Ways of Working with Your Patent Attorney to Keep the Costs Down
By
Michael Blaine Brooks, JD, PhD (Engr.), PE(EE)

Patents for a Purpose

A manufacturer planning to commercialize a product understandably looks to protecting its product line investment. By looking forward to patentability and backward to a right-to-use (that is, by conducting prospective infringement analysis and licensing as necessary), the manufacturer’s product line may be protected from prospective infringers and its products can be made and sold with a reduced likelihood of infringing one or more patents. As for those seeking to license his or her invention, it helps if the invention acts in the business world as an economic short circuit – that is, where you have invented the least expensive way to achieve a useful and economically desirable result. That way, although others may attempt to invent around your solution, they will have a less efficient, less competitive result.

I like to say to the first-time client, to make is easy on your budget, make it easy for your patent attorney. That is, the preparation by the applicant of a maximally informative invention disclosure can contribute greatly to the production of a well-crafted patent application for a reasonable cost. Whether you are managing the invention portfolio of a research and development department or have just drafted your first business plan that incorporates the exploitation of your invention, the variability of patent drafting quality and costs can, in part, be smoothed out to your benefit by some efficient upfront effort on your part. The following presumes you have retained a patent attorney generally knowledgeable in your field of endeavor with whom you are prepared to comfortably collaborate. Also presumed is that you understand ownership under patent law where, absent an agreement to the contrary and in conformity with state property laws, the inventor is the owner, joint inventors are based on claimed contributions to the invention and are joint owners, and that an employer directing its employees to invent should receive an assignment of the invention and if merely company resources are used by an employee not hired to invent, the employer receives at least a license, i.e., “shop rights,” in the invention of its inventor-employees. In order to help determine or re-affirm inventorship and presumed ownership, be prepared to discuss with the patent attorney those individuals who each contributed to at least one inventive step in the inventive process and describe those agreements that are in place and obliging the inventor-employee to assign the invention.

Patentability and Statutory Bars

A patentable invention must fall within at least one subject matter class defined by federal statute and must be new and must not obvious to one of ordinary skill in the technology. While a patent attorney may not be able to state with certainty whether an invention will receive a patent, he or she may be able to assess whether the prospective application faces one or more statutory bars to obtaining or keeping a patent should it issue. For purposes of domestic filing, the patent attorney would prefer to hear that the invention has only been disclosed, if at all, to those bound to secrecy by a confidentially, or nondisclosure, agreement and, in any event, that such a disclosure occurred less than one year ago. To help the attorney, be prepared to provide the circumstance in which the invention was described or used in public for the first time or offered for sale, even if done in confidence. You may find your patent attorney attempting to distill the one or more problems your invention solves and in doing so, your patent attorney may express your invention back to you in terms of one or more claims using language that broadly and tentatively defines your invention. For example, if your invention includes a new process, your patent attorney may express the version with the least essential steps and, if your invention includes a new device, your patent attorney may express the version with the least essential elements. If the expressed steps or elements are not in a single piece of published literature or a previously filed patent application by someone else, then your invention may be novel. Databases may be searched to aid in the tentative novelty assessment particularly those having commercial and technical literature, patents and published pending patent applications and to the extent they disclosed claimed steps or elements of your invention and do so before your invention date, these documents are termed prior art. If at least one step of the method/process invention or at least one element of the apparatus/device/article invention cannot be found in the prior, at all, and the missing step or element is not notoriously obvious to those of ordinary skill in the technical field of your invention, then your invention may be patentable. However, the missing step or element may be found by the patent examiner during his/her search and examination of your application. So, expect your patent attorney to follow the problem/solution enquiry with questions along the lines of whether the combination of steps or elements produced an unexpected result or was not an obvious set of steps to try or elements to combine. These questions are attempts at positioning your disclosure as possibly something more than a rearrangement, modest refinement or straightforward mechanics adjustment. Put another way, if each of your elements function according to their expected functions, and the combination of these elements produce a result that would be expected from the combination, and the act of combining required very little effort and was market driven or an obvious design choice, then your patent attorney might suggest you keep inventing if you wish to obtain a utlity patent.

Ornamental Features of a Useful Article – Consider a Design Patent

If you are seeking patent protection for the new ornamental features of a useful article that presently exists, then be prepared to provide to the patent attorney a sample article, or photos or drawings of the article. Otherwise, provide drawings of the article. If your invention is an ornamented article, views from all six sides should be provided, unless symmetry can be exploited, and you should also include a perspective view. If you are seeking patent protection for a surface ornamentation, be prepared to provide to the patent attorney drawings of the ornamental design. (Most patent attorneys use professional patent dratfspersons to convert or render your photos of the article, or their photos and measurements of the article itself, into line drawings acceptable to the US Patent Office .) This is a well traveled path to patenting useful artwork and can be coordinated with copyright registrations.

