Patents - Fundamentals of Industrial Chemistry: Pharmaceuticals, Polymers, and Business - page 37

A person loses their right to a patent if the invention was patented or
described in a printed publication in this or a foreign country or in public
use or sale in this country more than one year prior to filing the patent
application. This is true even if it is the inventor who discloses the invention.
For example, if Joe invents a new chemical and publishes a paper in J.A.C.S.
and then 13 months later decides to file a patent application on the new
chemical, he is not entitled to a patent. Similarly, consider the situation where
Joe has a formulation for a new mosquito repellent and sells it for more than
a year, to make sure that the market is profitable enough to warrant legal and
filing fees. He has lost his right to a patent.
The second criterion, usefulness, is typically not problematic. However,
useful is not a synonym for widely adopted or commercially viable. So an
invention may not be commercially attractive but could still be useful.
The third criterion, that the invention must be non-obvious to one skilled
in the art, can be more difficult. The term “skilled in the art” means someone
having ordinary skill in the same area. If the invention is a new chemical
synthesis, it means a synthetic chemist. As an extreme example of obvi-
ousness, consider the following hypothetical situation. It is well known that
phenol substituted with any of methyl, ethyl, butyl, pentyl, and hexyl groups
is useful to prevent hair-loss. No one has ever tested or described propyl
substituted phenol. Joe decides to try propyl phenol and it works similarly
to the other previously described alkyl phenols. Joe's neighbor is a physicist
and tells Joe that he thinks this is surprising. Joe is not entitled to a patent
because a skilled chemist would recognize propyl as an obvious variant.
Rarely is the obviousness criterion so straightforward and it is important
to consider the invention in light of what was known prior to the invention.
Many non-obvious things seem obvious after the fact.
It is the inventor who applies for a patent. When more than one person con-
tributes to the idea conception, they are each inventors or collectively they
are co-inventors. When working for a company, often the company's legal
department files the application on behalf of the inventor. Typically, the inven-
tor assigns the patent rights to their company and the company pays filing
and other fees, such as maintenance. The assignee is the owner of the patent
rights and is a distinct entity from the inventor. On occasion, there is confusion
about inventorship. An inventor invents or discovers a process, composition,
machine, manufacture, or improvement thereof falling within the scope of one
or more claims of a patent application. Idea conception and contribution to
the idea conception are essential. The manager of the person who conceives
of the idea and the person who carries out experimentation to demonstrate the
idea are not co-inventors unless they contribute to the idea conception.
A patent application is filed with the USPTO. The inventor files the
application. The inventor can do this independently but it is more common