Page 72 - Akerman | 2016 Guide to Doing Business in Florida

classes may also be patentable. Discoveries falling outside these categories
are not patentable, unless some other statutory provision applies.

In addition to being within one of the four classes and being fully disclosed, a
utility invention must also be:

(i) “novel,” in that it was not previously known to or used by others in the
United States or printed or described in a printed publication
anywhere, i.e., disclosed entirely within a single reference document;

(ii) “non-obvious” to a person having ordinary skill in the relevant art, i.e.,
disclosed entirely in parts in two or more reference documents; and

(iii) “useful,” in that it has utility, actually works, and is not frivolous or
immoral.

A design patent may be obtained for the ornamental design of an article of
manufacture. A design patent offers less protection than a utility patent,
because the patent protects only the appearance of an article, and not its
construction or functional aspects of the article.

A plant patent may be obtained by anyone developing a new variety of
asexually reproduced plant, such as a tree or flower. Some plants may also
be protectable with a utility patent or under the Plant Variety Protection Act,
administered by the United States Department of Agriculture.

In order to determine novelty and, hence, patentability of an invention, it is
often useful to search the records of the internet and the U.S. Patent and
Trademark Office. Within the USPTO, one may examine all U.S. patents,
many foreign patents, and a large number of technical publications. A patent
search is customarily performed by a patent attorney or by an individual with
similar technical training, sometimes referred to as a patent agent. A patent
attorney or patent agent may be asked to render an opinion regarding the
patentability of a particular invention. An inventor can then make an informed
decision as to whether to proceed with the cost of an actual patent
application.
(d) Patent Application Process. A U.S. patent application must be filed with the
U.S. Patent and Trademark Office. A complete patent application includes
four elements. First, the application must include the “specification.” The
specification is a description of what the invention is and what it does. The
specification can be filed in a foreign language, provided that an English
translation, verified by a certified translator, is filed within a prescribed period.
Second, the application must include an oath or declaration. The oath or
declaration certifies that the inventor believes himself or herself to be the first
and original inventor. If the inventor does not understand English, the oath or
declaration must be in a language that the inventor understands. Third, the
application must include drawings, if essential to an understanding of the
invention. Fourth, the appropriate fee must be included.

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