Utilitarian Aspects of a Useful Article – Consider a Utility Patent

If you are seeking patent protection for the new article itself, or the process by which it is made, or some other device, assembly, apparatus, system, composition of matter, or other useful method or processes, then consider preparing a written disclosure using illustrations wherever helpful to describe the invention. Your disclosure should be more, much more, than a concept and a statement as to what you perceive to be the marketable features of the concept. A working prototype is not required by the US Patent Office for deposit, rather, the written description serves as the modern substitute for the prototype.

The Written Description, Enabling Disclosure and Best Mode Described

The applicant can achieve a great efficiency when working with the patent attorney to the extent the applicant appreciates the obligations of the written description. The applicant’s invention disclosure when provided to the patent attorney should describe the invention generally and specifically by way of examples with more than one specific example described in suchas fashion as to enable one of ordinary skill in the field of the invention to make and use the invention without undue experimentation. One of these specific examples should address the best mode for carrying out the invention. These specific examples can include assemblies, manufactured articles, the steps of a process to make the article or assembly, a system or architecture of devices to perform a useful purpose, and are not necessarily mutually exclusive to one application. While some test or simulation results are helpful to evidence an actual reduction to practice and operability of the invention, providing additional test results do not necessarily work to further satisfy the enablement obligation of the application.

Throughout the application drafting process, the patent attorney will attempt to describe the invention by example, with carefully selected language that is typically given its broadest meaning where appropriate by using general-purpose definitions, technical definitions as used by those or ordinary skill in the field in which the invention may be placed, and definitions of terms as defined by the inventor where no other terms will do. The patent attorney attempts of avoid inadvertent disavowal of the scope of the invention and prefers to speak positively about what the invention is and does by example rather than what it is not and what it cannot do. You can help by writing your invention disclosure broadly while describing details of your specific examples in ordinary language without spending a great deal of time stating what it isn’t or what it doesn’t do and without spending a great deal of ink distinguishing it directly from the known prior art by pointing out how your invention is explicitly different that the prior art references you have.

Drawings

Illustrations are used as teaching tools to explain the various examples of the invention and should be used wherever helpful. When the invention is mechanical or structural, more than one embodiment (specific example) of the invention helps show the invention can be made in more than one way. When the invention includes a manufacturing process or instructions for a general computer to execute, flow charts illustrating steps and other logical determinations can be helpful (as can be including pseudo-code in an appendix illustrating examples of the novel steps of the instructions). When the invention includes an apparatus or system, functional block diagrams at one or more levels of detail can be helpful. This same approach works well with mechanical assemblies that are described as an integration of sub-assemblies. The drawings are typically line drawings that are integrated with the written description with the use of reference numbers.  While some inventors insist that their drawings be used for more than the disclosure phase, it is almost always more efficient that the staff of the patent attorney or a contract patent draftsperson be used to render the drawings for submission.

The Printed Prior Art

As suggested above in the patentability portion, to better appreciate whether your invention is indeed not described in a written published document ( and therefore presumably supportive of novel claims) and not suggested in one or more written published documents (and therefor presumably supportive of nonobvious claims), a preliminary patent search should be considered. Whether you are new to inventing and have never seen your invention on a retailer’s shelf, or you are a paid research and development engineer and, while aware of some of the published literature, are naturally not aware of the specific goings on in other R&D facilities, you may be surprised to find some or all of the features of your invention in printed references such as catalogs, marketing and sales materials, technical journals and reports, and the US and other patent databases. Often, a few hours of searching on the database of the US Patent and Trademark Office (www.uspto.gov) can be very helpful in refining one’s invention and at least illustrating the typical formats and kinds of drawings used in such applications. For those inventors seeking to license, prior art searches for patentability greatly facilitate the prosecution of the patent application and right-to-use (also called right-to-operate or right-to practice) searches prior to filing can help position the marketability of the resulting patent. Prior art references help the patent attorney refine the application mindful of their content without explicitly distinguishing the application from the prior art. This mindful drafting will prove helpful in supporting claims having scope up to, but not stepping on, matter previously disclosed in the prior art.

