U.S. Patent Law
Patents are more important than ever in our high technology society since they protect one of our most important assets: our ideas. Yet few people have a good understanding of patents. To remedy this, let’s explore a number of frequently asked questions about patents. To provide context, we’ll answer these FAQs with respect to a hypothetical situation in which a baker has created a new recipe for blueberry muffins, and would like to make some money from her invention.
Imagine a world without blueberry muffins. In this world, people enjoy eating different types of muffins, including apple muffins, bran muffins and cranberry muffins. But blueberry muffins simply don’t exist.
One day, while preparing to make a batch of cranberry muffins, Mrs. Baker’s son brings home a basket of blueberries he picked from a nearby bush. In a flash of inspiration, Mrs. Baker says: “Eureka! I think I’ll try replacing my cranberries with blueberries, and see if I can make some blueberry muffins instead!”
So Mrs. Baker asks her son to pick the blueberries off their stalks and wash them thoroughly. She then stirs the blueberries into her muffin batter, and puts them into the oven for 20 minutes. When she pulls them out, the aroma is mouth-watering, and she and her son each devour three blueberry muffins!
Knowing a good thing when she eats it, Mrs. Baker invites some of her friends over for tea, and serves them some of her new blueberry muffins. Her friends love them! Emboldened, she brings a dozen to a local bake sale, and they sell within 10 minutes for $1 each. Everyone thinks they taste delicious.
One of the people who bought one of her blueberry muffins says: “You know, these are so good that I bet you could sell the recipe to a food company. You could probably make enough money to retire!” Mrs. Baker likes that idea, so she stops at the office of her local attorney to ask what she should do.
Mr. Attorney says: “Why don’t we patent the idea? I’ll prepare a patent application. Once you get the patent, we’ll ask the Giant Food Corporation (GFC) if they’d like to buy it from you for a million dollars.” Mrs. Baker loves this idea, so she works with Mr. Attorney to file a patent application on her recipe.
Unfortunately, it turns out Mrs. Baker’s son is a greedy kid. When he learns his mother has filed for a patent and intends to sell it for a million dollars, he insists he should get half of the million dollars because he helped invent the blueberry muffin recipe since he picked and washed the blueberries.
Can Mrs. Baker get a patent on her blueberry muffin recipe? Will GFC buy it from her for a million dollars? Will Mrs. Baker be legally obligated to share the million dollars with her greedy son?
Can a Recipe Be Patented?
We usually think of patents in connection with high-technology inventions. However, Congress has defined the subject matter of patents as including a “process, machine, article of manufacture, or composition of matter”, and the courts have interpreted this phrase broadly to include “anything under the sun that is made by man”, excluding only laws of nature, physical phenomena and abstract ideas.
Thus, Mrs. Baker’s recipe is patentable subject matter. She could claim an invention for a process (“A recipe for making muffins”), an article of manufacture (“A muffin“), or a composition of matter (“A batter”). If she invented a machine to make her muffins, she could claim an invention for a machine.
Can Mrs. Baker’s Recipe Be Patented?
To be patented, an invention must be useful, new and non-obvious. An invention is useful if it operates to perform an intended purpose. An invention is new if it has not been done before. An invention is non-obvious if it would not have been obvious to a person of ordinary skill in the field of the invention.
Mrs. Baker’s blueberry muffins are useful; in fact, people think they’re delicious! Mrs. Baker’s blueberry muffins are also new, since she was living in a world without blueberry muffins until she invented them.
The big question will be whether Mrs. Baker’s blueberry muffins were non-obvious. One could argue that her muffins were only an obvious variation of the apple, bran and cranberry muffins that existed before she made her invention. In response, Mrs. Baker could ask why none of the other thousands of bakers who made millions of batches of muffins before she made her invention ever thought to make blueberry muffins. If the U.S. Patent Office agrees with Mrs. Baker, then her recipe can be patented.
How Does Mrs. Baker Get a Patent?
To apply for a patent, an application is filed with the U.S. Patent Office. The application must include a specification, one or more claims defining the invention’s scope, one or more drawings, and an oath by the inventor. The specification must include a written description of the invention, enough detail to enable others to make and use it, and the best mode of practicing the invention the inventor knows of. The application is eventually examined, and will be issued as a patent if the examiner approves it.
Thus, to get a patent, Mrs. Baker helps Mr. Attorney prepare a patent application describing her recipe for making blueberry muffins in enough detail to allow other bakers to make and use it. They are careful to include any details which Mrs. Baker thinks are important to make the best muffins. After filing the application, Mrs. Baker helps Mr. Attorney respond to any rejections made by the examiner. Once the examiner approves the application, Mr. Attorney pays an issue fee and the patent is granted.
Is Mrs. Baker’s Son a Co-Inventor of the Patent?
Under U.S. law, only the inventor(s) of a patentable invention can get a patent. To determine who is an inventor, one must ask who conceived of the invention. Unless a person contributed to the conception of the invention, the person is not an inventor. Conception refers to the mental part of the inventive act. Thus, a person who merely helps reduce an invention to practice at the direction of the inventor is not himself an inventor. There can be joint inventors, as long as each inventor contributed towards the conception of at least one claim of the patent, and the joint inventors worked in a collaborative fashion.
Mrs. Baker is clearly an inventor of her patent on blueberry muffins. She had the “Eureka!” moment where she had the idea of replacing the cranberries with blueberries to make the blueberry muffins.
In contrast, Mrs. Baker’s son is not an inventor. While he picked and washed the blueberries, he made no contribution towards the conception of the blueberry muffins. The idea to add the blueberries to the batter was entirely Mrs. Baker’s, and her son only picked and cleaned the blueberries at her direction.
Thus, Mrs. Baker’s son is not a co-inventor of her patent, and he has no rights whatsoever in her patent. She therefore has no legal obligation to share any money she might make from her patent with her son.
Will GFC buy Mrs. Baker’s Patent for One Million Dollars?
In the U.S., the patent holder owns the exclusive rights to make, use and sell the patented invention. Whether GFC will agree to pay one million dollars to buy Mrs. Baker’s patent will depend on whether they believe the patent is valid, and how much they value the set of exclusive rights that it provides.
To determine if the patent is valid, GFC will independently assess whether the patent covers patentable subject matter, and if the patented invention is new, useful and non-obvious. While the patent is presumed to be valid because it was issued by the U.S. Patent Office, GFC will believe there’s at least some chance it is not valid because it would have been obvious.
To value the patent, GFC will prepare a business plan in which it calculates the amount of profits that it will make if it buys Mrs. Baker’s patent. Since GFC could exclude any of its competitors from making or selling blueberry muffins if it buys the patent, it could charge a higher price for the blueberry muffins, and make higher profits. If GFC’s analysis shows they could make an extra $10 million in profits if they buy the patent, and that it’s most probably valid, they would likely agree to pay Mrs. Baker her one million dollar asking price since the patent is worth it.
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Disclaimer: The author has retired from the practice of law. This cursory article is for information purposes only, is not legal advice, and does not establish any attorney-client relationship. The author encourages any reader with questions about U.S. patent law to contact an attorney.