Intellectual Property Directions

Dennis Crouch, a associate professor of law at University of Missouri has compiled a table of the time to first office action for a variety of technology centers. That is, how long does it take the patent office to get back to you with their (no doubt obviousness-based) rejection of most or all of your claims.

For the technology centers he lists the time ranges from a low of 1.7 years for Manufacturing Devices to a high of 3.7 yearsfor a couple of un-important technologies - fuel cells, batteries, and solar. Now remember, this is the time between filing and your first office action. It can easily take another year before your patent issues and during all that time you have been unable to enforce your patent rights. Heck, you didn’t even know if you were going to have any patent rights.

Mind you, if you filed a provisional application first, then your patent application has been public after 0.5 years from the filing date of the regular application, so you fuel cell companies out there have had your proprietary information hanging around the street, so to speak, for a little over 3 years and counting.

I always tell my clients that the patent system is supposed to be a deal between the inventor and society. You get limited time control over your invention in exchange for teaching the rest of us all those juicy details. This bargain breaks down, I think, when your teaching is published 3 or 4 years before you know that you have control over your invention, if you ever do get that control. During that time your competitors have had the chance to build on your proprietary information to your disadvantage.

It makes one wonder if it’s still worthwhile applying for a patent in a fast moving technology area.

One of the biggest knocks on the the patent system is that it has evolved into a system that inhibits innovation rather than fostering it as the Constitution intended. Consider the dual edge sword of performing a prior art search. If you don’t do one, you may invest in developing a product only to be shut down when it infringes someone’s patent; if you do one, find a potentially applicable patent but proceed anyway, you could be found liable for treble damages for willful infringement. A formal opinion from a patent attorney was almost a mandatory “insurance” policy against these treble damages.

I recently attended an “Executive Briefing” at the local office of Foley & Lardner on the topic of last year’s Seagate decision - a decision that seems to have brought some relief to companies building products similar to a patented product.

Before Seagate it seemed the only way to prove that you were not acting with disregard for others’ rights was to pay significant sums of money to a patent attorney to get a thick document telling you why you likely would not be infringing. That was a document you could point to as proof you fulfilled your “duty of care.” For a small company you might be kissing your year’s profit goodbye.

In the Seagate decision, the rules changed. Now there is a two-step test.

Step 1: the patentee (not the infringer) must show that you acted despite an “objectively high likelihood” that you were infringing a valid patent. If you and your attorney can point to reasonably plausible defenses then there is no “objectively high likelihood” and you’re off the hook for willfulness.

Step 2: the patentee (again, not the infringer) must demonstrate that the objectively high risk was obvious to or demonstrably known by the infringer.

So what does that mean to most of us? Although not yet tested in the courts it would appear to me that a heart-to-heart discussion with your attorney about any potentially blocking patents you turn up would allow you to determine if there are “reasonable”, “plausible” or “non-frivolous” arguments to support non-infringement or invalidity. That discussion is likely to cost less than the opinions of pre-Seagate. Of course, discuss this strategy with your attorney.

What’s your opinion on opinions?

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.

In Oz, everyone except Dorothy ignored the man behind the curtain. In your patent, ignoring the means by which you implement various claimed functions can leave you without a heart, a brain, courage … or a valid patent. To have a valid patent you must, in effect, prove that you have actually developed a working invention.

“Means-plus-function” [MPF] claims are attractive to many inventors because they have a broader scope, at least in the sense that they cover the function and not the specific hardware implementation for performing that function:”control means for automatically operating said valves”. But when you include MPF claims you must take care that you describe in your specification some structure, some mechanism, some explicit embodiment by which the claimed function is performed. If you don’t include this structure your claims may be deemed invalid for indefiniteness. The risk for many of us is being too close to the technology. What is a given for us may be inadequate to the patent legal process.

In a recent CAFC appeal, Biomedino LLC tried to defend their MPF claim based on a box labeled “Control” in a figure and the statement in the specification that ”[the process] may be controlled automatically by known differential pressure, valving and control equipment”. In the Court’s mind this case begged the question of whether

“…sufficient corresponding structure [is] disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggests that known methods and equipment exists?” [emphasis added]

Answering this question in the negative, the Court pointed out that the law requires the specification to actually disclose at least one way for the function to be accomplished and not leave it to the assumed knowledge of the archetypal person-of-skill-in-the-art.

Many inventors fall into this trap these days when it seems every device is controlled by embedded processors. While software can certainly be the means by which a function is performed, simply referring to “software” is not an adequate description of how you are performing a given function. Yes, it’s probably true that someone could write the software to perform the function, but unless you give more details of what’s inside the software “box” you are likely to find your patent invalidated.

Groucho Marx said, “If we had some eggs we could have eggs and ham, if we had some ham.” The CAFC said, “If you have some functions you can have some means-plus-function claims, if you actually have some means”.