Intellectual Property Directions

In a seeming paradox, in the magic world of patent filings it is possible to “enable” your invention - that is, explain to someone of skill in your field how to make or use your invention - and yet not fully meet the written description requirement for obtaining a patent (or at least patent coverage for all aspects of your invention). Orlando Lopez, a partner at Burns & Levinson, was kind enough to provide an example where this was an issue:

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” [**15] In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405, 168 U.S.P.Q. (BNA) 592, 593 (1971). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Admittedly it is rarely the case, but it certainly shows an internal, logical inconsistancy. It seems to me, in this case, that compounds B and C, being enabled for one skilled in the art, should at least be covered by the doctrine of equivalents, assuming the patent was covering a process for making A.

Similarly, I would expect that a separate patent application for compounds B and C, made by this process, would be tossed out as either anticipated or obvious in light of the patent in this case.

In the same vein, had the enabling description for making compound A in this patent been presented in a journal more than a year before filing, would compounds B and C run into the prior disclosure bar? Seems to me it all needs to hang together.

And it certainly will depend on what the patent specification in question is actually trying to cover. If I come up with a new paint in which oxidized metallic flakes provide some new and beneficial property and enable the process of incorporating the flakes uniformly, but I only describe red paint based on iron (known to look red), should my patent bar someone from using oxidized copper flakes to make green paint? I would think/hope it would!

[This example begs another question - could someone else get a patent on the green paint that I enabled but didn't describe? Admittedly it would be dominated by my patent, but it would bar me from making green paint.]

Greg Aharonian of the Internet Patent News Service (patnews@ns1.patenting-art.com) wrote yesterday about a CEO of a reasonably sized technology company who asked of/lamented to his patent attorney about the futility/waste/high-risk of seeking and asserting patents. Here, in a slightly edited form, is that lament.

1. We file a patent application and eventually get it allowed ($5000 to $10000 plus)

2. We sue someone and are subjected to a Markman analysis, which redefines claims and may change the meaning of the words.

• How can we prevent this from having a significant effect during the patent prosecution?
• This process redefines the patent claims to mean something different than what we intended.
• Can we be so specific in the patent specification that removes any latitude from the judge in interpreting the claim language? Define every word in the claim in the specification?

3. Then the claims can be put up for reexamination which seems to disallow most if not all of the claims and takes years to resolve.

• It is outrageous that you go through the process of getting a patent and assume that it is valid and then after years and extreme expense some idiot in the USPTO says “oh sorry but my colleague should not have allowed the patent”!

4. The patent’s validity is then challenged.

• How do we prevent our patents from being declared invalid by some non-scientific judge?

5. How do we file a patent that eliminates these and other problems assuming that infringement is taking place?

• How do we do this at the earliest point in the process?

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These are great questions to discuss with your patent attorney during the patent prosecution process, which is the earliest point in the process where these issues can be forestalled. As a general rule, I suggest instructing him or her to:

• Do a reasonable prior art search (including non-patent prior art). Re-examinations kill patents when new prior art results in an obviousness or anticipation problem.
• Don’t try to be too “cute” with the “patentese”. Writing in straight forward language limits misinterpretation.
• Don’t try to obscure the invention with circumlocutions (see above point). The purpose of the patent specification is to teach; hold up our end of the deal. We’ll live with fact that our competitor understands our invention if it means our patent is strong.
• Write claims that match the breadth of our invention. And write the specification to match the claim wording.

You patent attorney may object; don’t be intimidated or find someone who can be your interface with the patent attorney.

Is your patent attorney unintentionally planting a time-bomb in your patent application? Ever so often in the news these days we hear about the bomb squad being called in, detonating a “suspicious package”, only to declare it was just somebody’s lunch left unattended. So too the strength and validity of your patent is only tested when someone tries to blow it up in court, long after you can make any changes.

Patent attorneys are faced with several conflicting requirements when they draft your patent application. On the one hand, for example, there must be “support” for every part of every claim somewhere in the specification; on the other hand, if there is something in the specification that is not included in a claim, then that element can be deemed “dedicated to the public”.

