Note: This monograph is strictly my opinion and
should not be relied upon as legal advice. If you have legal questions consult a
qualified patent attorney or patent agent.
Getting your first patent
shouldn’t have to be painful. Often
inventors approach the process with the same enthusiasm that they have for root
canal. After all the process is legalistic,
complex, involved and completely contrary to the communications methods that
most inventors , who are often scientists and engineers, have been taught in
school.
A patent is a legal document , and
the highly structured rules around creating one come from the world of Law. Yet the subject matter of the patent is technology, a creation of the world of Science. The shotgun marriage of these two worldviews
frequently produces anxiety for both the
inventor and the patent attorney or agent.
I have 33 patents and it took me a
very long time and training by a number of patent attorneys before I felt that
I really understood the process. I
finally began to understand what was going on when Ideveloped a courtroom metaphor. I imagined that my patent on trial. The prosecutor’s goal was to
prove that the result all my hard work
and cleaver intuition was unworthy of a patent. My job was to provide technical support to the patent attorney who was acting as my defense counsel.
When a scientist or engineer
writes a technical paper, the goal is to
be as clear as possible. This means the
objective is to make the subject matter as understandable as possible and to leave
out irrelevancies such as the blind alleys they wandered up and the wrong
trees that they barked at. But in proving something is patentable , it is exactly those irrelevancies that are key to the case for the defense.
The patent law says that an
invention must be 1) Novel, 2) Useful and 3) Unobvious. The first two of
these caveats are usually easy to prove. It’s the third one where all the court battles are fought. The law says that the invention must not be
obvious to “one skilled in the art”. This means the patent office
assumes the existence of a” straw man” who has at his or her disposal all the
information available anywhere in the world prior to the time you made your
invention. This vast body of information
is called “The Prior Art”. The
prosecutor can assume that this straw man has digested all of this material and given his skill level, if he can produce your invention, then it is not
patentable.
That is why it is so important to
document your work carefully, since all of those wrong paths you took are barriers to the argument that the invention
is obvious..
With this introduction , we can
begin to see what steps are needed for getting that patent painlessly. The more you skip or gloss over these steps
the more difficult and painful the
patent process will be.
Phase Zero: Documentation
First, Document your invention. This should be done properly in a lab notebook with sewn in pages which is
signed on each page by you and also witnessed on that page by someone who is not also an inventor. Even in this age of computer record keeping
it is the paper record that proves the invention. There are some on line patent notebook
services, but I am unaware of how the
courts regard them.
Next describe your invention. This is usually done in what is often called
an Invention Report. It’s a technical description of the work,
much like a technical report or journal article. The difference is that you should also
mention all those mistakes which could trip up the straw man . I have some examples of good invention reports in my
trade literature available through my website www.BMLLC.net
[write and ask for the Invention Report
information]. You will also have to supply engineering drawings
for all figures used in your report. These will be redrawn later by a skilled patent drafter in the style
required by the patent office.
Phase I: The Patent
Search
When you have written the report
and documented your invention you are ready to meet with the attorney or patent
agent. The purpose of the first meeting
is to come up with a strategy for
searching the Prior Art. At BML we use a
six step search method which starts with the inventor and searchers agreeing on the search profile to be used. That profile includes the technical
information but also what “Art” is to be searched. After all anything anywhere in the world can
be considered “Prior Art”. Do you really
want to search the Chinese , Mongolian
and Swedish literature? However if you
want to file your patent in Europe or Japan ,
a search of their literature is advised.
Reading the Search
The searcher should return to you
those patents that are closest to your invention and therefore most likely to
be deemed a barrier to it (by making it
obvious). You should read through them
carefully, starting with the abstract to determine their relevance and then
reading the claims carefully
particularly claim 1. Patent claims are
written in what is called the “upside down Christmas tree model”. The primary claims , beginning with claim 1,
should be broader than any of the claims that follow. Thus, if the prior art isn’t a problem with
primary claims its unlikely to be so with the supporting claims.
Phase II: The Patent Application
This is where the attorney or
agent earns his or her keep. Its up to the attorney/agent to turn your
Invention Report into a patent application. Most usually begin by crafting the claims very carefully and reviewing
them with the client. The
“Specification” which is the body of the
patent is then written to support the claims. The detailed construction of the Specification is beyond the scope of
this article and may be discussed later. Here you pay your first fees to the patent
office which now consist of three
separate fees: a filing fee, a search
fee and an examination fee. The amount
you pay for each fee will depend on what
kind of patent you are applying for and whether you are a “large” or “small”
entity. A complete schedule of patent
fees is found on the USPTO web site at http://www.uspto.gov/go/fees/fee2005mar15.htm
Phase III: The
Patent Prosecution
The third phase of the patenting
process occurs after the patent is filed when the patent is examined by the
patent office and is often called the “Prosecution”. Today the patent is usually published about
1-1.5 years after it’s filed. The
results of the examination usually follow fairly quickly in a series of what
are called “Office Actions”. Here the
patent office rejects claims or parts of claims as being taught by the Prior
Art, which is cited in the office action.
Often the objections are around
legal issues, which need to be resolved by the attorney or agent. However, if the patent office rejects on the
basis of obviousness from the prior art, the inventor has two choices. Either drop or rewrite the offending claim; or
challenge the examiner’s interpretation of the prior art. To rewrite the claims or challenge the
examiner requires close co-operation between the inventor and the
attorney/agent. In my experience you
usually have 3 tries to convince the examiner. After the 3rd try you get a final rejection. It is still
possible to appeal after this point but it can get very costly very fast to do
so, so it had better be worth it to fight on.
Phase IV: Grant of Patent
If your patent application survives prosecution
it , or the revised version of it will
be granted. You will receive a notice
from the patent office and you will have to pay an Issue Fee which is also
found on the schedule referenced above under Phase II.. This is not the end of paying fees to the
patent office, which also requires you to pay “Maintenance Fees” on you patent
which get larger with time. Again ,see
the fee schedule for details.
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