Why applying for a patent is like being a defendant in a court case
Introduction
In this talk I’m going to cover materials that are not often dealt with in discussions of what it takes to get a patent. Applying for a patent and all the work that entails is the first step in a long process. What I’m going go focus on is what happens 1.5 or more years AFTER your patent application is filed, a process called Patent Prosecution. It is in Patent Prosecution you find out how good a job you and your attorney did in preparing the application and also encounter the luck of the draw as you find out the prejudices and peculiarities of the person who decides if you will get that patent, The Patent Examiner.
To get a patent you have to survive a trial
I liken the patent prosecution to a trial. While you are not in a courtroom, all the players are there. You are the defendant, your attorney is the defense and the examiner fills the roles prosecutor , judge and jury. Because the examiner is so important it is a good idea to find out as much about them as possible and to establish a good relationship with him or her
Why apply for a patent?
Applying for a patent is confusing, time consuming and expensive. Why should you do it?
Before you involve yourself in this process you should know why you are doing it. A patent can be a very valuable asset of your business or it may be totally worthless. Some are fond of quoting statistics that show that only 5% of patents are commercialized, but as you will see that is an oversimplification of the situation. Many patents are applied for with no intent to commercialize them at all.
Are there any other alternatives?
- o Public Disclosure- A patent is not your only option. . If you disclose your invention publicly, no one can patent it. Of course you then forgo the monopoly a patent would give you
- o Trade Secrets-If you keep the invention as a trade secret, you can save on patent costs, but you have to actively protect your invention from disclosure.
- o Copyright- Sometimes a copyright can substitute for a patent as in some cases involving computer software. Public Disclosure
- o Provisional Patents -And a provisional patent can buy you 1 year to raise the funds for a non-provisional application
Patentability and Freedom to use
When you consider a patent you should have two main concerns. Patentability (can I get a patent on this invention) and Freedom to Use (does someone else already have a patent on this invention).
Preparing your Case
Since you are preparing for a trial you and your attorney should prepare your case as carefully as if you were going to court for any other purpose. Your attorney will of course prepare the case which in this situation means draft a patent application. But the application the attorney will draft will be built almost entirely from what you tell him or her. The attorney is an expert on the law and may have some knowledge of the technology on which your invention is based. But YOU
Finding the Novel Inventive Features
The novel inventive features of a patent are what patent claims are written on and what court battles are fought around. I’ve written a blog article specifically on what they are[1], but for the purpose of this article we can simply say that they are those elements of your invention that distinguish it from the inve ntions of others , the so called “Prior Art”.
Identifying the Closest Prior Art
Prior Art is anything that was “known” in the public domain before your invention was made. It includes patents, articles, objects for sale, in any language and in any country. While it is possible that the prior art that invalidates your invention is in an obscure article in Tajikistani, its unlikely that such an article will be found by a patent examiner.
Most citations that I have seen in patent office actions in obtaining 35 patents and in representing inventors for 5 years have been patents, and usually US patents. Sometimes a European patent will be cited and rarely one from
Working with your Attorney
o Reviewing the claims with your patent attorney or agent
In working with your attorney it is very important that the most significant feature of your invention appear in the claims. Drafting of patent claims is a high art , the province of attorneys, and is not going to be covered here. The wording of the claims is up to your patent attorney, the content of the claims is largely up to what you tell him or her about your invention.
There are many strategies attorneys use in writing claims. A good attorney will know most of them. You should ask your attorney what the strategy will be. For example, many attorneys write claims very broadly , knowing the patent office will object to the breadth with the intention of falling back to a more defensible position. Its very important that this core position is what you want defended. I have seen far too much time , effort and money expended by inventors and attorneys defending claims that were not really central to the clients business strategy
Another classic mistake is having the attorney write claims that do not protect the most novel features of the invention. Frequently an attorney and inventor who do not know each other well will write claims which simply describe the invention. Since most inventions are made up of known and unknown components, such a strategy is often rejected by the patent office as an “obvious combination” of known features. The way to defeat such arguments is to have patents which contain either unknown features, or unknown , non-obvious combinations of features, preferably both.
Another strategy often used when an invention is similar to the prior art is to define it by its range of operating parameters. For example a hammer is a well known object which cannot be patented. However , if a standard hammer is used under conditions of extreme heat or cold it my not work. A hammer which will stand up to such conditions can be patented.
è An Invention must be Novel, Useful and Un-obvious
- What does that Mean?
