and ensure its approval. In the years it takes to complete most clinical trials, competitors can move in on the discovery. Unlimited claims and continuations have allowed drug companies to protect discoveries and secure patents for a wide range of clinical applications for the same drug.
The USPTO maintains that the proposed changes will prevent abuses of the system and help address the massive backlog (the agency reportedly received more than 467,000 applications last year, about 30 percent of which were continuations—ending in a backlog of about 760,000 applications. See Proposed Reforms section). Legal scholars have argued that pharmaceutical companies take advantage of the system, submitting applications before drugs have been thoroughly researched in order to hold competitors at bay.
Determining the Value of Infringements
Congress is also considering overhauling the patent process, but with a focus on curtailing infringement lawsuits. Current practices for seeking legal damages for patent infringement involve a court considering the value of the entire product when a small part of the product infringes on a patent. New legislation proposed in the Senate would allow judges to base damages only on the value of the infringing part. A version of the Bill was passed in the House, but has stalled in the Senate—largely due to opposition from massive biotech corporations and the Bush administration.
Amid rising patent suits and hefty settlements, many big tech and electronics companies have also gotten behind the changes, hoping to change the current plaintiff-friendly practices.
On the other side, opponents of the legislation, including individual inventors and inventor collectives, as well as behemoth pharmaceutical companies with large patent portfolios and patent cases pending, claim it will make small companies or individual inventors vulnerable to infringement from large companies.
The Bush Administration opposes changes that “limit a court’s discretion” in a patent case, but would reportedly support ones that make it easier for courts to identify factors involved in the infringement (according to Department of Commerce).
Court rejects Patent Office's new rules (by Diane Bartz, Reuters)
In recent years the USPTO has introduced a number of substantive rules that would result in significant changes to the patent application process. Proposed changes mainly aim at tightening application restrictions and cleaning up a bureaucratic backlog. In FY 2007, the agency received upwards of 467,000 patent applications, ending with a backlog of 760,000. To catch up, it invested in more than 2,400 new patent examiners in the last two years, bringing the total to 6,000. Speaking to the press, agency head Dudas put the number in perspective by estimating that, in order to get wait times for applications down to 18 months within a few years time the Office would have to hire another 7,500 examiners for the next two years.
So-called “continued applications” are those re-filed, typically after a rejection. Observers cite widespread abuse of the system by patent-seekers who file continuations in an effort to expand the scope of an existing patent to cover new technologies. The agency claims it is inundated with a backlog of continued applications, which prevent it from reviewing new ones. Proposed reforms include stricter limits for continued applications, shifting the burden of proof to the applicant, and a limit to the number of “claims” that can be filed in a particular patent application, unless accompanied by an “Examination Document.”
Critics claim the rules will adversely impinge on innovators’ rights. Legal challenges brought against the agency recently resulted in a U.S. District Court decision striking down the USPTO’s rulemaking because the Office had overstepped its statutory authority. (See Debate).
At the Congressional level, there have been substantial agency reform bills advanced in both the House and the Senate. Both the proposed Senate Bill and a version that passed in the House in September 2007 would require all patent applications to include a minimal prior art search and a justification for why the application should be considered. During the 110th Congress, legislators will have an opportunity to intervene, rule for or against the reforms, and further determine the rulemaking authority of the agency. If USPTO manages to get support from the legislature, it will overrule the recent ruling against them in Tafas v. Dudas. (See debate).
The current version of the Senate Bill doesn’t provide for USPTO substantive rulemaking authority for continuation and other changes, but the House version does.
Key among factors determining Administration support for the reforms is the issue of damages in patent infringement. The Senate bill proposes a limit on damages in patent infringement cases. The Bush Administration opposes these measures but has recently intimated that it might accept an amended version.
From USPTO: Rulemaking
Open Source Approach
Amid calls for patent law reform, and while the agency’s authority over rulemaking in the application and review process awaits attention from Congress, the USPTO initiated an interactive “Peer-to-Patent” web project that lets users review and weigh in on patents.
First Action Interview
USPTO Launches Pilot To Expedite Patents: The First Action Interview pilot program will allow certain patent applicants a chance to resolve issues one-on-one early in the process
(by K.C. Jones, InformationWeek)
Annual Budget: $1.8 billion
United States Patent and Trademark Office
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