Intellectual Property Directions

Inventors (abetted by their patent attorneys) always seem to want to get a broader patent than their invention deserves. Some inventors think they can achieve this goal by throwing extra words into their patents and hoping those extra words will solidify their infringement suits under the doctrine of equivalents. The DOE has its place, but if you spend time grasping at these last straws you may end up dropping your whole bundle.

I was recently reviewing a patent to see what it probably covered (you never know what a patent really covers until you’re in court and hear the claim construction). The claims were relatively straight forward; the invention was a widget connected to a framish and whosit. The specification, however, was filled with throw-away comments like: “Other designs are possible.” ”Other dimensions can also be used.” “Still other methods may be used to provide….” “Still other configurations are possible.”

Even worse, there are statements that say, in effect, the invention may comprise different components and any of the components “can be excluded” or replaced by some other, un-named component. None of these alternatives, all of which might very well affect function, are described in any specificity, nor are they enabled or claimed.

It appears that the inventor is hoping that his otherwise narrow claims will be magically broadened by mentioning that all these alternatives are conceptually possible to implement. However, he may have just put himself between a rock and hard place. Judges are not likely to be swayed by these throw-away comments when doing claim construction, so where is the extra protection going to come from; the only extra protection will come from a continuation.

But if the inventor really believes these alternatives fall under the doctrine of equivalents as being insubstantially different from his claimed invention, then he can’t use a continuation to claim these as unique inventions; if he believes them to be substantial, then he has most likely lost the right to a patent on them under the rule of thumb that described but unclaimed matter is dedicated to the public.

Admittedly, he could claim that the alternatives are substantially different but that they were not adequately disclosed in the specification to support a claim. He could, under that view, have filed a continuation-in-part in which he added the written description and enabled these alternatives… but I’d bet his prior throw-away comments would be the basis of an obviousness objection from today’s patent examiners.

When it comes to all the possible alternatives to your invention, I suggest foregoing the slim, slim advantage you might get under the DOE by including a mere mention of alternatives for the stronger stronger advantage of getting a second patent under the CIP process.

The only way to add substantive material to your patent application is to file a Continuation-In-Part and many people believe a CIP “inherits” the priority date of the parent. It does… up to a point. When a claim is based in whole or in part on the new material added in the CIP, the priority date for that claim will be the filing date of the CIP. PowerOasis, a company that tried to sue T-Mobile for infringement, found out that out the hard way. Not only did they lose the infringement battle, but the bulk of their claims were declared invalid as having been on public sale more than a year before PowerOasis’s CIP was filed.

PowerOasis’s initial patent covered a “vending machine” for supplying either or both 110V power and telecommunications access to travelers. Their invention was a solution for all those businessmen sitting on the floor at airports, just to be near an outlet, or balancing laptops next to “dataphones” (payphones with dataports). Basically they designed a box with a switched power outlet and a switched telephone line (for your dial-up modem), where the switches were controlled by a payment mechanism. And their original patent reflected this vending machine model. Over the next few years they filed a number of continuation/CIP applications through which they convinced the PTO, through some verbal jujitsu that I find incredible, to allow the elements of their “vending machine” to be distributed over a wide area and to include configurations identical to an ISP operating internet hot spots.

At some point, PowerOasis decided that anyone “vending” access to the internet on a pay-as-you-go basis was infringing their patents. An obvious big fish was T-Mobile. They had just one minor problem; It is undisputed that more than a year prior to filing the CIP that covered the allegedly infringing systems, T-Mobile’s MobileStar Network contained all of the same features that form the basis of PowerOasis’s allegation that the T-Mobile HotSpot Network infringed its patents.

PowerOasis tried to avoid summary judgment by pointing out that their issued CIP patent had a presumption of validity and that in any case the priority date for the CIP could be traced back to their original patent’s filing date.

The Court of Appeals for the Federal Circuit, CAFC, tossed out both these arguments. Firstly, the Court said, the presumption of validity afforded an issued patent only extends to material evaluated by the PTO. Prior public use, for example, is not usually investigated by the PTO. Thus, the Court said, the burden of proof (that their patent was valid) fell on PowerOasis’s shoulders, not on T-Mobile (to prove it invalid).

Secondly, the Court reinforced what we already knew; each claim has a priority date that corresponds to when the supporting specification material is filed. The dependent claims in the CIP that described the alleged T-Mobile infringement were based on the new material added in the CIP and could not rely on the filing date of the original patent.

Herein lies the difference between a continuation and a continuation-in-part. In a continuation application, no (substantive) new material is allowed so the added claims can all share the priority of the original application. In a CIP, new material may be added so each claim must be examined to see when it’s supporting material was filed; a CIP claim is given a priority date corresponding to the filing date of its supporting material.

While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.

To take any other position opens the patent system to the grossly unfair practice of writing CIP claims that turn your competitors into infringers after the fact.