If something is new it is considered Novel, whether its useful is also a pretty straight forward concept. But the idea of Obviousness is something quite different. It is this concept about which most patent arguments including patent examination and court battles over patent infringement are fought. In patent law one basically compares an invention to what could be created by someone “skilled in the art”. That is the USPTO does not just compare your invention to someone elses and ask if they are the same. The test of obviousness is much tougher than that
- The straw man
The obviousness test is based on the “strawman” who is someone who not only is skilled in whatever field the invention is about but also has at hand every thing written anywhere in the world by anyone prior to your invention. That means in principal , your invention could be ruled obvious due to a publication written in an obscure journal in
While that is the letter of the law, in practice the USPTO almost always tests your invention against other patents usually US patents but sometimes foreign ones particularly European. However, if someone else, such as a competitor happens to be involved, its possible that obscure foreign journal article might surface. I once had a situation where I had to get such an article translated from the Swedish In our patent search business we let the client determine the worldwide scope of our search. If we are asked to search Uzbek journals we will (for a big extra fee).
è Finding the Un-obvious features of your invention
Your role as inventor, in interaction with your attorney and others who might help you such as AlaCarte, is to identify those features of your invention which you know are most likely to be un-obvious.
The easiest way to find those features is in two steps.
1. First List all the features of the patent- Those that are known (such as those already part of other inventions) and those that are unknown. List them in one column on the left side of a piece of paper or a spreadsheet.
2. On the columns to the right side of each feature, note if you have ever seen it anywhere else in products or in the literature. Thus if your invention is a Widget, and while you have seen many widgets every widget you have ever seen or heard of was green , your list might look like the table below
|
Feature |
Known |
Unknown |
|
o Color of Widget |
o Green |
o Yellow |
In the example above your patent claim might be for a Yellow widget.
è Are all the claims supported in the body?
If you ever feel like testing your attorney’s knowledge ask him or her how they would deal with a “No-Antecedent Basis” rejection by the patent office. This rejection is far more common than it ought to be. What it means, translated from legalese, is that a patent claim is not supported in the body of the patent (at least the examiner couldn’t find the supporting information).
Often this is an attorney error, but its one you can help to avoid. When your attorney gives you the draft application to review before filing, check each claim carefully to see if there is something in the body that relates to it. Often an attorney will throw in a bunch of extra claims for strategic reasons and then not check to see if they are supported in the body. This mistake costs you money in the prosecution phase when the claim must be reworded or deleted as the body of a patent cannot be changed in prosecution (except by spending even more money filing what is called a Continuation in Part or CIP).
The Patent Process
Getting a patent is not an overnight activity. From application to issuance usually takes at least 3 years and often longer. The process can be extended if you file a provisional application first (add 1 year) and by the time spent in each of the patent stages. Office Actions take place any time after the application is published which works out to about 2 years as shown below.
|
Process Step |
Duration (yrs) |
Elapsed Time (yrs) |
|
Search |
0.25 |
0.25 |
|
Draft and file Application |
.33 |
0.58 |
|
Wait for Publication (1.5yrs+) |
1.5 |
2.08 |
|
Office Actions (Prosecution) |
.5 |
2.58 |
|
5) Grant and Payment |
.1 |
3.0 |
|
6)Afterward Defense/Offense/Maintenance |
17 |
20 |
Patent Searches
è Why Search
What happens if you don’t do a search?
People who decide not to search for prior art are taking a big risk. There behavior reminds me of the Fram Oil Filter add where the mechanic says " you can pay me now, or pay me later". If you don't search the patent application that is written on your invention may be easily dismissed by the first office action that occurs when the examiner finds prior art that conflicts with your invention. If you had known about that art in advance your attorney could have adjusted your claims to go around it. (See The Patent Mine Field) article in this Blog.
Not only will you be spending money on unnecessary legal fees but it may not be possible to rescue your application. This is true because while patent claims can be adjusted in a prosecution, the body of a patent may not. This was exactly the situation when I was called in on a case where a search had not been made. The patent claims did not contain the inventors most important and defensible ideas and it was not possible to add them in prosecution so the whole patent application had to be re-written. Essentially the inventor had to pay twice for his patent application.
· Doing your own searches
Many inventors seek to save money by doing their own searches. But, unless they are very familiar with how patents work, those searches may not do them much good. Inventors are usually looking for something that looks or works just like their invention.
However, that is not the way the patent system works. Patents are based on claims addressed to Novel Inventive features. And features from several different patents can be combined in an "Obvious Combination" argument by the examiner. Often inventors are stunned by the patents an examiner chooses to cite against them for this very reason. The note that the "prior art" doesn't look or work at all like their invention. Unfortunately that is no defense. If the combination of "Obvious" elements from other patents can be shown to contain the Novel Inventive Features described in the patent claims, their application will be thrown out.
