Gale Encyclopedia Of American Law 3Rd Edition Volume 7 P45 docx

in the management and control of the partner-
ship, contributes services to the partnership, acts
as a general partner, or knowingly allows her or
his name to be used in partnership business.
However, “safe harbors” exist in which a limited
partner will not be found to have participated in
the “control” of the partnership business. Safe
harbors include consulting with the general
partner with respect to partnership business,
being a contractor or employee of a general
partner, or winding up the limited partnership. If
a limited partner is engaged solely in one of the
activities defined as a safe harbor, then he or she
is not considered a general partner with the
accompanying potential liability.
Except where a conflict exists, the law of
general partnerships applies equally to limited
partnerships. Unlike general partnerships, limited
partnerships must file a certificate with the
appropriate state authority to form and carry on
as a limited partnership. Generally, a certificate of
limited partnership includes the limited partner-
ship’s name, the character of the limited partner-
ship’s business, and the names and addresses of
general partners and limited partners. In addi-
tion, and because the limited partnership has a set
term of duration, the certificate must state the
date on which the limited partnership will
dissolve. The contents of the certificate will vary
from state to state depending on which uniform
limited partnership act the state has adopted.

Other Forms of Business Entities
The primary benefit of a partn ership as a
business entity is pass-through taxation.
Changes in tax treatment applying to other
forms of business entities have made the general
partnership less attractive. A business may form
itself as a
LIMITED LIABILITY COMPANY and enjoy
limited liability similar to a corporation while
being taxed like a general partnership. Partners
in other forms of partnerships, such as limited
partnerships and limited liability partnerships,
are not exposed to liability in the same manner
as a general partner in a general partnership.
For these reasons, many businesses avoid
forming general partnerships and instead use
another form of business entity.
FURTHER READINGS
Gregory, William A. 2001. The Law of Agency and
Partnership. 3d ed. St. Paul, MN: West Group.
Hamilton, Robert W., and Jonathan R. Macey. 2003. Cases
and Materials on Corporations, Including Partnerships
and Limited Liability Companies. 8th ed. St. Paul, MN:
West Group.
Hynes, J. Dennis, and Mark J. Loewenstein. 2005. Agency,
Partnership, and the LLC in a Nutshell. 3d ed. St. Paul,
MN: Thomson/West.
Moye, John E., ed. 1999. The Law of Business Organizations.
5th ed. Albany, NY: West Legal Studies.
Partnerships, LLCs, and LLPs: Uniform Acts, Taxation, Drafting,

Securities, and Bankruptcy. 12th ed. Vol. 1. 1996. Phila-
delphia: American Law Institute–American Bar
Association Committee on Continuing Professional
Education.
CROSS REFERENCES
Joint and Several Liability; Limited Liability Company;
Limited Liability Partnership; Limited Partnership.
PARTY
Any person involved in a transaction or proceed-
ing. A group of voters organized for the purpose of
influencing governmental policy, particularly
through the nomination and election of candidates
for public office.
Plaintiffs and defendants are parties in
lawsuits, for example. They have the right to
make claims and defenses, offer proof, and
examine and cross-examine witnesses at trials.
They can pu rsue appeals after unsatisfactory
judgments if they satisfy designa ted criteria.
In the United States, the Democrats and the
Republicans make up the two major national
political parties.
CROSS REFERENCES
Democratic Party; Republican Party.
PARTY OF THE FIRST PART
A phrase used in a document to avoid repeating
the name of the persons first mentioned in it.
For example, a contract may involve
someone named John Doe, who will be referred
to as “party of the first part” after the initial use

of his name. Someone else who is party to the
contract, mentioned after John Doe, would be
referred to as “party of the second part.”
Commonly accepted better practice is to use,
for example, “Doe” or “Buyer” or “Seller”
rather than these awkward constructions.
PARTY WALL
A partition erected on a property boundary, partly
on the land of one owner and partly on the land
of another, to provide common sup port to the
structures on both sides of the boundary.
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
428 PARTY
Each person owns as much of a party wall as is
situated on his or her land. The wall is subject to
cross-easements—reciprocal rights of use over the
property of another—in favor of each owner for
the support of his or her building or for the
maintenance of the wall. A party wall can also be
owned by adjoining tenants pursuant to a
TENANCY
IN COMMON
, orthewallcanbelong entirely to one of
the adjoining owners, subject to an
EASEMENT or a
right in the other owner to have it maintained as a
dividing wall between the two tenements.
Creation
A party wall is ordinarily created by a contract
between the adjoining owners, by statute, or by

