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 http://travel.state.gov/passport/services/stats/stats_890.html (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 http://www.uspto.gov/go/taf/us_stat.htm (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 . 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. 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. 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. 20 07. Intellectual Property: