Intellectual Property Rights

U.S. Patent Process

A patent protects an invention, which can be an object (i.e., a computer mouse) or a process (i.e., a method for affixing seasoning to potato chips). By the Supreme Court's ruling, anything that is “a product of human ingenuity” is patentable, unless it is covered by other areas of intellectual property protection, thus you can patent a genetically modified organism or a specific new material (such as a polymer or new chemical admixture). Most countries use the “first to file” patent system, wherein the patent is granted to the first party filing for it, even if another can prove he invented it first. The United States is one of the few countries to use the first-to-invent system, which gives the benefit of the doubt to the first to file (senior party), but allows for interference proceedings (or priority contest) by a subsequent applicant (junior party) who feels they can prove they were the first inventor and are entitled to the patent. There can be multiple junior parties, which might be the case when, for instance, many research teams are working on the same engineering problem—a common occurrence in nanoscience, where there are so many common goals.

Often, the junior parties may be unaware that the senior party has filed. The interference proceedings are held by a panel of patent judges, of the U.S. Patent and Trademark Office, a Commerce Department agency. The burden of proof lies with the junior parties, and must demonstrate the conception date of the invention and the inventor's diligent reduction of the invention to practice.

Because of the importance placed on “first to invent,” it is possible in the United States to file a “Disclosure Document” describing an invention before filing for a patent. The purpose is to provide credible evidence of who first conceived of an invention (the disclosure document may be filed before the invention is sufficiently developed to file for patent protection). In the United States, for example, should an invention be disclosed publicly (for instance, by being described in a journal article or during a presentation, in such a way that a technically knowledgeable person could understand and use the invention), there is a grace period of one year to file for a patent application to protect rights to the invention. However, in Europe, Australia, Japan, and many other countries, there is no such grace period, and public disclosure may mean loss of the right to patent protection for the invention.

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