prescription.
ADJOINING LANDOWNERS can enter
into a contract to build a party wall. The parties
can agree that the wall is to be located on land
owned entirely by one of them or that it is to
stand partly, usually equally, on both parcels.
Under a typical arrangement, one party builds
the wall and the other contributes to its
construction. The parties can also agree that an
existing dividing wall is to become a party wall.
Statutes authorizing the construction of a
party wall by one of two adjoining owners when
the line between the properties is vacant
embody the
COMMON LAW and have been upheld
as a constitutionally valid exercise of the
POLICE
POWER
of a state. These statutes are subject to a
STRICT CONSTRUCTION since they permit the taking
and permanent occupation of a portion of land.
When a wall between adjoining buildings
has been continuously and uninterruptedly used
as a party wall by the respective owners for a
period of time set forth by statute, a prescriptive
right to use the wall arises.
A party wall can also be created when the
owner of building s that stand on adjoining lots
and share a common wall, which forms a part of
each building, conveys the lots to different

persons. Each owner acquires title to one-half
the wall and an easement for its support as a
party wall in the other half. This rule applies
even though the deeds are silent concerning
the rights of the parties in the wall. The result is
the same when one of the lots is retained by the
original common owner.
Duration
A party wall that is constructed without
any reference to a time limitation implies
permanency. A wall built as a result of an
agreement loses its character as a party wall when
the parties rescind, or cancel, the agreement.
Although the title to one-half of such a party
wall, which is jointly owned by adjoining land-
owners, cannot be waived or abandoned, a party
wall easement can be extinguished when the
party entitled to it renounces his interest.
The easement of support of adjoining
buildings by the party wall ends when the wall
becomes unfit for its purpose or is so decayed as
to need rebuilding from its foundation. When
the buildings are accidentally destroye d, the
easement ends, even though a portion of the
wall, or the whole wall, remains standing.
Manner of Use
A party wall is for the mutual benefit and
convenience of both owners. Each adjoining
owner has the right to its full use as a party wall
in the improvement and enjoyment of his

property. Neither owner can use the wall in a
manner that impairs the other’s easement or
interferes with his or her property rights.
An adjoining owner is not entitled to extend
the front wall or rear wall of his building
beyond the center of the party wall. In addition,
an adjoining owner cannot extend the beams of
her building beyond the center of the wall.
Neither party can attach window shutters,
exhaust pipes, anchor rods, or other projections
or fixtures over the adjoining premises, even if
the projection does not actually damage, or
interfere with, the rights of the adjoining owner.
An easement does not give either owner a right
to construct and maintain a roof or cornice that
extends beyond the party wall and over the
property of the adjoining owner.
Row houses in the
Georgetown area of
Washington, D.C.,
share a wall in
common, or a party
wall. Whether the
wall is owned jointly
or wholly by one
tenant, each party is
entitled by easement
to enjoy full use of the
wall—on his own
side.

ALAN SCHEIN
PHOTOGRAPHY/CORBIS.
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3
RD E DITION
PARTY WALL 429
By common usage, a party wall has come to
mean a solid wall. Unless an agreement exists
between the adjoining property owners to the
contrary, neither has a right to maintain win-
dows or other openings in the wall unless they
are necessary for air and light.
A party wall can be used by the adjoining
owners for the construction and maintenance of
chimney flues and fireplaces. Both parties are
entitled to use a flue built into the middle of the
wall, although the lower part of it is located
wholly in the other owner’s half of the wall.
Neither owner of a party wall has a right
to maintain a sign on the other side of the
wall, but either has a right to do so on his or her
own side.
Destruction and Rebuilding
Ordinarily neither of the adjoining owners has the
right to destroy or remove a party wall, but if a fire
or other casualty causes the wall to become useless
to either owner, it can be removed.
In a number of states, even though a party
wall is sufficient to support existing structures, an
adjoining owner can replace it with a stronger
wall to support a new structure requiring greater

reinforcement. The owner must replace the wall
within a reasonable time without damaging the
property of the adjoining owner.
Either party can replace a party wall that is
dangerous to life or property or insufficient for
the support of existing buildings. Neither owner
has any right to have a dangerous wall bolstered
by allowing it to rest upon, or be sustained by, the
timbers, walls, or parts of the other’sbuilding.
No obligation is imposed upon either owner
to erect a new party wall to replace a wall that
has been destroyed by some accidental cause,
even if the foundation of the wall remains firm
and sound. When the adjoining buildings are
destroyed and the party wall remains standing,
neither adjoining owner is obliged to recon-
struct her building as it existed.
Addition, Alteration, and Repair
Unless restricted by a conveyance, transfer, or a
party wall agreement, either owner can add to,
alter, or repair the wall. In doing so, the owner
must not damage the adjoining property or im-
pair the easement to which the owner is entitled.
Either party, for example, may increase the
height of the wall, provided the increase does
not diminish its strength. Similarly either party
may underpin the wall and sink the foundation
deeper or increase the thickness of the wall by
adding to it on his own land.
Contribution

