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.

Last month on LinkedIn an individual asked (and I’m paraphrasing here) whether an expired provisional application could affect (presumably for the better) the priority date of a regular patent application filed after the expiration of the provisional. That’s kind of like asking if you can make ice cream from soured milk. The answer, of course, is no; even worse, including a expired provisional application by reference in an application seems like a good way to ensure you lose the priority battle in an interference procedure.

First, let’s remember why you might file a provisional application in the first place. A provisional application is a temporary filing used to hold your priority for getting a patent - your place in line, so to speak - for getting a patent, while you consider the pros and cons of moving ahead with the process of prosecuting the patent application for that particular invention. For example, you might want to see if you can find some capital to build your business or you might be working on an even better approach to your product so putting a one year hold on the process can save you from prosecuting a patent you don’t ultimately want. By filing a provisional application you get that extra year without worrying about losing your patent rights because of public disclosures or because someone else has independently come up with the same invention during that year.

Getting back to the question posed on LinkedIn. Expired means expired (see 4/29/10 post), so your expired provisional application has lost its “place holding” value. You could always include a copy of your provisional filing as a reference in your regular application, but only bad things can accrue from that. If the provisional app has material that you are not claiming in the regular application then you are making public some material that was otherwise still confidential. Additionally, by including it and not claiming it you run the risk of dedicating it to the public.

If, on the other hand, your regular application covers all the material in your provisional application and you find yourself in an interference procedure, the admission that your invention was ready for patenting more than a year before the priority (filing) date of your regular application gives ammunition to the other party. Here in the US, the patent (if it is granted) goes to the first person to conceive of the invention AND diligently reduce it to practice, where the filing of the patent application is really the indicator that you have finished the reduction to practice. Thus, without the priority date of the provisional application on your side, you are in the difficult position of arguing away a year or more of delay in filing.

About the only argument I could imaging is poverty: “I couldn’t afford the filing fees”. But you’d probably have to produce evidence to that effect. You certainly would have a better chance of winning the interference if your regular application included new material (viz., beyond the provisional app) and did not reference the expired (NON-PUBLIC) application explicitly.

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.