General Guidelines for Drafting Patent Applications: Chapter 3

CHAPTER 3 PATENTING

III.GENERAL GUIDELINES FOR DRAFTING PATENT APPLICATIONS

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It is said that only about 60% of U.S. patent applications make it through the patent office to become patents, only about 15% of the issued patents are ever commercialized, and less than 50% of the commercialized patents ever make back the money that went to the patent attorneys or agents. If those statistics are correct, only a few percent of U.S. patent applications are moneymakers for their inventors!

white space patenting shorter claimsNaturally, patent attorneys give all sorts of excuses for that dismal record. Sometimes the excuses are even valid. Some patent applications have no value because they must be filed well before anyone knows if the technology is worth anything. In the pharmaceutical field, for example, it is commonplace to write patents on drug compounds that have never even been synthesized, let alone tested in clinical trials. In those instances, the patent applications are insurance policies, protecting the value of the work done. The applications may also have a defensive value, securing intellectual property before a competitor grabs the same property.

In other instances, however, the time and money spent on patenting is simply wasted. We see this all the time. An inventor pays someone ten, twenty or even thirty thousand dollars or more to obtain a patent, and a year

or two later comes into our office wanting to sue an alleged infringer. When we look at the patent, we discover that the broadest independent claim (usually claim 1) is 30 – 50 lines long. Right away we suspect there is a problem. Long claims have lots of limitations, and are consequently almost always full of holes. Even if the infringer failed to do his homework, and is blatantly producing a product that falls within the scope of one of the claims, it is probably impractical to pursue an

infringement action through trial on such narrow claims. At the end of the day, the infringer can usually change his product in any of several minor ways to avoid infringement. It’s very sad to have to explain to an inventor

In patenting, shorter claims are usually much better than longer claims.

that all he bought with his hard-earned money was a patent that is little more than a nice wall hanging.

Some of these sad situations occur when patent counsel accepts cases without regard to how broadly the subject matter can be claimed. When I started working as a patent attorney, I was told that patent attorneys have insufficient business knowledge to judge the potential value of a technology. If the search identified problematic prior art, then our job was simply to write the best patent that could be written in view of the prior art, even if I was fairly sure that the coverage would be exceedingly narrow. I disagreed with that approach then, and I disagree with it now. From my perspective, our responsibility as patent counsel is to help our clients decide which patents (and technologies) to pursue, and which technologies to jettison.

A)Get Your Patent application On File Early

In all or substantially all countries outside the Unites States, priority of invention is determined on a “first to file” basis, i.e. whoever gets to the patent office first gets the patent. That’s also the rule for patent applications filed on or after March 17, 2013.

But previously , the USPTO used a different system based upon a “first to invent” basis. As one might imagine, that system caused all manner of confusion with respect to conception, 1 reduction to practice, 2 diligence,3 and other issues.

1 See 35 U.S.C. § 102(g) (in determining priority “there shall be considered… the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other”); Coleman v, Dines, 754 F.2d 353 (Fed. Cir. 1985); Sewall v. Walters, 21 F.3d 411 (Fed. Cir. 1994).

2 Medichem, S.A. v. Rolabo, S.L., 2006 U.S. App. LEXIS 2653 at 28 (Fed Cir. Feb. 3 2006).

3 Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996) (a party that is first to conceive but second to reduce to practice “must demonstrate reasonable diligence toward reduction to practice”).

Perhaps surprisingly, the change in law does not completely eliminate issues relating to priority, since one still has to analyze priority in terms of overlapping claims. The first to file provision also leaves an opening for parties to argue priority because in very limited circumstances (i.e., where an inventor discloses an invention, and another person files on substantially identical subject matter before the inventor files an application)4 the act

maintains a one-year grace period for disclosures made by the inventor or another who obtained the inventive subject matter from the inventor.

The critical point, however, is that now more than ever, an inventor should get his application on file as soon as possible. If funds are tight, or various technical aspects are still being worked out, that might mean filing one or

more provisional applications, discussed below. A utility application can claim priority to any number of provisionals (provisional patent applications) filed within one year of the utility application filing date. If the inventor is worried about disclosing the idea when the application is published at 18 months, then the application can be filed with a petition for non-publication. Just get something on file.

The USPTO now

uses a first to file system, a race to the patent office!

4 www.uspto.gov/news/pr/2012/12-44.jsp.