In some jurisdictions, an adjoining landowner
who uses a wall built partly on his or her land by
the other adjoining landowner has no duty to
contribute to the cost of construction of the
wall. If there is no evidence of the conditions
under which the wall was built, courts presume
that each person owns as much of the wall as is
situated on his property and has no obligation
to contribute to the other’s wall.
In some jurisdictions, liability might be
imposed by statute. For example, a statute
might authorize one of two adjoining land-
owners to build a wall partly on the adjoining
land and require the other landowner to
contribute, if and when she used the wall in
the construction and support of an adjoining
building; until payment would be made, the
wall would be owned exclusively by the builder.
The obligation to contribute can, of course,
be a provision in the contract between adjoining
landowners, but the agreement need not be
express. It can be implied from the conduct of
the parties, although a contract cannot be
implied from the mere assent by one owner to
the construction of a wall standing equally on
the land of both.
FURTHER READINGS
Jacobus, Charles J. 1997. Real Estate Law. 2d ed. Mason, OH:
South-Western Educational Publishing.
Kraut, Jayson, et al. 1983. American Jurisprudence. Roche-

ster, N.Y.: Lawyers Cooperative.
CROSS REFERENCE
Boundaries.
PASS
Pass is used often in legalese as both a noun and
verb. As a noun, it is a license to go or come; a
certificate, emanating from authority, wherein it is
declared that a designated person is permitted to go
beyond certain boundaries that, without such
authority, he could not lawfully exceed. Also a
ticket issued by a transportation company, legally
authorizing a designated person to travel free on its
lines, between certain points or for a limited time.
As a verb, it means to proceed or be rendered
or given, as when judgment is said to pass f or a
plaintiff in a suit. In legislatur e, a bill or resolution
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
430 PASS
is said to pass when it is agreed to or enacted by
the house, sanctioning its adoption by the majority
of votes. Legally, it also means to pronounce
an opinion, judgment, or sentence, and to sit in
adjudication. Furthermore, to publish, utter, trans-
fer, circulate, or impose fraudulently, as in the
passing of counterfeit money or a forged paper.
PASSIM
[Latin, Everywhere.] A term frequently used to
indicate a general reference to a book or legal
authority.
In modern legal writing, the citation’s

volume, publication name, and page number
are preferred to passim as a general reference.
However, passim can be useful in a brief’s index
of authorities to show that a given authority is
cited throughout the brief.
PASSPORT
A document that indicates permission granted by a
sovereign to its citizen to travel to foreign countries
and return and requests foreign governments to
allow that citizen to pass freely and safely.
With respect to
INTERNATIONAL LAW, a passport
is a license of safe conduct, issued during a war,
that authorizes an individual to leave a warring
nation or to remove his or her effects from that
nation to another country; it also authorizes a
person to travel from country to country without
being subject to arrest or detent ion because of the
war.
In maritime law, a passport is a document
issued to a neutral vessel by its own government
during a war that is carried on the voyage as
evidence of the nationality of the vessel and as
protection against the vessels of the warring
nations. This paper is also labeled a pass, sea-
pass, sea-letter, or sea-brief. It usually contains
the captain’s or master’s name and residence; the
name, property, description, tonnage, and desti-
nation of the ship; the nature and quantity of the
cargo; and the government under which it sails.

A passport is also a government-issued
document that indicates nationality for purposes
of personal identification, particularly with
regard to border crossing. Following the
SEPTEMBER 11, 2001, TERRORIST ATTACKS,the
DEPARTMENT OF HOMELAND SECURITY began scruti-
nizing travelers’ passport applications more
closely. This increased the length of the passport
application process significantly. In 2005,
Hurricane Katrina hit New Orleans and washed
out the New Orleans passport office, a major
hub in processing passports. By the summer of
2008, Homeland Security was overwhelmed by a
torrent of complaints from U.S. citizens, whose
travel plans had been bogged down for years,
waiting for approval of their passport applica-
tions. Although the regulations were eased, a
backlog of applications are still awaiting review.
CROSS REFERENCE
Visa.
PAT. PEND.
An abbreviation displayed prominently on an
invention for which an application for a patent
has been made but has not yet been issued.
The term Pat. Pend. provides notice to all
that the inventor has applied to the U.S.
PATENT
AND TRADEMARK OFFICE
for the exclusive right to
make, sell, and use his or her invention.