A patent search may reveal unexpired patents having claims that may appear to be directed to your invention, that is, you (or your licensee or customer) may be infringing this patent when practicing (i.e., when making or using) your invention. In those cases, a right-to-practice analysis may be considered where the claims of one or more unexpired patents are construed and applied to your invention to assess whether the practice of your invention will indeed infringe the preceding patent. If not, you should obtain a non-infringement opinion. If so, you may consider re-designing your invention to reduce the chance that it may be found to be an improvement of the one or more identified preceding, unexpired patents or file your improvement patent and wait for the one or more senior patents to expire before practicing the improvement (presuming the one or more senior patent holders are a reluctant licensor).

Claims Drafting: Breadth to Catch Infringers and Fees

Regarding design patents, it’s all about the drawings. Regarding utility patents, after a well written disclosure including drawings, the name of the game is the claims. While at least one claim is required for a non-provisional utility patent application, a provisional utility patent application, as a priority reference, is not examined, and does not require claims.  First draft claims may be used by the patent attorney in the preparation of a provisional patent application to assist in ensuring the written description is supportive of the claims the applicant may wish to pursue in a non-provisional utility patent application.  Some patent attorneys may use these typically broadly drafted claims as an optional summary in the provisional application and may include one or more claims after the detailed description in the application itself. Throughout this effort or a similar effort for the non-provisional application, the patent attorney attempts to fashion claims, without ambiguity, that are fully supported by the written description using terms that have been construed in previous patent infringement lawsuits and other terms that find their definitions in general-use dictionaries, technical dictionaries or are defined clearly and without ambiguity within the body of the patent application. In addition, the patent attorney attempts to address the various statutory subject matter classes (e.g., apparatus and process) to which one or more embodiments (i.e., specific examples) of the invention apply. For purposes of maximizing a patent’s legally assertable scope, the patent attorney attempts to draft claims that provide the broadest protection allowed by the state of the art as evidenced by known prior art. Due to the way the federal courts treat claims that are modified during the prosecution phase to “get around” prior art, the patent attorney also typically includes narrowing claims that he or she expects the patent examiner to find acceptable, i.e., not requiring amendment in light of the prior art known at filing. Since this can result in a number of claims and extra filing fees, discussing your business objectives with your patent attorney may lead him or her to suggest filing more than one utility patent application to maximize the prospective protection.

Foreign Filing

Have you disclosed the invention publicly or do you have a first filing of a patent application for more than a year to which you wish to claim a filing priority? If the answer to both is no, your patent attorney may ask if you are considering the filing of an application under the Patent Cooperation Treaty. This filing acts much like an international patent pending as to the member nations and entities and will eventually require filing in the regions and nations in which you wish to enforce your patent rights. But in the mean time, it can be a cost effective way to maintain an international patent pending status. If you are considering international filing or direct foreign filing (especially if you are considering filing in non-treaty countries), discuss this consideration with your patent attorney as soon as possible. He or she can more cost effectively prepare and schedule the drafting of the domestic and/or international application and coordinate with foreign patent agents, if made mindful of your international/foreign filing desires.

Post-Filing

Post-filing monitoring of the marketplace may yield the finding that your written description encompasses a new product in the market and with the exception of this new product, claims to the product would not be anticipated. In a case such as this, consider having claims drafted, in a preliminary amendment for example, to cover this new product.

In summary, by anticipating and accommodating the needs of your patent attorney for a full invention disclosure, your patent attorney is better and more quickly able to draft an enabling disclosure supportive of claims as broad as the prior art may allow, while minimizing professional fees. For those seeking investors or licensees, the added effort may yield better business and patent positioning. For those managing R&D efforts, harmonizing your technical documentation to subsume complete, or at least extensive, invention disclosing may yield both better corporate archival memory, minimize the inventor interview process, and, one hopes, yield a reduction in patent attorney billable hours.

FOR INTELLECTUAL PROPERTY ATTORNEYS:

Presently Posted Tid Bits of Advice for Copyright Attorneys can be found at copyrightlawadviser.com .

Presently Posted Tid Bits of Advice for Trademark Attorneys can be found at trademarklawadviser.com .

Presently Posted Tid Bits of Advice for Patent Attorneys can be found at patentlawadviser.com .

Additional Topical Tid Bits for IP Patent Attorneys can be found at mypatentpending.com .

MYPATENTPENDING is presently featuring a summary of the USPTO changes (August 21, 2007) in claims and continuation practice and procedure and continues to feature a summary of the US Supreme Court case of  KSR v. Teleflex and its implications for patent examiners, and/or third parties, finding motivations and stating reasons for combining prior art to find a claim obvious and accordingly unpantentable/invalid.