As another example, a patent specification must teach society the details of your invention in order for you to obtain your temporary “monopoly”, but if your patent never issues, or issues with a limited set of claims, your secrets are now in the public domain.

In response to these conflicting requirements many patent attorneys have adopted certain defensive tactics. One trend I’ve noticed recently is the elimination of any meaningful discussion of how the invention at hand fits into the current state of the art. If you look at patents from a decade ago, they usually started out with introductory material that included the background for the invention (usually a discussion of the limitations of prior patented systems) and an “English-language” description of the invention. After this stage setting, the specification moved into the legalistic, patent-language description of the invention. As a substitute, and to address the “support” requirement, attorneys now essentially parrot back the claims, calling them a “Summary Description” or some such.

I think these patent attorneys are unintentionally building in time bombs.

First, if these paraphrased claims are the only support in the specification for a particular claim then I have to believe that claim will never stand up in court. “Support” for a claim has to mean something that explains or teaches the claim, something which a simple paraphrase cannot do. Attorneys who think they are providing a final defense for an unsupported claims are likely fooling themselves and you in the process.

Second, by not discussing the relative position of the new invention vis-a-vis the prior art you may have made it easier to get your patent allowed… but when push comes to shove - when the bomb squad shows up in the court room - the expensive litigation attorneys will blow your patent up in your face if you “snuck one by” the patent examiner. It’s much better to lay the prior art issues out on the table during examination than to find out years later that you’ve got a whole lot of nothing.

While it is true that an allowed patent has a presumption of validity it is also true that every patent that has been tossed out in court had that same presumed validity; if the patent is protecting a valuable invention, overturning that presumed validity will be worth a lot of legal fees to your infringer/competitor.

Always remember that your goal is (usually) NOT getting a patent. It is getting a competitive advantage in the marketplace. The expense of finding your patent in shreds in the courtroom far exceeds the cost of creating a well crafted and complete patent application.

We all know about the duty of candor - the requirement that we inform the examiner of any possibly pertinent material - but how many of us realize we effectively have a duty to wave red flags for the examiner when we broaden a claim during examination.

Mr. Nouri Hakim thought he had a pretty good infringement case against Cannon Avent Group. His patent covered a leak resistant drinking cup that has a suction actuated valve that passes fluids when a person sucks on the spout but that is sealed when no suction is applied.

Cannon’s leak resistant drinking cup sure matched up to the claims in Hakim’s patent, US6,321,931 - at least it seemed to until Cannon’s attorneys read the “file wrapper”. The ‘931 patent was based on a continuation application that broadened the claims of the original, “parent” application. And Cannon identified a subtle but important limitation to the scope of the ‘931 patent buried in the negotiations between Hakim and the PTO during the prosecution of the parent application.

During the original prosecution Hakim responded to an office action by arguing that none of the prior art references included “a no-spill mechanism having a slit sitting against a blocking element such as is recited in all of the pending claims” (emphasis added). The examiner agreed and allowed all the claims.

After receiving the notice of allowance Hakim filed his continuation application and amended (and apparently broadened) the claims by changing “slit” to the more general “opening”. An accompanying letter stated that the claims were being broadened. The examiner allowed the new claims without further comment.

Getting back to the infringement suit, Cannon’s attorney’s successfully argued to the district court and the CAFC that simply informing the patent examiner that the new claim term (”opening” instead of “slit”) was broadening was not equivalent to rescinding the disclaimer that separated the invention from the prior art references.

While everyone agrees that a continuation application can be used to recapture claim scope given up during the original prosecution, the CAFC  said “…the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited“. Thus it is not enough to say “I’m broadening my claims”; you must also say, “I want to change my argument about why the broader claims should still be allowed in spite of the prior art”.

In effect, you must take the responsibility for pointing out to the examiner how your changes relate to the previous actions; the “default assumption” is that any argument you made earlier is still in effect during the continuation prosecution. After all, “continuation” means still part of what went before.