PATENT
Open; manifest; evident.
In the sale of
PERSONAL PROPERTY,apatent
defect is one that is clearly visible or that can be
discovered by an inspection made by a person
exercising ordinary care and prudence.
A patent defect in a legal description is one
that cannot be corrected so that a new
description must be used.
U.S. Passports Issued, 1978 to 2008
3.2
4.1 4.1
4.2
6.5
7.3
16.2
0
2
4
6
8
10
12
14
16
18
1978 1983 1988 1993 1998 2003 2008
Year
Passports issued (in millions)

SOURCE: U.S. Department of State Web site, “Passport Statistics,” available online
at (accessed on
Au
g
ust 14, 2009).
ILLUSTRATION BY GGS
CREATIVE RESOURCES.
REPRODUCED BY
PERMISSION OF GALE,
A PART OF CENGAGE
LEARNING.
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3
RD E DITION
PATENT 431
Also, a “patent” is the thing protec ted by
intellectual PROPERTY LAW.
CROSS REFERENCE
Patents.
PATENT AND TRADEMARK OFFICE
The U.S. Patent and Trademark Office (PTO) is
a federal agency that grants PATENTS and registers
TRADEMARKS to qualified applicants. Originally a
division of the
COMMERCE DEPARTMENT, the PTO
was named the Patent Office when it was
established by Congress in 1836. In 1975, it was
renamed the Patent and Trademark Office to
reflect its dual function. The PTO is now
organized pursuant to 35 U.S.C.A. § 1 et seq.
Under the direction of the secretary of

commerce, the PTO is run by the commissioner
of
PATENTS and TRADEMARKS, a deputy commis-
sioner, s everal assistant commissioners, and a
support staff of more than 1,000 employees. The
primary job of the commissioners is to review
the merits of patent and trademark a pplications.
Patents are typically issued upon a showing that
a particular applicant has discovered or devel-
oped a new and useful process, machine, article
of manufacture, chemical composition, or other
invention. Trademark protection is typically
afforded to applicants who are seeking to identify
their commercial goods by means of a distinctive
word, name, symbol, or other device.
Trademark applications must be submitted
with a drawing of the proposed mark; patent
applications must be accompanied by a detailed
description of the invention. A filing fee is also
required for both patent and trademark appli-
cations. Applications are reviewed at the PTO
by persons of competent legal knowledge and
scientific ability, though such persons need not
be scientists or lawyers to qualify for the job.
Because the application process often requires a
significant amount of technical expertise and
legal acumen, many appli cants hire
INTELLECTUAL
PROPERTY
attorneys to represent them. The

commissioner of patents and trademarks main-
tains a roster of attorneys and other agents who
are eligible to represent applicants in proceed-
ings before the PTO. Each year the PTO receives
hundreds of thousands of patent and trademark
applications. However, only a fraction of the
applications are approved.
When the application process is completed,
the PTO attaches its seal of authenticity to all
patents and trademarks that have been ap-
proved. Additionally, the PTO publishes the
Official Gazette, a weekly notice of all successful
patent and trademark applications. Old editions
of the Gazette dating back to 1872 are kept at a
library in the PTO. The library contains more
than 30 million documents, including owner-
ship records for both U.S. and foreign patents
and trademarks. The library is open to the
public, and the PTO will furnish certified co pies
of patents, trademarks, and other library
records to any interested person.
Patent applicants who are dissatisfied with a
decision made by the PTO may appeal to the
Board of Patent Appeals and Interferences. The
board consists of the commissioner of patents and
trademarks, the deputy commissioner, an assis-
tant commissioner for patents, an assistant
commissioner for trademarks, and individuals
known as examiners-in-chief. Trademark appli-
cants can appeal adverse decisions to the Trade-

mark Trial and Appeal Board, which has a similar
composition. Applicants who lose before either
the Board of Patent Appeals and Interferences or
the Trademark TrialandAppeal Board may appeal
directly to the U.S. Court of Appeals for the
Federal Circuit, which is vested with jurisdiction
over most intellectual property matters.
In addition to examining the merits of patent
and trademark applications, the PTO performs
studies regarding the development of intellectual
PROPERTY LAW at the domestic and international
levels. These studies have allowed the PTO to
establish a number of programs to recognize,
identify, assess, and forecast technological trends
and their utility to industry. The PTO has relied on
these programs in its efforts to strengthen patent
and trademark protection around the world.
During the 2000s the number of patent
applications increased significantly. In 1988
the PTO received a total of 148,183 patent
applications. In 2008 this number increased to
495,095. By contrast, the PTO issued a lower
percentage of patents compared with the
number of patent applications filed. For in-
stance, in 2003 the PTO issued 189,590 patents
compared with 355, 418 applications filed. In
2008 the PTO issued 182,556 patents compared
with 495,095 applications filed.
Many of the new patent applications come
from the info rmation technology sector. The

