Patent Law Basics: A Brief Guide for Graduate Students, Future Inventors, and Everyone in Between

By Lexus Tatge, Director of IP Education

In my first post, we dove into career opportunities in patent law for scientists—roles like technical specialist, patent agent, and patent attorney. These positions often follow a progression within firms that handle patent prosecution and litigation. Start as a technical specialist, pass the patent bar to become a patent agent, and maybe, just maybe, law school is in your future. For some, it's a career transformation; for others, it's a natural extension of their love for science and innovation. This post, we're taking a step back to look at the foundations of patent law to catch people up to speed. Whether you're a senior grad student exploring your next steps, a newer student sizing up your options, a PI curious about protecting your unique process or invention, or anyone in between, this guide will arm you with the basics to get started.

So, let's begin with the United States Patent and Trademark Office (USPTO). Frankly, anything with a five-letter acronym seems intimidating IMO, but that tends to be government agencies specialty. And fair warning: the world of patent law is packed with acronyms—USPTO, AIA, 35 USC—you name it. But don't worry, I am here to break it down for you so that you do not need to pull out the searchable MPEP.

A quick history of USPTO: Conception, a fire, a few congressional acts, and millions of inventions

The USPTO wasn't always the bustling, innovation hub it is today. Its story began in 1788 with the ratification of the U.S. Constitution, which included the Intellectual Property Clause. This clause granted inventors exclusive rights to their discoveries, for a limited time of course. Fast forward two years, and Congress passed the first patent statute. A three-member board, including future president Thomas Jefferson, was tasked with reviewing patent applications. Essentially establishing the patent examiner role (one of the careers mentioned in the first blog).

By 1836, Congress established the Patent Act of 1836, introducing a numbering system for patents. Unfortunately, a fire later that year destroyed the USPTO and many of the earlier patents, now called the X-series. By 1842, the USPTO had rebuilt, and was home to the nation's first federally funded museum, showcasing inventions from around the world for people to come and look at. The USPTO still has a museum, and I had the opportunity to go there over the 4th of July this year, I suggest putting that on your itinerary next time you're in D.C.

Key Milestones in Patent Law:

1930: The Plant Patent Act allowed for the patenting of asexually reproduced plants.

1952: Congress simplified patent law with Title 35 of the U.S. Code (35 USC)—essentially the "CliffsNotes" version of patent regulations.

2011: The Leahy-Smith America Invents Act (AIA) was signed and essentially changed who was able to be granted a patent. Pre-AIA, the first inventor, even if they were not the "first-to-file" had dibs on the patent. Then the AIA introduced a "no-dibs" system so whoever files first, regardless of if they are the first/original inventor, is granted priority in the application process.

And that leads us to 2024… Where the 12 millionth patent was granted in June this year to a team of inventors in California for "Labeled Nucleotide Analogs, Reaction Mixtures, and Methods and Systems for Sequencing," a chemical reagent for use in DNA sequencing. 

So, with that history under our belts, what makes a patent a patent? Well, that is all information that can be found in the MPEP, Manual for Patent Examining Procedure. This is the manual studied and referenced for the patent bar exam. A very light read with mere 3,000+ pages, it is what everyone in the patent law field navigates to ensure they are following the correct procedures when applying for (or examining) a patent application.

At its core, a patent application must be tested on these three things:

1. Novelty: The invention must be new. If the invention was available to the public for more than a year before the patent application filing date, it is no longer novel, and therefore cannot be granted a patent. So, if you're looking to patent something, be aware of your timeline between telling people about your invention and actually filing that application.

2. Utility: It needs to be useful. It must be able to be recreated from the text disclosed in the patent application. If someone, what the USPTO refers to as a POSITA (Person of Ordinary Skill In The Art), is not able to figure out how to use it based on your instructions, you might have to figure out better utility for your invention.

3. Non-obviousness: It can't be something any expert in the field could've come up with over their morning coffee. It also can't be that you took one paper published in the field, and another paper published in the field, and put those together to make a "new" invention. If it was obvious that the outcome of your invention would yield predictable results, you may need to think again.

One of my favorite case-law examples is the '858 patent from Crocs, the shoe company (Crocs Inc. v. International Trade Commission). A TLDR version of the case is essentially someone decided that Crocs was an obvious leap from two other patents combined: (1) the Aqua Clog (base of the '858 shoe); and (2) the Aguerre '249 patent. It was thought that the strap (what changes the shoe from a glorified slipper to the greatest invention of all time) on the Croc was obvious; however, Crocs fought back by saying that it was "not obvious." Crocs argued that making the foam strap come into contact with the foam base ensured that the strap stayed in place when moving around, and that this small change was innovative. Funny enough, it was actually stated in the Aqua Clog patent that they would never put a strap on the shoe because it would deform and stretch. Therefore, this was a non-obvious win for Crocs!

So, in the end, why does any of this matter? Whether you're thinking about transitioning to a career in patent law or just want to understand how the process works, knowing the basics can go a long way. It is kind of the main reason I created the Intellectual Property Education Director role and applied to the biotech club in the first place. I didn't feel there were many opportunities as a graduate student to learn about patent law. There are no classes on it, and information is slim unless you're actively seeking it out. Everything I wrote about in this post is knowledge I gained once I began studying for the USPTO registration exam (aka the patent bar exam). If you're interested in patent law but found reading this post a little boring and uninspiring, then patenting (or my writing style) might not be your cup of coffee. However, if the case law was a fun side note and left you wanting to learn more, you might be on the right path toward your future career. In the end, it is a very technical field, but honestly, that's what makes it interesting.

Sources:

https://www.uspto.gov/patents/milestones 

(USPTO history)

https://www.uspto.gov/web/offices/pac/mpep/index.html 

(MPEP)

https://www.bitlaw.com/source/cases/patent/Crocs.html 

(Crocs case law)

Disclaimer: ChatGPT used for editorial and grammatical corrections.