Fildes & Outland, P.C.

What Can Be Patented?

What Is a Provisional Application for a Patent?

What Is a Trademark or Servicemark?

What Is a Patent?

A patent for an invention is the grant of a property right to the inventor. In the United States, patents are issued by the U.S. Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, if applicable, from the earliest date on which a related non-provisional application was filed in the United States, subject to the payment of maintenance fees. U.S. patent grants are effective only within the U.S., U.S. territories, and U.S. possessions.


The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. In other words, a patent does not provide the patent owner with the right to practice the claimed invention. Instead, the patent grants the right to prevent others from practicing the claimed invention.

What Is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of a copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, and to display the copyrighted work publicly.


The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.

For newly filed applications and for applications having an effective filing date on or after March 16, 2013, in order for an invention to be patentable it must be "new" as defined in the patent law, which provides that an invention cannot be patented if (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, or if (2) the claimed invention was described in a patent issued under 35 U.S.C. Section 151 (U.S. patent document), or in an application for patent published or deemed published under 35 U.S.C. Section 122(b) (U.S. patent application publication or WIPO published application), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention, unless a specific statutory exception applies for inventor or inventor-originated disclosures. 

If the invention has been patented or described in a printed publication, or if it has been in public use, on sale, or otherwise available to the public anywhere in the world before the date that the applicant effectively filed his/her application, a patent cannot be obtained unless a grace period inventor or inventor-originated disclosure exception or an inventor or inventor-originated prior public disclosure exception applies (one-year grace period exceptions). If the invention is described in a U.S. patent, a U.S. patent application publication, or a WIPO published application that names another inventor, a patent cannot be obtained unless an inventor-originated disclosure exception or an inventor or inventor-originated prior public disclosure exception applies, or if the disclosed subject matter and the claimed invention were commonly owned or were obligated to be assigned to the same person. Thus, if the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has passed, otherwise any right to a patent will be lost. The inventor must file on or before the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.


Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person 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,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” is self-explanatory. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented. It has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.


A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.


Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate commerce or in commerce between the United States and foreign countries may be registered with the U.S. Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate USPTO booklet entitled "Basic Facts about Trademarks," available from the USPTO.

What Are the Novelty and Non-Obviousness Conditions for Obtaining a Patent?

Precision Patent®

Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent. This option was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and an inventor’s oath or declaration are NOT required for a provisional application. A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

The filing date of a provisional application is the date on which a written description of the invention, drawings, if necessary, and the name(s) of the inventor(s) are received in the USPTO. To be complete, a provisional application must also include the filing fee and a cover sheet specifying that the application is a provisional application for patent. The applicant then has up to 12 months from the filing date of the provisional application to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in English, then any non-provisional application claiming priority to the provisional application must have a translation of the provisional application filed therein. See title 37, Code of Federal Regulations, Section 1.78(a)(5).

Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from the filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.


A brochure on Provisional Application for Patent is available by calling the USPTO Contact Center at 1-800-786-9199 or 571-272-1000 or by accessing USPTO’s Web site at http://www.uspto.gov/.