At AlaCarte we think like and search like the USPTO and for that reason we are more likely to find the kind of prior art the examiner will cite (that doesn't mean however, we will always find it. Examiners are all unique human beings with their own way of thinking and no one can predict exactly what they will do.
è Where to Search
· Patent Classes
We search patents at AlaCarte using patent classes. Thats the way the USPTO does it. You can access the USPTO class system from their website using this link -US PTO Classification System.
Most people find the system quite complex and difficult to use. It takes a long time for a novice to get use to it. One way to start is to take a look at a patent of interest such as one of your own and look for the field where the Primary US class is listed. Then go to the classification system using the above link and see what it tells you about that class. Sometimes you will be very surprised as to how the patent office classifies your invention. Note that the USPTO often looks at and classifies a patent in more than one class.
To further complicate the situation the world patent office uses a completely different system. You can also find the primary world patent class listed on most US Patents. A thorough discussion of patent classes and how to use them is beyond the scope of this article.
è Types of Searches
· Fully Electronic
If you search the web you will find some patent searches offered at very low cost. Often these searches are done completely with software. While all searchers use some electronic searching in their work, a fully electronic search that actually produces useful results requires a level of artificial intelligence that I at least have not seen anywhere. If you order a fully electronic search you will either get a very long list of patents to go through yourself or a shorter list which may be missing very important elements. You probably can do as well with Google Patents, Free Patents Online or many of the other free services as by signing up for one of these searches.
· Manual
In the days before computers, patent searching consisted of pouring through drawers of patents in your local library or in the patent office in Washington. This method was tedious and time consuming but had the advantage that a human being, particularly one "skilled in the art" can recognize the importance of a patent claim that no computer currently can. Hardly anyone searches this way anymore. Because they are so labor intensive, such searches can be very expensive.
· Hybrid
Most searchers including AlaCarte use a hybrid combination of manual and electronic techniques. You can find a complete description of how AlaCarte searches on our website (AlaCarte Searches). The simplest way to describe how we search is that we select a large group of patents which fit a profile, reduce this group by wholly electronic sorting and then use two steps of human sorting: A quick relevance scan and a finally a detailed read of the most significant patents. We feel this system offers the best combination of Quality and price.
The Patent Application
Once a patent search is completed the next step is often to have a patent application drafted by an attorney or agent. We strongly recommend that the inventor prepare an invention report first before contacting the attorney so as to save costly attorney time in interviews. Sometimes a attorney will ask the inventor to prepare an invention report. At my former job in a Fortune 500 company, it was a requirement that the inventor prepare such a report before contacting the company attorney. The sections of a typical patent are listed below. They are also the sections of an Invention Report. If you want help preparing an invention report checkout this link (Invention Reports).
I'm only covering this section briefly because I want to focus on what happens AFTER your patent application is filed and is ready for examination. That examination will start with and focus almost entirely on the Claims. Its not that the other section of the patent application are unimportant, but they play mostly a supporting role in patent prosecutions.
- Abstract
- Background: Prior Art
- Description of the Invention
- Figures
- Claims
Office Actions (Prosecution)
After about 18 months your patent application will be published on the USPTO website. Shortly thereafter your attorney will receive the first "Office Action" from the USPTO. Make sure your attorney knows to inform you as soon as an office action arrives as the clock then starts running and you have a limited time to respond or your patent application will be automatically abandoned. I have 35 patents and I have never had one that didn't have at least one office action. An initial rejection is pro-forma for the patent office.
The office action will be written in legalese and may be entirely unintelligible to you. Your attorney should explain it to you. Leaving out boilerplate the office action will be a list of rejections of one or more of your claims on various grounds such as [ Claims 1-4 are rejected as being taught by US 1,234,567 by Smith and Jones (inventors). Claim 5 is rejected as having "No Antecedent Basis". Claims 9-14 are rejected as being too vague etc.etc., Claims 15-19 are reject as being taught by Rogers (US 9,876,543) in light of Smith and Jones)
The first thing to find out is: Are all my claims rejected or only some of them? This will be very important in considering your strategy as to what to do next. The next thing to find out is what patents (or other prior art) are being cited against you. In the above example its two patents by Smith and Jones, and Rogers.
You should get copies of each of those patents. Then look carefully at the sections the examiner cites against you. Your attorney should offer an option on the rejections but you are the expert on the technology , not the attorney. Often examiners are miles off in what they cite, but sometimes they find something that is right on the money. Tell your attorney the most significant differnces you see between what the examiner cites and what your invention is. Remember here its the claims that count. Even if your widget looks completely different from the cited art, if the feature the examiner cites is the same in the claims of both the art and your application thats what counts.