increase in applications caused a backlog at the
PTO. In 2007 the
GOVERNMENT ACCOUNTABILITY
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
432 PATENT AND TRADEMARK OFFICE
OFFICE issued a report that concluded the PTO
was not hiring quickly enough to reduce the
backlog of the applications. The PTO agreed
and began to implement a long-term plan to
significantly increase its staff total. As of 2008,
the PTO had a total of 9,518 employees,
including 6,055 who are patent examiners. In
2006, the PTO moved to a new facility at
Alexandria, Virginia. Despite these differences,
the PTO has continued to struggle. As of 2008, a
total of 1,208,076? patents were pending.
Since 1991 the PTO has operated similarly
to a private business, providing products and
services in return for fees that pay for PTO
operations, although increased filings for
patents and trademarks have caused fiscal
strain. The PTO has responded by a variety of
methods, including electronic filing. The PTO
features a user-friendly Website that permits
users to apply for a patent or file a trademark
online as well as checking the status of patents
and trademarks as they move through the
application or filing process.
FURTHER READINGS
Patent and Trademark Office. Available online at http://

www.uspto.gov (accessed May 30, 2009).
U.S. Government Manual Website. Available online at http://
www.gpoaccess.gov/gmanual/ (accessed May 30, 2009).
CROSS REFERENCES
Commerce Department; Intellectual Property; Jurisdiction.
PATENT TROLL
Patent troll is a pejorative term for a person or
company that aggressively pursues patent infringe-
ment suits, usually with no intention of
manufacturing or marketing the patent itself.
The term patent troll was coined in the early
1990s as patent holders aggressively sought
compensation from unsuspecting companies.
Those being sued noticed that the patent holders
had no intention of using or marketing the
technology contained in the patent. Sometimes
the
PATENTS had been purchased from bankrupt
companies or were even leased. The holders often
sought exorbitant licensing fees in return for
dropping their lawsuits. The term has grown in
popularity, as large and profitable technology-
based firms have been sued for alleged
INFRINGE-
MENT
.WithpatentLITIGATION amulti-milliondollar
effort, many firms quietly settle with the patent
holders. Some
INTELLECTUAL PROPERTY lawyers take
umbrage at the term, believing it mischaracterizes

the actions and rights of legitimate patent holders.
FURTHER READINGS
Adleman, Martin, Randall Rader, and GordonKlancnick. 2007.
Patent Law in a Nutshell. St. Paul, Minn.: Thomson West.
Patent Applications and Grants, 1968 to 2008
485,312
185,224
260,889
163,142
151,491
84,272
108,648
70,514
98,737
62,714
0
100,000
200,000
300,000
400,000
500,000
600,000
1968 1978 1988 1998 2008
Year
Number
SOURCE: U.S. Patent and Trademark Office, “U.S. Patent Statistics Chart,” available online at (accessed
on Au
g
ust 14, 2009).
Patent applications

Patent grants
ILLUSTRATION BY GGS
CREATIVE RESOURCES.
REPRODUCED BY
PERMISSION OF GALE,
A PART OF CENGAGE
LEARNING.
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3
RD E DITION
PATENT TROLL 433
Miller, Arthur, and Michael Davis. 2007. Intellectual
Property: Patents, Trademarks and Copyright in a
Nutshell. St. Paul, Minn.: Thomson West.
PATENT WRIT
A court order left open to viewing, in opposition to
a closed writ, which would have it contents hidden
from plain view.
PATENTS
Patents are rights granted to inventors by the
federal government, pursuant to its power under
Article I, Section 8, Clause 8, of the U.S.
Constitution, that permit them to exclude others
from making, using, or selling an invention for a
definite, or restricted, period of time.
The U.S. patent system is designed to
encourage inventions that are useful to society
by granting inventors the absolute right to
exclude all others from using or profiting from
their invention for a limited time in exchange
for disclosing the details of the invention to the

