United States patent requirements.

Abstract

Research work with hybridomas and with genetically engineered microorganisms can result in developments with near-term commercial potential. I understand that the economic potential of this technology coupled with a change in government patent policy means that many of you who are with universities or not-for-profit research organizations may be considering patents for the first time. Patents, of course, can play a key role in obtaining a financial return for the researcher or his organization. The most important requirement for patenting does not appear in any of the provisions of the United States Code relating to patents. Without question the fundamental requirement for the successful protection of any meaningful development is that the inventor and his attorney work closely together. Chakrabarty is only a year old (1). The patent protection that will be available is evolving and will challenge the combined imagination of inventors and their patent attorneys. Full communication between an inventor and his patent attorney to provide the proper perspective with regard to each development in light of the prior art can reap the harvest of a patent with the type and breadth of claims that such development deserves. As a corollary, a researcher should be familiar with at least the basic principles of the patent law so that he can contribute to the patenting process. A little knowledge is not a dangerous thing when it comes to researchers understanding patent law. Chakrabarty and its holding that man-made microorganisms (genetically engineered microorganisms or hybridomas) are patentable subject matter within the contemplation of the U.S. Patent Law clearly provides an important and useful tool for the protection of inventions in this segment of technology. Nevertheless, other more conventional forms of patent protection also remain available. Those forms, including claims to the method of employing a microorganism or a method of utilizing a product produced by a microorg nism at times will provide even broader protectio than a claim to a microorganism itself. This will be touched on again later. The requirements for patents relating to microorganisms spring from the underlying nature of a paten . A patent is a limited monopoly, which is awarded in return for a disclosure of the invention. An invention must be useful, it must be new in the sense that it did not exist or had not been done before, and it must be nonobvious to one killed in the art-that is, it must be something that would not be obvious to an average researc er in the field. The inventor gets a monopoly for seventeen years and in return the public-at-large will be able to practice the invention that is disclosed in the patent after the expiration of the patent. A patent also is said to spur others t develop noninfringing alternatives. The patent application contains a specification in which the invention is described and also con-