IEEE Power Electronics Magazine - March 2023 - 76

Patent Reviews
by Trishan Esram
Patent Law:
A 30,000-Foot Aerial View
O
ne of the enumerated powers
granted to Congress by
the U.S. Constitution is " [t]o
promote the progress of science and
useful arts, by securing for limited
times to authors and inventors the
exclusive right to their respective
writings and discoveries. " U.S. Constitution,
Article I, Section 8, Clause
8. A more straightforward read of
this clause is that Congress has the
power to confer, for limited times,
exclusive rights to inventors for
their discoveries and authors for
their writings. Accordingly, Congress
enacts legislation governing patents
for inventors and copyrights for
authors-thus, patent law and copyright
law. This column focuses on
patent law, which is codified in Title
35 of the U.S. Code ( " 35 U.S.C. " ).
An inventor may keep his or her
invention secret and hope to benefit
from it indefinitely. This is the rationale
behind trade secret protection
(e.g., Coca-Cola's Coke formula or
KFC's original recipe). But this inventor
has no right to exclude someone,
who independently conceives of the
same invention, from making, using,
offering for sale, selling, or importing
the invention. The inventor may
obtain such exclusionary rights [35
U.S.C. § 271(a)] for a limited time if he
or she files an application (35 U.S.C.
§ 111) for a patent at the United States
Digital Object Identifier 10.1109/MPEL.2023.3234750
Date of publication: 3 March 2023
Patent and Trademark Office
(USPTO)-the federal agency established
by Congress to issue patents
on behalf of the government-and
the USPTO grants him or her the patent
for his or her invention.
There are three types of patents:
utility, design, and plant. Utility patents
are what most people have in
mind when talking about patents and
are likely more relevant to engineers
reading this column. Utility patents
may be granted to " [w]hoever invents
or discovers any new and useful process,
machine, manufacture, or composition
of matter, or any new and
useful improvement thereof " (35
U.S.C. § 101). Hardware-related inventions
typically fall under machine or
manufacture, and software-related
inventions under process. For a utility
patent, the exclusionary rights last
for 20 years from the date of filing the
application [35 U.S.C. § 154(a)(2)].
When the patent expires, the invention
is deemed to be part of the public
domain for anyone to use freely.
To be clear, a patent does not
grant an inventor the right to use his
or her own invention, but grants him
or her the exclusionary rights, which
he or she may decide to enforce or
not. An inventor does not have to use
his or her invention covered by his or
her patent to exercise the exclusionary
rights. On the other hand, an
inventor may choose to use his or her
invention without seeking a patent,
but assumes the risk of infringing
76 IEEE POWER ELECTRONICS MAGAZINE z March 2023
someone else's patent that covers the
invention. It is important to note that,
in the U.S., if two or more inventors
independently conceive of the same
invention at different points in time,
the first inventor to file an application
for the invention will obtain the
rights if granted a patent, regardless
of whether she was the first one to
conceive of the invention. For this
reason, it is important to not delay filing
a patent application.
After an application for a patent
has been filed at the USPTO, it undergoes
examination by an official
known as an examiner. The examiner
determines whether the application
meets all the pertinent provisions of
the law and merits a patent being
awarded (35 U.S.C. § 131). For example,
under 35 U.S.C. § 112, the examiner
checks if the appl icat ion
adequately describes and clearly
claims the invention. Importantly, the
examiner determines if the invention
is patent-eligible under 35 U.S.C.
§ 101 and patentable under 35 U.S.C.
§§ 102 (novel) and 103 (nonobvious).
For the invention to be novel, it must
not be identical ly disclosed or
described in a prior patent, publication,
or other material available to
the public-altogether often referred
to as " prior art. " To be nonobvious,
the invention must not have been
within the capabilities of a person
having ordinary skill in the art pertaining
to the invention before the filing
date of the invention.
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