Patent Law: A Handbook for Congress

"A patent gives its owner the exclusive right to make, use, import, sell, or offer for sale the invention covered by the patent. The patent system has long been viewed as important to encouraging American innovation by providing an incentive for inventors to create. Without a patent system, the reasoning goes, there would be little incentive for invention because anyone could freely copy the inventor’s innovation.

Congressional action in recent years has underscored the importance of the patent system, including a major revision to the patent laws in 2011 in the form of the Leahy-Smith America Invents Act. Congress has also demonstrated an interest in patents and pharmaceutical pricing; the types of inventions that may be patented (also referred to as “patentable subject matter”); and the potential impact of patents on a vaccine for COVID-19.

As patent law continues to be an area of congressional interest, this report provides background and descriptions of several key patent law doctrines. The report first describes the various parts of a patent, including the specification (which describes the invention) and the claims (which set out the legal boundaries of the patent owner’s exclusive rights). Next, the report provides detail on the basic doctrines governing patentability, enforcement, and patent validity.

For patentability, the report details the various requirements that must be met before a patent is allowed to issue. These requirements include the following:

  Patentable Subject Matter. The claimed invention must be directed to one of the statutorily defined categories of patent-eligible subject matter.

 Definiteness. The patent claims defining the invention’s legal boundaries must be sufficiently clear.
 Written Description. The specification must adequately describe the invention.

 Enablement. The specification must enable a person in the field of the relevant technology to make and use the invention.

 Novelty. The invention cannot be the same as something known in the “prior art” (i.e., public knowledge in the field of relevant technology at the time of invention).

 Nonobviousness. The invention cannot be an obvious extension of the prior art..."
Patent law