Saturday, June 13, 2009

What Do Patent Attorneys Really Do?

My clients often wonder why they need a patent attorney? Many of them do a great job of documenting their inventions in writing, handing me 10-20 pages of written technical explanation complete with drawings. Why, they ask, do I insist on putting the invention description in a certain order, focusing on certain technical issues while ignoring their “big-picture” marketing verbiage, using certain buzz words like incantations, and keeping the drafting of patent claims off-limits to them? It is difficult to explain to each client while in the drafting process why patent attorneys do things in their mysterious ways. So as a general overview for technology developers, I will attempt to explain some of this mystery in layperson’s terms.

A Patent Is An Integrated Legal Document
This means that the patent document by itself must provide a complete explanation of the invention you are attempting to patent. It is also the document that establishes to the public exactly what you have invented. You will not be allowed to change or add anything material or to come in with a late explanation after the patent application is filed. If a crucial link in the chain of explanation is missing, the patent application may be rejected by the Patent Office for insufficient disclosure. Even if it is granted, the patent may be challenged by anyone over its 20-year term on the basis that something important for practicing the invention was left out or something you made a big point about turns out to have been erroneous or misleading.

It Must Define What Is New Over All That Is Old
The key to getting a patent granted and to defending its validity over its 20-year term is to accurately identify what is new over all that is old. What is old is everything that has been published in the U.S. and elsewhere in the world prior to your filing date. It does not matter that a prior product was not a market success, that a prior patent describes something obsolete when read 5 or 10 years later, or that a prior article or paper was not followed or endorsed in the industry. The Patent Office will use each prior art reference as indicative of what it teaches or suggests. If the inventor is an expert in the field of the invention, then the patent attorney should require the inventor to explain what was already known in their industry and how the invention differs from that. If the inventor is not an expert, it is advisable to at least have a patent search conducted. While patents are only a narrow slice of the world’s technical literature, companies tend to file for patents when something new is created that may have commercial value, so a patent search may be a good indicator of the state of knowledge in that industry.

Why Does The Patent Attorney Keep Repeating Things in the Application?
An experienced patent attorney is expert at identifying from a technical background description or a patent search what should be emphasized as being new about an invention. The patent attorney will repeat this in at least 3 different places in the patent application (Summary, Description, Claims) to make certain that the point is made. This is especially useful years later when the patent is challenged in court, and the attorney for the other side is showing many prior art references to the jury that were not found in patent examination to invalidate your patent. Because the patent keeps repeating what is new, the attorney defending the patent can more readily differentiate for the jury the invention over the prior art references by pointing to those sections in the patent that keep emphasizing what is considered to be new.

Why Is Comparative Test Data Needed to Support The Invention?
A patent must not only explain what is new about the invention, it must also present a strong argument why the invention is “non-obvious” over all prior knowledge. “Non-obviousness” is a legal requirement for patents that the invention not be something a person of ordinary skill in that field (an engineer) would have thought of given all that was known to be old. That is, the invention must be shown to involve a “discovery” or “leap of imagination”, not just routine engineering. This showing must be made in the patent application, or else a patent examiner may not be convinced and will reject the application. While the point can be raised as an argument later, the patent examiner will not allow you to read anything into the application that was not there as of its filing. Also, once examiners form an opinion as to obviousness, it may be difficult to dissuade them with late arguments. “Non-obviousness” can be shown by quantitative evidence of a critical difference or advantage that the invention obtains that the prior art does not. Comparative test data that illustrates this critical difference or advantage can be very persuasive. You can also show non-obviousness by showing how the invention solves a problem that the industry did not recognize, or takes an approach to problem-solving that is opposite from what the industry followed.

Why Does the Patent Attorney Ask for Other Versions of the Invention?
As they say in math, a point is only a singularity, two points make a line, three points make a plane, and four points make 3D space. If you show two different ways to implement the same invention concept, the examiner and the public can infer that you are entitled to patent all other versions lying between those two, or three, etc. This shows that you are entitled to a broad reading of your invention claims. Also, if the patent examiner finds a prior art reference in examination that knocks out one of your versions, then you can shift your patent claims to focus on the other version and still get a patent granted.

Why Is It Important to Show Each Step in the Invention System or Method?
The basic exchange for a patent is that the Government grants you a 20-year monopoly on specific technology, but you must teach the public (in the patent document) how to implement that technology without the public having to guess about it or to invent it for you. In this manner the progress of patent filings records, and therefore advances, the progress of technology. You are not allowed to hold back the critical linchpin that makes the whole thing work, or to leave out the “secret sauce”. If you do, the patent may be challenged at any time as invalid. You do not have to describe every detail of other parts that are not what is new about the invention. But if you are asserting what is new, then you must specify each step that you have conceived to implement it.

What If My Development of the Invention Is Only At the Prototype Stage?
Every patent filing is a snapshot in time that becomes dated by the end of its 20-year term. You can assume that this will be the case. No one expects an inventor to describe an implementation of the invention that will still be in use 20 years from now. However, what you do describe in the patent as the invention must be complete enough in design and operation that the public can understand by reading the patent how to implement the invention, even if they may use other components later that perform the equivalent function. The trick is knowing when an invention has been completed in conception and reduction to practice, even if it exists now only as a prototype. This is where the patent attorney’s judgment is important. If a critical step of implementation is missing, the patent attorney will flag it as a place for you to fill in.

Why Do I Need to Describe the Nitty-Gritty Details? Will I Be Limited By Them?
Patent attorneys like to build at least one, if not more, technical “fallback” position into the patent application. That is, if the examiner in patent examination finds prior art that shows or suggests your overall invention concept, your broad claims may be rejected. However, if there is a more specific implementation detail not shown in the prior art that is described in your example of the invention, then you may be able to narrow your patent claims to limit the definition of your invention to that particular form of implementation, and thereby still get a patent. The patent claims are separate from the description of the invention. You are entitled to the broadest patent claim on your invention that does not overlap on what is old (the prior art). So the nitty-gritty details described in your example do not limit you. They are only there to afford you an option to narrow your patent claims if prior art is found that knocks out the broad concept of your invention.

Why Does the Attorney’s Patent Claims Sound So Weird?
Patent claiming is a true art form, and is the main reason to justify why you hire a patent attorney. It is the first part of a patent attorney’s training. The patent claims are written now, but hopefully will cover the many ways others may want to use your invention 20 years into the future and with other components developed in the future. To do this, a patent claim must be drafted as a fine balance between defining enough specific and definite details that the invention can be differentiated from the prior art, while at the same time it must not include any unnecessary language that limits the patent coverage in ways that are not essential. Basically, the patent attorney must craft the claims to include only necessary details and omit all unnecessary details, and do this while guessing how things may change in the future. In addition, patent claiming must follow a number of rules of formatting, such as: (i) a patent claim must be written as a single nominative phrase (I claim a …); (ii) "comprising" means "including, but not limited to", whereas "consisting of" means "including these only and no others"; (iii) a term cannot be indefinite as to what it specifies (… an applet … (not a widget and/or an applet)); (iv) indefinite articles are terms of inclusion (an applet … including an applet pair), while definite articles are terms of exclusion (said applet … (and no other)); etc. These drafting strategies and rules are designed to make parsing what a patent claim covers or does not cover 20 years into the future an exact process that minimizes uncertainty.

Hopefully, the above will enable you to understand what your patent attorney is doing, and why these fine points may be important for your patent over the long term.

1 comment:

  1. Thank you for this post. Lots of good information not covered by books or other articles on patents.