Intellectual Property Directions

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.

I remember a cartoon I saw many years ago. It showed several inventors waiting on a bench outside the patent examiner’s office. Each inventor had an odd-shaped package on his lap, with bulges and protrusions and wrapped in brown paper and string to hide the details of the contents. Two adjacent inventors are holding identical packages and are eyeing each other with great suspicion. Welcome to “first-to-file”.

The United States’ virtually unique “first-to-invent” rule is likely to change if and when patent reform makes its way through Congress. Of the several reforms in the package to argue about, FTF is one that gets my vote without much worry. Some people suggest that FTF favors large companies over small entities, but I don’t see it, except in one very narrow sense.

Arguably, a large company has the resources to “run” to the patent office as soon as an invention is ready for patenting while a small entity has to shepherd its resources. I suppose that’s true, but my experience with both types of companies suggests that big companies, with many more potential patents to evaluate, are no less concerned about budgets than are small companies; have more bureaucratic red-tape to get past; and are less enamoured of any one invention (given the many technology areas they work in). In a large company, getting the okay to patent ”your” invention is often one battle in an internecine battle for resources. In a small company the focus is typically on the key technologies supporting one product or product line and management decisions can be made on a dime.

The reality is that patent interferences are relatively rare and, if memory serves, the senior party (the first to file) wins most of the time. Moving to FTF, aside from bringing us into alignment with the rest of the world, would eliminate a rarely used and costly procedure that usually ends up giving the patent to the first to file anyway. Without First-to-Invent, the need for evidence-quality lab notebooks is eliminated and without interferences the potential for a surprise legal expense is eliminated.

The one impact that FTF will have on both large and small businesses is that it increases the pressure to file a provisional application as soon as possible and then finish any improvements and/or market evaluation within the one year lifetime of the provisional application. But even this impact is minimal in its practical application. Under First-to-Invent it is a risky strategy to postpone filing a provisional application as soon as possible since it opens you up to the argument (in an interference proceeding) that you did not file in a timely manner. Our patent system is designed to reward inventors who share their inventions with society with the temporary “patent monopoly”; not filing in a timely manner (i.e., once your invention is reduced to practice) is just another weapon in the senior party’s arsenal.

If you’ve been paying attention to your IP development process and diligent in reducing your inventions to practice under First-to-Invent then you have little to fear from First-to-File. In general, interferences are rare and I see the odds of you losing a patent under FTF compared to winning a patent at just about 50:50.

Double, double toil and trouble, infringer burn and lawyer bubble…

Although many inventors think they can save a lot of money by filing their patents pro se (for themselves), I always caution my clients to use a patent attorney, at least to draft their claims. Sure, you know the science and technology of your invention better than anyone else, but writing claims is only one part science - the rest is eye of newt, oops, I mean the rest is an art.

For example, I’ve previously blogged about a patent infringement suit in which the patentee almost lost the right to stop an infringer because their claim used the word “composed” rather than “comprised”. To the patent world, an invention “composed” of x plus y does not cover one that also includes “z”. But a patent that covers an invention “comprising” x and y can be asserted to stop someone from making x plus y plus z. [In this case the patentee won on appeal because "z" was irrelevant to the function of x plus y.]

Just recently we have another example of the arcane art of claim construction. In Baldwin v. Siebert the CAFC reversed a claims construction error of the District Court. In patent claims, it is the rule that inventions comprised of an object may equally well have two or more of the objects. Thus, Baldwin’s claimed printing press cleaning system, which comprised “a pre-soaked fabric roll”, did indeed block Siebert from selling a system that had more than one pre-soaked fabric rolls. As the CAFC said:

That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one”.

A patent attorney friend of mine suggested viewing the rule this way: if the invention is defined to include one of these objects, then a copy that includes two must, by definition, also be said to include one. You can’t have a second if you don’t have a first!

The point, of course, is not to tell you to always use comprise or to add a dependent claim adding the second or more duplicate objects. The lesson to be learned is to always seek experienced counsel to draft your claims. You’re a scientist or engineer, you never served a claim writing apprenticeship with a master artisan. Find someone who has learned this art.