Parts of an Invention
Every invention combines known and unknown features. The prior art consists of everything known before your invention. It includes materials that are patented where the patents are in force and materials in the public domain because they were never patented or the patents on them have expired. You can get a patent that is an improvement of someone else's invention, but if that patent is still in force you may have to pay royalties to the inventor who owns it.
Prior Art
- In Public Domain
- Property of others
Novel Inventive Features
We have spoken about Novel Inventive Features before in this article and elsewhere on this blog. Its in the patent prosecution that NIF's are really significant. The features that the inventor and attorney propose in the patent claims are judged by the examiner against the obviousness standard. The examiner will try to prove by citing the prior art that the NIFs were known or could have been easily deduced by the strawman (skilled in the art). Here the role of the examiner as both prosecutor and judge causes problems.
The Opposing Witnesses
As in a trial there are witnesses for both sides. The opposing witnesses are those inventors who have created the prior art that is being cited against you. They are represented in proxy by the examiner who will use their work against your invention in several different ways:
Obvious Combinations
One tactic that often surprises inventors is the "Obvious Combination" argument where the examiner takes claims from two or more other patents and makes the arguement that they form an "obvious combination" which adds up to your patent. There is a classic legal precident in this space involving a road building machine which dispensed tar and gravel and also rolled those substances into pavement doing the work formerly done by 3 machines with one. This patent was ruled invalid with the argument that the invention was simply the combination of three known techniques in a common platform with nothing new about them. Obvious combination arguements can be defeated in two ways
- By showing that one of the elements in the combination is not known in the art
- By showing that the combination is not obvious because it results in an unexpected result.
For example in the paving machine invention, if the machine did something different because the three machines were used together such as made stronger pavement, laid pavement faster or cheaper or whatever and that difference could not be argued to be "obvious" to the strawman skilled in the art, then the obvious combination could be broken
.
Unpleasant Surprises
The luck of the draw-- Your examiner
Examiner’s motivation
If an examiner gets it into his/her head that your idea is obvious, its hard to dislodge that with any argument. Its here that the skill of your attorney is most important. You need lots of ammunition and skill in assessing the psychology of the situation. For example, one technique I have seen used successfully by some attorneys is what is called the "Rabbit Garden". In that technique the attorney deliberately creates some weak claims for the examiner to disallow so that he will leave the strong claims behind. Cleaver attorneys all have their own methods and some are familiar with the examiners. This is the attorneys province but you should be kept informed of and approve of strategies that are used to make sure they align with your own. Claims that are well crafted in the first place and take into account known prior art make it less likely that an examiner will make an obviousness argument using that art against you.
Rabbits out of the Hat-- Second attacks
Sometimes, Unfortunately an examiner decides to play hardball with an inventor. I've seen this happen a few times to some unfortunates. In this situation after the inventors attorney successfully defeats the examiners argument that the prior art he cited in the last office action does not block the inventors claims, the examiner then reaches into his grab bag and pulls out a "surprise witness" a completely different patent that he never cited before.
Its hard to defend against such attacks particularly if the patent cited is highly irrelevant. In cases like this you might want to talk to your attorney to see if another examiner can be assigned to your case. I haven't seen this done successfully but its worth a try. This scenario is more likely to happen if you haven't done a prior art search or the one that was done was poor quality leaving lots of relevant prior art around that you and your attorney have never seen. If you have seen most of the relevant prior art before its much more likely that you will be able to prepare a good defense to it.
Three Strikes
In patent prosecution you and your attorney get three tries to convince the examiner to accept at least some of your claims. Each time an office action is filed you get three tries to get the examiner to accept it. You have 1-6 months to reply ( see this link to Brown and Michaels for details). Its important that you do reply in time because if you do not your application will be marked Abandoned and you will loose all the time and money you spent on it.
First Rejection
In the first rejection the examiner shows at least some of the cards in his/her hand. You will learn for the first time which of the claims have been accepted, which rejected and one what grounds. You will also learn which prior art patents are cited against your invention. Here you get to make your first strategic decision. If some of the claims are accepted and some rejected ask yourself how important the rejected claims are. You can stop the prosecution right here and accept the claims the examiner allows and get your patent without paying any more attorney fees (you will still have to pay patent office fees).
