Generating Revenue from Patents – USPTO Patent Licensing

USPTO Patent Licensing Platform

The patent licensing platform aims to bring innovations to market via patent licensing, patent buying or patent selling. The United States Patent and Trademark Office or the USPTO has recently launched an interesting platform to assist patent owners in various transactions including buying of patents or selling of patents. The platform is named Patents 4 Partnerships and the primary purpose of this platform is to make important patent information available to various stakeholders. As an initial goal, the USPTO aims to boost fight against coronavirus by encouraging industry and academic innovators to collaborate and find effective solutions for treatment of Covid-19 through patent licensing.

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Patent Eligibility

As a general practice, patents or potential patent applications that guarantee “technical” features include and give detail backing to the claims that those specialized or technical highlights solve an issue in the prior art. The USPTO patent office procedure describes Section 101 of the U.S. Patent Act stating that whoever innovates or finds any new and valuable procedure, machine, assembling, or composition of matter, or any new and helpful improvement thereof, may get a patent therefor, subject to the conditions and prerequisites of this title. Therefore, the code sets up general classes of patent protection including processes, machines, production, or composition of matter.


The US Patents Act develops what is new in §§ 102 and 103. For instance, § 102 restricts the licensing of creations that were recently revealed or protected, indistinguishably, by others (i.e., requiring novelty considering the prior art) and § 103 disallows the protecting of innovations that were recently unveiled or protected, with just evident differences, by others (i.e., requiring nonobviousness taking into account the prior art). Besides, § 112 of the Patent Act furnishes extra conditions and prerequisites concerning clearness and particularity.


The legal point of reference has held that § 101 contains an implied exemption for laws of nature, natural phenomena, and theoretical thoughts. Patent eligibility related difficulties to programming or software related developments is normally based on the patent covering a theoretical or abstract thought. In 2014, the U.S. Supreme Court decided Alice (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (referring to Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)), which managed whether patent cases coordinated to a computer‐implemented conspire for relieving “settlement risk” were patently eligible under § 101 or were rather attracted to a patent‐ineligible conceptual thought. The Court found that the cases were attracted to the abstract thought of intermediated settlement and that just requiring nonexclusive computer usage neglected to change that abstract thought into a patent‐eligible development.


The legal reason for patent-eligible subject matter in the United States is 35 U.S.C. § 101, which states, whoever designs or finds any new and valuable procedure, machine, assembling, or composition of matter, or any new and helpful improvement thereof, may acquire a patent therefor. Generally, most innovations have effectively fulfilled these necessities. For instance, pharmaceutical mixtures might be viewed as a creation of an issue or an article of assembling. In any case, fitting inside these classes doesn’t require a finding of patentability. U.S. courts have battled to respond to the more troublesome inquiry of whether a specific kind of innovation is in Congress’ examination of the patent framework. The Constitution directs that licenses ought to be allowed distinctly for creations that are in the “useful arts,” and along these lines, a law of nature, a theoretical guideline, a natural phenomenon, or a psychological step is seen as outside of the scope of this reason. 

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Patent Requirements

Initially, the claimed innovation must be to one of the four legal classes. 35 U.S.C. 101 characterizes the four classifications of creation that are considered to be the subject matter of a patent which includes, processes, machines, manufactures, and compositions of matter. The last three classifications characterize “things” or “items” while the main classification characterizes “activities or actions” i.e., developments that comprise a progression of steps or acts that are to be performed. Second, the claimed invention likewise should qualify as patent-eligible subject matter, i.e., the case must not be coordinated to a judicial exception except if the case all in all incorporates extra confinements adding up to altogether more than the exemption. The legal special cases which are additionally called “judicially perceived exemptions” or basically “exceptions” are subject matter that the courts have seen as outside of, or exceptions to, the four legal classifications of development or any invention, and are constrained to digest thoughts, laws of nature and natural phenomena, also counting results of nature.


Fundamentally, the broadest reasonable interpretation (BRI) of the case or the claim be built up preceding analyzing a claim for eligibility. The BRI sets the limits of the inclusion looked for by the claim and will impact whether the claim tries to cover subject matter that is past the four legal classifications or envelops subject matter that falls in the exemptions. 


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Examination of Patents

The patent examiners determine if a claim fulfils the models for subject matter eligibility by assessing the claim. It further represents the means of the subject matter eligibility examination for products and procedures that are to be utilized during assessment for assessing whether a claim is attracted to the patent-eligible subject matter. It is perceived that under the controlling lawful point of reference there might be varieties in the exact forms of the examination for subject matter eligibility that will in any case accomplish a similar final product. The investigation put forward in this advances assessment proficiency and consistency of overall innovations. 

Patent Eligibility Test

In the US laws, 35 U.S.C. 101 dictates four aspects of subject matter that Congress considered to be a valid patent subject matter: systems, instruments, produces, and components of matter. The courts adjudicate that these “four categories together describe the exclusive reach of the patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” An assertion that BRI includes statutory and non-statutory elements absorbs subject matter that is not competent for patent safety and is for the non-statutory subject matter.


The subsequent step includes judicial exception, wherein it covers identifying that a claim is within the ambit of the four dictated elements of patentable subject matter declared in 35 U.S.C. 101 (i.e., systems, instrument, produces, and components of matter) in Step 1 does not void the eligibility evaluation, as assertions for nothing surpassing abstract notions (like an arithmetic principle or equation), natural occurrence, and natural law is not appropriate for patent protection.


Like the different points in the eligibility examination, the trial of this point should be formulated after inferring what the applicant has developed by surveying the whole request and construing the assertions pursuing their acceptable understanding. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. 


Patent examiners must inspect each claim for eligibility individually, established on the particular elements recited within. Claims must not be judged to automatically stand or fall with alike claims in an application. For example, a declaration can be ineligible as it is proposed to a judicial anomaly without resulting in considerably more, but another assertion subject to the initial can be capable as it narrates more components that do amount to relatively more. 

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