Intellectual Property Directions

I’m not much of a seamstress, so I can’t testify to how many stitches are saved by repairing a tear as soon as it happens, but I do know that investing in a prior art search can easily save you from wasting ten or more times as much on an application for an un-patentable invention. And the ROI can be much much greater if prior art search saves you from infringing someone’s broad but not widely known patent.

In the past couple of weeks I’ve had essentially identical discussions with two clients. In both cases my clients had the foresight (okay, at my urging) to have me do a prior art search to see what was out there BEFORE we started pulling together patent disclosure to send to the patent attorney. In both cases I discovered some prior art that would have made getting a patent difficult at best and, if allowed, would have been quite limited in scope. In both cases we concluded that the business value of such a limited patent, three of four years from now, did not justify the investment today.

 When should you initiate a prior art search? The different circumstances of my two clients may help you make that decision. One client - Client “X” - recognized a need in the marketplace, identified a solution and was hoping to develop a product to meet that need. He asked me to take a quick look at the patent prior art, since he wanted to feel comfortable that he had the freedom to build the type of device he imagined, and a second, deeper look to see if there was prior art of any sort that would limit his ability to obtain a reasonably broad patent to protect his market. The good news/bad news is that I found a recently published patent application that disclosed most, if not all, of what he wanted to do. Whether or not that application ever turns into a patent, its prior publication meant that my client would not be able to get a patent to protect his device and he dropped the project (and the patent work for me!). Bad news: no product and no patent; good news: saving the cost of filing a patent application that would probably never give him a return on investment.

The second client - Client “Y” - had already developed a novel image processing approach as an off-shoot of his main business thrust. He wanted to get a patent on the invention to increase its potential licensing value, since he does not need the invention in his core business. Again, as a preliminary step to preparing a patent disclosure, I did a prior art search, extending the search beyond the areas for which Client “Y” had developed the technology. Again the good news/bad news is that I uncovered a large collection of academic papers that disclosed perhaps 95% of my client’s approach. Together we decided that, at best, we might be able to get a narrow patent covering that last 5%; that competitors could probably work around that 5% anyway; and that it would be a long and painful fight with the examiner to surmount the certain-to-come obviousness objection. And of course we would not know if the patent would issue for 3 years or more. And the whole of the invention would be made public. So we decided that he would be better off pursuing license agreements based on keeping his approach as a trade secret. At least he saved the cost of trying to obtain the patent.

So are you like these clients - willing and wanting to invest in a prior art search to save an order of magnitude more money if the patent would not make sense? Or are you doing so well that you’ll throw money down the drain?

An advertisement in a muscle magazine for a dietary supplement was all it took to invalidate Iovate’s licensed patent. Iovate is the licensee of U.S. Patent 6,100,287, which claims the use of nutritional supplements containing a ketoacid and an amino acid to enhance muscle performance or recovery from fatigue. When they sued a competitor, BSN, Inc., for infringement for selling a competing supplement the courts found that an ad for Weider’s VICTORY^TM Professional Protein published in Flex magazine was an anticipating printed publication of the invention. That is, the ad disclosed every limitation of the claimed invention.

 I often tell clients that the value of a patent is only determined if someone cares enough to want to infringe it. And if someone does find it worthwhile to infringe, you can be sure they will invest in finding any invalidating prior art they can. That’s too late for you to find out your patent should never have been allowed; you should have done research up-front, before investing in a patent application. Like the old oil change ad said, “you can pay me now, or you can pay me later”.

Most people understand the importance of doing a patent search before investing heavily in the development of a new product. Some people understand the value of doing a patent search before investing in the patent application process. But too few people understand that reviewing the NON-PATENT prior art before investing in that patent application is also an important up-front investment to make before plunging into the patenting process.

In fact, in many situations it may be more important to look at the non-patent prior art. The patent examiner, bless his or her heart, will at least do some sort of search in the US Patent database. If you’ve filed under the Patent Cooperation Treaty, you’ll get a search of various international patents. But you’re pretty much on your own when it comes to bringing forth the non-patent prior art. And that makes sense - after all, you are the expert in the field of your invention, aren’t you?

Clients’ first reaction to this advice is almost uniformly: “But then I might not get my patent!” True, true. But if you do get a patent and, like Iovate, a competitor infringes, don’t you think he will find that prior art and turn your patent into an expensive piece of wallpaper?

How confident are you that your patents will stand up to a court challenge?

We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

• A thesis in a library, not yet cataloged or shelved is NOT accessible.
• A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
• A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
• A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
• A document in a private, controlled collection is NOT accessible.
• A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
• A document is a prior publication even if it can be proven that no one actually looked at it.
• A purely oral presentation is almost certainly NOT a prior publication.
• Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.