The Basics of Patent Law

Patent law grants inventors the exclusive right to use, manufacture, or sell their invention for a limited time. The Constitution gives Congress the power to secure this exclusivity for inventors by enacting patent laws.


Patents can protect tangible scientific inventions or intangible inventions like coding algorithms or business practices. The law requires that an invention be novel and nonobvious to qualify for protection.

Subject Matter Eligibility

In general, a product claim (e.g., a computer system or a computer-readable medium) and a process claim (e.g., a method for managing personal behavior) may both recite mental processes. However, the Federal Circuit has held that a claim to a method of performing a mental process is directed to an abstract idea where the claimed subject matter is “the basic, long-prevalent, nontechnical concept underpinning the activity.” The method claims in Mortgage Grader did not sufficiently integrate this abstract idea into a practical application to overcome the markedly different characteristics analysis in Prong Two.

Similarly, a claim to a product that is a natural or naturally occurring substance, law of nature, or an abstract idea can be rejected as non-statutory subject matter in 35 U.S.C. 101 if it fails to satisfy Prong Two. As discussed in MPEP SS 2105, the Supreme Court’s decisions have clarified that products created through human ingenuity and intervention such as cloned organisms or hybrid plants are not automatically eligible because they are human-made. The Supreme Court in Myriad and Alice have held that these types of synthetically created products must incorporate markedly different characteristics from their naturally occurring counterparts to overcome the product of nature exception.

The Supreme Court has also made clear that a judicial exception need not be old or long-prevalent and that even newly discovered judicial exceptions can be patent eligible if they are used in novel ways. For example, the cloned organisms in Dolly and Roselin were considered to be eligible because they differed from their donors in phenotypic characteristics but not in their genetic makeup.


Claims are a key part of your patent application. Together with the description and drawings, they define what your intellectual property rights cover. If someone infringes your patent by making or selling something with the same elements as those defined in your claims, you can sue them.

In general, claims should be as concise and clear as possible. The USPTO and the courts will interpret them based on their content, context and meaning in relation to prior art. However, it is also important to remember that IP law requires that your claims be sufficiently broad to cover the invention that you want to protect. This is a balance that we help you strike with our patent examiners in the patent office, and that judges in court will consider in litigation.

Each claim begins with an introduction that names the invention and may detail its use. This is followed by a transitional phrase that connects the introductory statement with the various components of the invention that are claimed to be new or improved. The independent claim then lists the elements. Dependent claims, which follow the independent claim and further define the independent claim by limiting the scope of protection, are often included as well.

Process claims, which identify the steps involved in a process and exclude competitors from using the same steps, are also common. Some independent and dependent claims are grouped together to form special types of dependent claims called “combination” claims. These combine older and newer parts of the invention in a single claim to make it easier for a patent examiner or a judge to understand the invention.


A patent grants the owner a legal right to exclude others from making, using, offering for sale or selling and importing into the United States for its defined term any invention covered by a valid claim. The right also extends to the method of making and using the invention. The right is granted in exchange for a full public disclosure of the invention.

Inventions must meet several criteria to be patentable. The subject matter must be new or novel, must be non-obvious and must be credible as useful. New or novel means that the invention is significantly different from existing ideas, inventions or products. This does not exclude incremental improvements that are based on known technology. Non-obvious means that the invention is not predictable by a person with ordinary skill in the field of the invention. This is sometimes referred to as the “patentability bar.”

Members may exclude from patentability inventions the commercial exploitation of which would violate public order or morality, or if necessary for the protection of human, animal or plant life or health or to avoid serious prejudice to the environment.

SS102 of the patent statute serves a gatekeeping function, ensuring that only truly innovative technologies are awarded patents. The promptness requirement of novelty prevents inventors from receiving a patent for an invention that was previously in the public domain and requires that inventors file patent applications promptly.


Patent infringement occurs when an entity makes, uses or sells a patented invention without the express permission of the patent holder. The scope of a patented invention is outlined in the claims of a patent, and patent holders can bring infringement actions against unauthorized parties to stop the activity and receive compensation for it. A patent infringement action typically alleges either direct or indirect infringement. To prove direct infringement, the plaintiff must show that the defendant directly made, used or sold a product covered by the patent. Indirect infringement can occur when the plaintiff shows that the defendant induced someone else to make prohibited uses of a patented invention. Contributory infringement can occur when a party supplies a direct infringer with a component that aids in creating a patented product. To qualify as a contributory infringer, the defendant must know that the component would be used to create a patented item and have no substantial non-infringing use.

In order to successfully pursue a patent infringement lawsuit, the plaintiff must first be able to prove ownership and validity of the patent. Proof of ownership usually includes the official documentation provided by the United States Patent and Trademark Office assigning the patent to the plaintiff. Then, to be successful in proving infringement, the plaintiff must also prove that the defendant committed willful infringement. Willful infringement involves intentional disregard for another party’s patent rights and can encompass both direct and intentional copying as well as continued infringement after notice of the violation.