Intellectual Property Directions

 Everybody wants broad patent claims; have you ever pushed your patent attorney to include something in a claim that you really haven’t quite figured out how to implement just to “cover all the bases”? If so, you may be treated like a crash test dummy when you try to enforce your patent.

Back in the late 1980’s Automotive Technologies International had an important idea - how to make an accelerometer to trigger side-impact airbags (front impact sensors don’t respond quickly enough) - and obtain a patent to protect it. Twelve years later it sued a laundry list of automobile companies for infringement. During the “claims construction” portion of the trail, ATI pushed the court to include both mechanical and electronic sensors in the scope of all the claims. [BAH NOTE: presumably this was done because the alleged infringing sensors were electronic]. Having won that battle, ATI now proceeded to lose the war with a flawed specification.

ATI fell into a familiar trap. Having invented a fast acting mechanical accelerometer (in which a hinged plate swings to close the electrical contact), they recognized that certainly there must be an electronic way to sense the movement of the mass and didn’t want to lose out on protecting their market to someone with an electronic solution. So they described the concept (viz,. electronic instead of mechanical sensing of mass movement) and hoped (probably) that they could make a doctrine-of-equivalents argument against whoever came up with an electronic sensor, by pointing to the section of the specification in which they clearly recognized that an electronic sensor was an equivalent approach.

Unfortunately for ATI, when your whole invention is involved, when you spend a page of text and 5 figures describing the mechanical approach, when your “equivalent” approach is described in only one short paragraph and one “conceptual” figure (ATI Electrical Sensor Figure) you are not going to convince anyone that you were doing anything but speculating that the electronic version could be made to work.

The specific legal point being argued was whether ATI had fully “enabled” its claims. Enablement - the requirement that you describe your invention in enough detail so that the rest of us can make your invention with “undue” experimentation - is closely related to, but separate from, reduction-to-practice. RTP is what defines a completed invention (inspiration -> perspiration -> RTP) while enablement is the description of the completed invention that you include in your patent specification. Enablement is what you share with society in exchange for getting your limited monopoly.

With hindsight we see that ATI tried to obtain protection for a concept, not an invention. They should not have tossed in the description and figure for their concept of an electronic side impact sensor. Instead, they should have focused their R&D efforts to complete this next generation sensor and filed an application on it in its own right.

How about you? Have you tried to stretch a patent application to cover something you only believe will work? It’s a shortcut that might get you a patent that fails you when the legal hit comes along - side or front impact.

This entry was posted on Saturday, January 19th, 2008 at 4:11 pm and is filed under Patent Quality, Patent Strategy, Patentablility. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.