Intellectual Property Directions

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.

Conventional wisdom dictates “Make your claims as broad as possible” but some inventors and their attorneys seem to forget that, broad or narrow, the claims have to define the invention you have, not the invention you wish you had. In a recent case, Liebel-Flarsheim Company overplayed their hand by filing (and getting) overly broad claims, made a losing bet by suing Medrad for infringing, and capped it all off by doubling down with an appeal in which their patent was ruled infringed but invalid.

Liebel’s invention was a fluid injector with a pressure jacket to contain the high pressures involved. At some point in the prosecution of their patent application someone got the bright idea that they could get broader protection by leaving out some of the limitations in their claims (a truth); they removed all references in the claims to the pressure jacket. The patent examiner allowed the claims.

The patent examiner did them no favor. When Liebel sued Medrad, they first lost the claims construction battle (the judge decided that the claims required the pressure jacket) but then won the appeals battle (the CAFC said NO pressure jacket was required). Based on the new claims construction, the district court concluded that Liebel’s patent was infringed (by the jacketless Medrad device) but that the claims were invalid because Liebel had failed to comply with the written description and enablement requirements!

This conclusion was to be expected - Liebel had never successfully made a jacketless system; their engineers testified that the use of a jacket was not a mere design option and that one of skill in the art would not know how to make a jacketless system; the specification described jacketless systems as “impractical“; the inventors had tried unsuccessfully to produce a jacketless system and that it was “too risky” to pursue further.

Yet, in spite of this understanding of the limits of the invention, in spite of having filed all claims with the limitation of a pressure jacket, Liebel and its patent attorney decided to delete these limitations from the claims and get a patent on the invention they wish they had invented.

Although I put most of the blame on Liebel’s patent attorneys, I also blame the patent examiner for allowing claims for which there was little or no support in the specification - no matter how loudly the patent attorneys cried.

Remember, to paraphrase Don Rumsfeld, you have to go to the patent office with the invention you have, not the invention you want.

Technical Editor Paul Rako of EDN (formerly Electronics Design News) recently posted a blog entitled File Your Own Patents. It’s really more of a meta-post since it is only announcing an upcoming article. It starts:

My IC designer buddy Don Sauer already has something like 40 patents, mostly when he worked at National Semiconductor. Now he is working up an article for me on how to do it cheap.

Mr. Sauer’s how-to solution, apparently, is to skip the patent attorney and file it yourself. To that I say, well, hogwash. Actually, what I said in a comment to the blog was:

I will grant you that a reasonably intelligent person can certainly file a patent application pro se; anyone who can read with comprehension can do most knowledge work. However, the suggestion that one should file pro se begs two questions; are you ready (and interested enough) to invest the time to become knowledgeable in patent law and procedure to do it as well as an attorney or patent agent AND how are you accounting for the opportunity cost of the time spent (both the learning time, which can be amortized over many patents but which is an on-going investment as the law/rules change, and the time prosecuting the patent).

If the answer to the first question is NO, then we all know about GIGO. And if the answer to the second question is “Duh” or “I do it on my own time” then I suggest you haven’t thought this through.

After being a senior R&D engineer for 25 years I decided I was interested enough in IP and now have my own company acting as a part-time, outsourced Director of Intellectual Property. Most of my clients would prefer to spend their time (and their subordinates’ time) working on the invention itself and to hire someone - myself, a patent agent, or, heaven forbid, an attorney - to translate the engineering into a patent application. I would suggest this route is more cost effective for a company than to divert engineering talent to a task for which they are not trained.

Yes, “methods” are patentable subject matter. And yes, there are many processes that clearly deserve patent protection. But I sure wish the CAFC or Supreme Court would drive a stake through the heart of one class of methods patents and put a stop to the madness. These methods claims cover what I call end-user processes. In many cases this type of patent claim is used as a back door way to get market protection for an apparatus that could not be patented on its own; as such it is a subversion of the goals and intentions of our patent system.

I discussed an example of an end-user process patent in the post Is suing your customers a good idea? The patent in question had only one independent claim which described a medical procedure that could be performed with the assignee’s unpatentable apparatus - or anyone else’s equivalent apparatus. The medical procedure is surely a process or a method of doing something, but is it really in society’s interest to issue patents on a series of steps or activities performed by individuals without any patentable apparatus? Certainly there is a qualitative difference between inventing a better, faster, or cheaper manufacturing process whereby your company can produce a more competitive widget and “inventing” an activity that requires nothing more than human skills (including, perhaps, the skill of manipulating existing equipment) that you or your company does not actually practice and that is practiced by people who might never be your customers.

Our patent system is supposed to be a deal between society and the inventor. We (society) grant a limited time monopoly to the inventor in exchange for the inventor teaching us the non-obvious details of his or her novel invention. Implicit in this deal is an assumption that “non-obvious” and “novel” are somehow universally understood and demonstrable. The problem with end-user processes is that the tests of obviousness and novelty break down.

We test for obviousness and novelty by looking at what has gone before and what other workers in area would typically do. But unlike a process used in manufacture, end-user processes are usually performed by individuals, not organizations, so the motivation to record how activities are performed is low. Do you think your plumber records any “tricks of the trade” he uses for potential patenting? No, a master plumber passes these techniques to apprentices by demonstration. The patent examiner has no insight into this “database”. Only in court can experts testify about what is or is not common practice and by then the anti-competitive damage has already been inflicted on society.

Who files patent applications for end-user processes? All of us! Unfortunately it has become more or less standard practice to file methods claims along with one’s apparatus claims with the clear hope of getting de facto protection for the apparatus even if the apparatus claims are rejected during examination, disallowed later at trial or designed around by our competitors.

The de facto protection occurs when potential manufacturers of competing but non-infringing hardware decide not to enter the market out of fears be being liable for contributory or induced infringement of the methods claims. While the benefit to the inventor of this situation is clear, do we as a society really feel this is a good idea? Do we really want to give an inventor a patent monopoly on an unpatentable apparatus? And what can we do about it?