Intellectual Property Directions

Greg Aharonian, patent establishment gadfly and publisher of the email “Internet Patent News Service” (request subscription), raised an interesting question in today’s email:

Is there ANY benefit from have a Background/Summary section for your patent application?  Should/must they be included?

The answers, according to Greg, are A) there is no benefit to the applicant and B) he doesn’t think the MUST be included. Quoting from Bradley Wright of Banner & Witcoff, Greg notes:

- the courts may read limitations into the claims based
on statements in the Summary

- the courts/PTO may use your comments about the prior
art against your invention

- the courts may read limitations into the claims based
on your comments about the prior art

So Greg says let’s eliminate the risk by not having a Background or Summary section. He supports this with the observation that he has not been able to find any statutory requirement for those sections.

But I disagree.

At the most basic level, I sure don’t want to be the (losing) test case whose patent is invalidated in court for lack of a  background or summary. Greg is probably correct when he says that the patent examiner never reads those sections and/or will allow a patent that lacks them. But so what? Your patent examiner doesn’t check to see if you’ve made a public disclosure or prior offer to sell, but either of those actions can lead to invalidation in court too. Nor does the examiner check that your provisional application has adequate support for your utility claims, perhaps leading you to lose your priority date on those claims. So, to be on the safe side, pending a court ruling to the contrary, I’m going to work on the basis that background and summary material must, one way or the other, be included in my patent applications.

Of course, that begs the question of exactly how much substantive material needs to be in those sections. What should go in the Summary?

One approach I’ve written disparagingly about is to put a copy of the claims as the summary, with the argument being that this “summary” guarantees that no claim can ever be disallowed for lack of support in the specification - I think this is misguided logic that is as circular as defining a word using the word itself.

As far as the summary goes, if you (or your attorney) can write the detailed description of your invention, you should certainly be able to write a “harmless” summary description that serves the teaching function that the specification is supposed to do.

As far as the background section goes, I’d keep it short and sweet to lay the groundwork for the summary and detailed descriptions to follow but I’d avoid discussing the significant prior art. That is, use the background to lay out the problem, only discussing prior (attempted) solutions that are far away from your invention’s technology.

That’s my summary judgment.

For academics, it’s “publish or perish”. For inventors, I’m hoping that the recent “Bilski” fiasco will start a mantra of “process or perish”, where I mean that inventors will realize that there is a difference between a patentable process and a (questionably) patentable “method”. If the PTO and the courts continue along the current path, I’ll be celebrating the “death” of so-called methods patents and method claims tacked on to apparatus patents.

It has become fashionable these days to file patent applications with “method” claims, either added to apparatus claims or standing alone. The patent law allows patents for “any new and useful process, machine, manufacture [manufactured article], or composition of matter” where I think processes should actually accomplish some result. “Methods” fall under the rubric of a process but have really become a bastardization of what a process should mean. In the extreme, an entirely new class of patent, the business method patent, developed but as the Supreme Court has just ruled, pure business methods are unlikely to comprise patentable subject matter.

But you are probably not involved in business method patents; instead you deal with apparatus or software patents. While software patents are often lumped with business method patents because they both deal with the intangible, software by definition is the series of steps needed to accomplish a result and are proper processes. It is the “method” claim that is overused.
Most apparatus patents these days have separate independent method claims tacked on. If your apparatus invention is, say, a spectrometer, then your patent attorney is sure to want to add a claim starting off with: “A method of measuring the spectral distribution of a light source comprising the steps of….” where what follows is a list of steps.

The list of steps usually reads something like:

Step1 –          Providing [the N key elements of the apparatus described in the patent].
Step N

Step N+1      Causing light from a light source to enter [the apparatus]

Step N+2      Recording the response of [the apparatus]

Although currently allowed as a “process”, I do not believe these “methods” are indeed processes as intended.
A patentable process is a unique recipe for doing something, independent of the patentability of the apparatus used in the process. Thus, in the field of optical coatings for glass, you might develop a unique time-temperature profile for depositing standard coating materials, in standard coating chambers, and reasonably say you have a patentable process.

There is not, generally, a “unique process” in operating a patentable apparatus in accordance with its normal operational procedures. Hence a majority of methods claims that are tacked onto apparatus patents are bogus. Such claims, if held enforceable when the infringer IS using the patented apparatus, are superfluous at best; the use of the patented apparatus for doing anything is an infringement. On the other hand, if the infringer is NOT using the patented apparatus, these claims are giving patent status to a concept [the concept being the use of an unpatented apparatus, in its normal operational mode, to achieve some result].
Of course, some methods claims in apparatus patents are appropriate – if you have developed a new class of apparatus, method claims describing the operational principles behind your device will help to protect your market from clever infringers who may try to work around your apparatus claims.

So I believe there is a method to the PTO’s madness and that method claims that cover how to operate an apparatus should be considered unpatentable subject matter, along with “business method” claims. Reserve you method claims for processes that really produce something or to cover a new class of apparatus.

Who knew! The keys to the jail are held by the Librarian of Congress! The jail in question is the monopoly lock on iPhone/iPad applications that Apple has been trying to assert using The Digital Millennium Copyright Act. As you probably know, you have to modify your iPhone - to “jailbreak” - in order to load applications that aren’t provided through Apple’s iTunes store. You also have to jailbreak your phone to use a cell phone carrier other than AT&T.

Under the terms of the The Digital Millennium Copyright Act it is illegal to circumvent digital rights management schemes. However, also included in the act, is the option for the Librarian of Congress to exempt certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works. In the most recent ruling, the Librarian has exempted six new classes material from this prohibition.
The two classes that apply to jailbreaking are:

(1) Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.

(2) Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network.

Where I have added the emphasis. Strictly read, these rules only apply to “telephone handsets” and not to the iTouch or iPad, but I doubt that Apple will pursue owners of these devices now that they’ve lost the iPhone jailbreak war - but then again, Apple is pretty arrogant.

Official Statement

Although it is your patent attorney’s job to keep abreast of changes in the rules at the various patent offices around the world, it is the inventor’s job to at least be aware of the general issues so that he or she understands what the attorney is trying to do. So consider this post just a “heads up” notice of some changes that went into effect in April 2010.

Divisional applications: A basic rule all around the world is 1 invention = 1 patent. This makes sense since the purpose of a patent is to fence off a particular invention for you sole profit and it would be hard to figure out if someone was infringing when more than one invention was described in the patent. Sometimes we find it convenient to file an application that, intentionally or not, covers more than one invention. When this occurs we usually file one or more “divisional” applications to get back to the one invention per patent rule, where a divisional application is just the original specification with new claims directed to the additional inventions.

Under current US and the old European rules you could (voluntary) divisional applications years after your original filling date. Under the new European rules, all voluntary divisional applications must be filed within 2 years from the first office action, but not earlier than October 1, 2010. This means that “old” patent applications have a relatively short window for filing any new divisional applications. So don’t be surprised if your patent attorney calls you and wants to discuss the need for getting these applications filed.

Early Reply to Objections: In an apparent move to keep the process moving forward, the new rules require you to reply within one month to objections raised in search reports generated by the European Patent Office when you file under the Patent Cooperation Treaty (”PTC”).  Here in the US we are used to being able to delay responses to the patent office for as long as 6 months. So again, don’t be surprised when your attorney presses you to answer his questions quickly - he’s just trying to keep your application from being “abandoned”

There have been other changes too, but particular changes are likely to affect the communications you have with your patent attorney very soon.