public. Once a patent has expired, the public
then has the right to make, use, or sell the
invention.
Once a pate nt is granted, the invention is
regarded as the
PERSONAL PROPERTY of the
inventor. An inventor’s property rights in an
invention itself are freely transferable and
assignable. Often employees who invent some-
thing in the course and scope of their employ-
ment transfer and assign their property rights in
the invention to their employer. In addition, a
patent holder, or patentee, can grant a license to
another to use the invention in exchange for
payment or a royalty.
Inventors are not required to participate in
the patent system, and they can elect instead to
try to keep their invention a
TRADE SECRET.
However, if the inventor begins to sell his or her
invention or allows the public to use it, others
can study the invention and create impostor
products. If this happens, the original inventor
has no protection because he or she did not
obtain a patent.
There are three types of patents: (1) design
patents, (2) plant patents, and (3) utility
patents. Design patents are granted to protect
a unique appearance or design of an article of
manufacture, whether it is surf ace ornamenta-

tion or the overall configuration of an object.
Plant patents are granted for the invention and
asexual reproduction of a new and distinct
variety of plant, including mutants and hybrids.
Utility patents are perhaps the most familiar,
applying to machines, chemicals, and processes.
Governing Laws
Patent law in the United States is based upon
statutes located in Title 35 of the
U.S. CODE,
including the Patent Act of 1952. The rules of
the
PATENT AND TRADEMARK OFFICE, found in Title
37 of the
CODE OF FEDERAL REGULATIONS, provide
additional authority. In addition, the
GENERAL
AGREEMENT ON TARIFFS AND TRADE
(GATT) has led
to significant changes in U.S. patent law that are
designed to bring some aspects of U.S. law into
conformity with those of the country’s trading
partners. The GATT Implementation Act was
signed into law in 1994, and those of its
provisions that affect U.S. pat ent law began to
take effect in 1995.
Patent Duration
One important change in U.S. patent law
resulting from GATT is the duration of U.S.
patents. Patents were originally given 14-year

terms from the date of issue, until that was
changed in 1861. From 1861 until the imple-
mentation of GATT, the term of a patent was 17
years from the date of issue. Under GATT, all
patents issued after June 7, 1995, have a term of
20 years from the effective filing date. GATT
contained a retroactive co mponent which
provided that all patents that had been issued,
but not yet expired, as of June 7, 1995, would
have a term that is the longer of 20 years from
its effective filing date or 17 years from the date
of issue. The effective filing date is the date on
which the earliest U.S. application is filed under
which priority is claimed. In the United States,
patent rights begin when the patent is issued.
Upon expiration of the term, the invention
becomes public property and is freely available
for use, reproduction, or sale. Patents can be
extended for up to five years under limited
circumstances, including interference proceed-
ings (proceedings to determine the priority of
an invention), secrecy orders, and appellate
review.
Patentable Inventions
The Patent Act provides a broad definition of
what can be patented: any new or useful
process, machine, manufacture, composition
of matter, or any new and useful improvement
thereof. Although these categories of patentable
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION

434 PATENT WRIT
subject matter are broad, they are also exclusive,
and any item that does not fall into one of them
is not patentable.
As defined by the Patent Act, a process is a
method of treating certain material to produce a
specific physical change in the character or
quality of that material. A machine is a device
that uses energy to get work done. The term
manufacture refers to a process whereby an
article is made by the art or industry of people.
A compositio n of matter is a compound
produced from the combination of two or
more specific ingredients that has properties
different from, or in addition to, those sepa-
rately possessed by each ingredient.
An impr ovement is any addition to, or
alteration in, a known process, machine,
manufacture, or composition that produces a
useful result. The right to a patent of an
improvement is restricted to the improvement
itself and does not include the process, machine,
or article improved.
Naturally occurring substances, such as a type
of bacteria or an element, are not patentable. But
a genetically engineered bacterium is patentable.
The law of gravity and other laws of nature are not
patentable. Other abstract princ iples, fundamen-
tal truths, calcu lation methods, mathematical
algorithms, computer programs, and

BOOKKEEP-
ING
systems are not patentable. Ideas, mental
theories, or plans of action alone, without
concrete means to implement them, are not
patentable, irrespective of how revolutionary and
useful to humanity they might be.
However, the 2001 Supre me Court case
J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Intern.,
Inc., 534 U.S. 124, 122 S. Ct. 593, 151 L. Ed. 2d
508 (2001), affirmed that newly developed plant
breeds are patentable subject matter. In an
opinion written by Justice
CLARENCE THOMAS, the
Court said that plants were patentable under the
general utility patent statute. To obtain patent
protection, a plant breeder must show that the
plant it has developed is new, useful, and non-
obvious, and must provide written description
of plant and deposit of seed that is publicly
accessible.
A process that uses a natural law, funda-
mental principle, or mathematical equation can
be patented. For example, in the 1981 decision
of Diamond v. Diehr, 450 U.S. 175, 101 S. Ct.
1048, 67 L. Ed. 2d 155, the U.S. Supreme Court
decided that an industrial process could be
patented in spite of the fact that it depended
upon a mathematical equation and involved the
use of a computer program.

The Diamond ruling upheld a patent to two
inventors for an improved process for moldin g
rubber articles. A patent examiner had previ-
ously ruled against the inventors, finding that
they sought patent protection for a computer
program, which the Supreme Court had
expressly said could not be patented . The
process in question, which was patented, was
developed to calculate with greater accuracy the
amount of time required to obtain uniform
curves in synthetic rubber molds.
As a further requirement for an invention to
be patentable, it must meet three criteria:
(1) novelty (it does not conflict with a prior
pending patent application or a previously
issued patent); (2) utility (virtually any amount
of usefulness suffices); and (3) nonobviousness
(the invention is not obvious to a person of
ordinary skill in the art to which the invention
pertains).
It is not always easy to determine what is an
“ordinary level of skill” or what is “obvious” in
deciding whether an invention meets the crite-
rion of nonobviousness. The U.S. Supreme
Court decision in Graham v. John Deere Co.,
383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545, 148
U.S.P.Q. 459 (1966), provides the analytical
framework in which to decide whether an
invention is nonobvious. Just because all the
parts of an invention may be found in a prior art

does not necessarily make the invention obvious.
Patents may be rejected for nonutility when
their only use is a violation of public morals, such
as a tool that can only be used to commit a crime.
Individuals Entitled to Patents
To be entitled to a patent, an inventor must be
the first and original inventor. Joint inventors
can obtain a patent for a joint invention, but
none of them can obtain a valid patent as a sole
inventor.
U.S. law requires that patent applications be
filed in the name of and signed by the actual
inventor or inventors. If one of the actual
inventors is deceased, then the patent applica-
tion may proceed in the names of the other
inventors, but the application must still prop-
erly identify all inventors. If all of the inventors,
or the sole inventor, are deceased, another
person may file a patent application in their
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
PATENTS 435
place, but only if the filing individual has a LEGAL
RIGHT
to file (such as through descent of the
inventors’ personal property) and the inventors
are still properly identified.
In the United States, the initial right to file
for a patent rests with the actual inventor, even
if that person is an employee who creates the
invention in the course and scope of his or

her employment using employer resources.
However, it is a regular practice for employees
engaged in research leading to patentable inven-
tions to sign w ritten contracts that specify that
they will assign to their employer the exclusive
rights under any patent obtained during the
course of the employment . The employee may
receive a certain percentage of the profits earned
by the invention in exchange for the assignment
of the patent.
Is the Human Genome Patentable?
D
B
eoxyribonucleic acid (DNA) is often called the
“blueprint of l ife.” Between 1980 and the 2009,
companies patented the human genome, which
contains the entire genetic code for the human
species. These efforts have generated controversy,
especially between members of the scientific and
religious communities. In 1980 the U.S. Supreme
Court contributed to the controversy by ruling that
live, human-made microorganisms are patentable
subject matter under the federal Patent Act.
Applying the Supreme Court’srulingtothehuman
species, the U.S. Patent and Trademark Office
(USPTO) extended paten t protection to isol ated and
purified s trands of the human genome.
The U.S. Constitution gives Congress the power
to “promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and

Inventors the excl usive Right to their respe ctive
Writings and Discoveries” (U.S.C.A. Const. Art. I
Section 8, Clause 8). Pursuant to this authority,
Congress enacted the Patent Act of 1952 (July 19,
1952,c.950,66Stat.797).Section101ofthatact
allows a patent to be obtained by anyone who
“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.A. 101). Congress also created the USPTO to
issue patents.
A patent is like a legally protected monopoly
over a specific intellectual property. Patents grant
inventors the exclusive right to make, use, or sell
their inventions for a period of 20 years (35 U.S.C.A.
154). Patent holders can prevent anyone else from
using their in vention, even someone who innocently
infringes on the patent holder’ s intellectual p roperty
rights by subsequently developing the same inven-
tion independently. Alternatively, patent holders
can require that subsequent users pay licensing
fees, royalties, and other forms of compensa-
tion for the right to make commercial use of an
invention. In exchange for th is broad, exclusive rig ht
over an in vention, patent holders must disclose t heir
invention to the public in terms that are sufficient to
allow others in the same field to make use of it (35
U.S.C.A. 112).
The patentability of inventions under U.S. law is
determined by the Patent and Trademark Office