If however, all the claims are rejected or the most important ones, you have no choice but to fight. You can challenge the examiners arguments, or reword your claims to clarify the differences between what the examiner says and what you think is the truth. You can provide arguments as to why a combination is not obvious by citing synergies that may not have been mentioned. One thing to be careful of here is that while claims can be amended in prosecution the patent body may not be. So any new or amended claims must be supportable by something in the body or you will risk the dreaded "no antecedent basis" rejection.
Second Office Action
The second office action tells you how successful you and your attorney have been in responding to the examiners rejections. Sometimes the examiner will go along with our new arguments and claim revisions and sometimes not. If at least some of your claims are now accepted you may want to revisit the question about whether the claims that are allowed are now enough for you to take your patent and run. If your claims are still rejected you need to know why. Did the examiner simply refuse to be convinced by your flashy new arguments or did he Pull a Rabbit out of his hat (see previous section)
Final Rejection
If you have not yet convinced the examiner to accept at least some of your claims or if you are fighting to get more approved than have been allowed so far you may get the to the third and final office action. If your claims are not accepted by now you will get a FINAL REJECTION.
At this point you are done (sort of). You do have the right of Appeal. From what I'm told this is VERY expensive and seldom used unless the patent and the claims you are trying to get accepted are potentially very valuable. To go to appeal you need deep pockets and lots of time. If you want to carry on-- consult a good attorney and GOOD LUCK.
You might think that after your patent is granted that you would be done with the patent office for a while but you would be wrong.
Maintenance Fees
You still have to pay the government fees for "maintenance" on a regular basis starting with your "issuance fee" and continuing for the life of the patent. If you have several patents and particularly foreign patents those fees can add up quickly. This is one reason that many patents are abandoned after just a few years. Its amazing how much free IP there is out there due to these fees. Of course if your invention is making lots of money and you have competitors who would love to grab a piece of your market you will be happy to pay the fees.
Interference and Defense
Again if your invention is valuable you may also have to defend it against infringers. Just because you have a patent doesn't mean that others are prevented from copying your invention. It just means that you can get the courts to stop them from making it (If you find out about them).
There are firms whose entire business is seeking out these infringers and threating them with lawsuits to cease and desist. Sometimes you can force the infringers to stop or collect royalties from them due you but in other cases the infringers have an army of attorneys on staff and find it less expensive to fight you in court forever than to pay you anything. The right approach here often depends on economics and is beyond the scope of this monograph.
Another unpleasant surprise that may await you is that someone may sue to have your patent declared invalid asserting it infringes their patent. They may be owners of one of the patents the examiner cited against you who don't agree with his/her decision, but more often they are owners of one of those patents overlooked by both you and the examiner. Persons "skilled in the art" have a better idea of the technology in their field than most examiners. This by the way is another reason to do a good patent search in the first place.
Trolls and Anti-Trolls
Trolls
There are some less than scrupulous individuals who take advantage of the patent system to essentially extort money form unsuspecting inventors. These "Patent Trolls" file or purchase patents with no intention of ever commercializing them. Instead they sit quietly waiting for someone else to commercialize something similar to their invention (hopefully a company with deep pockets) and then they pop out of hiding with a letter from an attorney threating suit, hoping to get the inventor to pay royalties for the use of their invention which is often only peripherally related to the invention you patented. A troll can also try to get your patent ruled invalid. The best protections from Trolls are a good search in the first place and a good attorney who knows how to defend you from their attacks.
Anti Trolls
Some large companies, having had quite enough of the trolls have banded together to buy rights to patents that might someday pose a problem for them. One of our clients at ITTr is an Anti-Troll pool. These companies buy the rights to pools of patents from their inventors with the only stipulation that the inventors may not sue members of the pool. Inventors are free to commercialize their inventions , they just may not stop a pool member from practicing it
Assertion and Offense
There are other ways to use your patent. You can look for companies that are using it without permission. This is the Troll strategy except that unlike the trolls you may be using it to defend an invention you are practicing. Not all competitors may be visible to you especially if they are using your invention in a field where you are not. Often inventions have uses unsuspected by their inventors. This licensing for non-core uses is one of the things our ITTr sister company is involved in. While ITTr doesn't seek out infringers for clients, there are companies that do. Ask us and we can recommend some.
Resources
There are many resources available to inventors. Your should start with the US Patent Office website . But as well as their many services you can get easier to use searching tools and features at Free Patents Online and Google patents . If you are on LinkedIn you can join one of the many groups involved with patents such as the Patent and Intellectual Property group. For Blogs dealing with patent law checkout "Everything Under the Sun Made by Man" which is Russ Krajec's excellent blog. You can find a link to it in the blog list in this article.
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