(USPTO) in the Department of Commerce. A p atent
application is judged on four criteria. The invention
must be “useful” in a practical sense (the inventor
must identify some useful purpose for it), “ novel”
(i.e., not known or used before the fili ng), and
“nonobvious” (i.e., not an improvement easily made
by someone trained in the relevan t area). The
invention also must be described i n sufficient detail
as to enable one skilled in the field to use it for the
stated purpose (some times called the “ enablement”
criterion). In general, raw products of nature are not
patentable. DNA products usually become patent-
able when they have been isolated, p urified, or
modified to produce a unique form not found in
nature. The USPTO h as three years to issue a
patent.
As of 2009, the USPTO ha d granted patents
for 4,382 genes, which account for 20 percent of
all human genes. In addition, the office had
granted al most 53,000 patents relati ng to genes,
fragments of genes, and genetic processes and bits
of DNA. The human genome represents a biological
map of the DNA in a body’s cells. The human body
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
436 PATENTS
Government employees, other than those
employed in the Patent and Trademark Office,
are entitled to obtain patents for their inventions
or discoveries. During the period of em ployment
and for one year thereafter, anyone who is

employed in the Patent and Trademark Office is
ineligible to acquire or take directly or indirectly,
except by inheritance or bequest, any rights in a
patent that is issued or to be issued by the office.
Procedure for Obtaining a Patent
To obtain a valid patent, an inventor must make
an application to the Patent and Trademark
Office. Before making an application, inventors
generally make a preliminary patentability
search, a relatively low-cost search of all of the
patents issued in the United States, to determine
if it is feasible to proceed with an application.
Often professional searchers perform these
is made up of roughly one tril lion cells. Every cell
contains 23 pairs of chro mosomes, and each
chromosome houses a single DNA molecule.
The chief DNA task is to provide cells wi th
instructions for building thousands of proteins that
perform most of the body ’ s essential chores.
Proteins c ontain amino acids and e nzymes that
catalyze hormones, biochemical reactions, and
major structural development, a process known as
protein s ynthesis.
The legal controversy surrounding DNA patent-
ing intensified during 1988 when Congress initiated
the Human Genome Project (HGP), a 15-year, $3-
billion research project desi gned to map and
sequence the entire h uman genome. The HGP goal
is to develop diagnostic tests and treatments for
more than 5,000 genetically based di seases. A

rough draft of the entire genome was completed in
June 2000.
In 1995 a group of more than 200 Catholic
priests, Pro testant ministers, Jewish rabbis, and
other religious l eaders gathered in San Francisco at
the annual Biotechnology Industry Organization
conference to attack the laws that have allowed
scientists to patent the DNA of various organisms.
They argued that such laws violate the sanctity of
life by unlocking divine secrets and enabling
scientists to patent God’s creations. Environmen-
talists, who assert that nature is devalued by laws
enabling corporations to reduce a species and its
molecules to ownership , have leveled a variation of
this criticism. They raise questions about what will
happen to society when its most basic notions
about the distinctions betwe en animate and i nani-
mate objects are blurred, as DNA from various
species becomes just another commodity to be
bought and sold on the open market.
Some criticism has also come from the scien-
tific community itself. Certain members of that
community have argued that patenting human
DNA sequences hampers the free flow of informa-
tion necessary to most research projects. They
contend that having to invest time in tracking down
a p atent holder, entering into licensing agreements,
and paying royalties drives up costs, slows
research, and provides disincentives for scientists
to undertake research in the first place. They

observe that two companies, Incyte Pharmaceuti-
cals Inc. and Human Genome Sciences Inc., own
more than half of the U.S. patents on human genetic
structures and thus can exact exorbitant fees from
healthcare companies hoping to conduct research
on those structures as well.
Proponents of DNA patenting point to the
groundbreaking discoveries that have alre ady
been patented, including genetic links to breast
cancer, colon cancer, multiple sclerosis, tuber-
culosis, diabetes, cystic fibrosis, Huntington’ s
disease, and Alzheimer’ s disease. Proponents
maintain that the speed at which these discoveries
were made was dramatically increased by laws
making them a commercially valuable, patentable
invention.
FURTHER READINGS
Lyon, Jeff, and Peter Gorner. 1995. Altered Fates: The Genetic
Re-Engineering of Human Life. New York: Norton.
Scherer, Stewart. 2008. A Short Guide to the Human Genome.
Woodbury, N.Y.: Cold Spring Harbor Laboratory Press.
Shreeve, James. 2005. The Genome War: How Craig Venter
Tried to Capture the Code of Life and Save the World. New
York: Ballantine Books.
CROSS REFERENCES
Intellectu al Property; Patent and Trademark Office.
B
GALE ENCYCLOPEDIA OF AMERICAN LAW, 3RD E DITION
PATENTS 437