B)Good Versus Bad Patents

Good or bad? Strong or weak? Broad or narrow? What makes a good patent? The classic definition of a good patent is one that claims an invention as broadly as possible. That definition is fine as far as it goes. But it is deficient because it glosses over both of the fundamental steps in drafting a good patent, namely: (a) identifying what the “invention” is relative to the prior art and the marketplace; and (b) describing the “invention” in a manner that best serves the purposes of the particular client.

Identifying the “invention” in view of the prior art and the marketplace is not necessarily an easy task. Consider, for example, the pop-tops currently found on soda, beer, and other cans. Many years ago, soda and beer cans had pop-tops that actually popped off. The pieces that came off were usually quite sharp at the edges, and tended to cause injuries. The removed pieces also tended to find their way into lakes and streams where they damaged fish and other animals. When the first person came up with the idea of a pop-top that didn’t pop off, he almost certainly had a particular mechanism in mind. But the real contribution to the field, the one having commercial significance, was much more than any particular mechanism, or even a set of mechanisms. The “invention” was the basic idea of keeping a pop-top on a can, and the invention should have been claimed accordingly.

Instead, Simpson et al. (Nov. 1965) claimed their invention with numerous unnecessary limitations, including that the pull-tab had to have a “shallow winged cross section”. That was completely unnecessary.

1. A sheet metal pull tab particularly adapted for attachment to a tearable container portion, said pull tab being of a shallow winged channel cross section and including a web having sides and ends….

Harvey et al. (Dec. 1965), unnecessarily claimed pop-tops that had both pouring and vent openings:

1. A can and opener for establishing spaced pouring and vent openings therein, and including:

(a) a can having an imperforate wall with spaced

predetermined weakened pouring and vent areas thereon;

Even Brown et al. (Oct. 1967), who claimed what became the modern pull- tab, recited their invention with unnecessary limitations as to inner and outer stiffening beads:

1. A tab for attachment to a tear strip in a wall of a container…, comprising:

a one-piece member of sheet material…,
said member having an extending portion for

attachment to the tear strip, inner and outer edges of said member being turned to form stiffening inner and outer beads extending around at least half of the circumference of the ringlike portion of

The narrow claims didn’t stop the inventor, Ermal Fraze, from making millions of dollars on the invention,5 but the claims could have been worded more broadly. The insight that really triggered public acceptance of pop-top cans was the stiffened ringlike pull member. The broadest claim should have read “a pop-top can having a stiffened ringlike pull member”.

5 ”After tepid reception, inventor made millions on self-opening can”, Frank Greve, Knight Ridder Newspapers, Feb. 01, 2005, www.realcities.com/mld/krwashington/ 10789492.htm.

That was the inventive concept because without stiffening the pull member wouldn’t have been practical.

The difference in approach between claiming embodiments and claiming concepts can be appreciated by comparing the two diagrams immediately below. In both cases, the process of patenting is represented by two opposing funnels. In the “Bad Patent” diagram below, the inventor provides all sorts of ideas (leftmost squiggly lines) on how to solve a particular problem.

Figure 20 – Symbolic drawing Of A Bad Patent

As represented by the left-hand funnel, a patent attorney or agent reduces the inventor’s disclosure to a logical set of instructions and examples. In the right-hand funnel, the patent counsel then fluffs out those instructions and examples to cover multiple options. Sounds good, but in that scenario the counsel is merely charging a lot of money for rewriting the inventor’s disclosure.

In the “Good Patent” diagram below, the inventor still provides a disclosure as to how he solves a particular problem. But the patent counsel extracts from that disclosure a critical set of three or four elements that distinguish over the prior art (designated in bold on the left portion of the diagram). He then expands out those critical few elements into all possible choices. In reducing the “invention” to its core components, he is identifying the concept of the invention, not its implementation. It is precisely this level of reductionist thinking that is so difficult to do, and so important to filing strong patent claims.

Figure 21 – Symbolic drawing Of A Good Patent

A well-written patent claim also takes into account the needs of the inventor vis-à-vis the marketplace. Among other things, patent counsel should weigh (a) the likely cost of lengthy arguments during the patent prosecution process to achieve the greatest possible coverage against (b) the benefit of narrower claims that might still be “good enough” to keep the competition at bay. Later sections of this book discuss numerous strategies for doing just that, including avoidance of multiple independent claims to preclude restriction requirements (the outgoing funnel in the diagram). At this introductory stage, the main point is that good patenting is

a lot more than simply securing the broadest possible coverage on what the inventor thinks is the invention. A good patent means that the patent counsel took the time to see through the applicant’s disclosure, not just into it.

Above all, remember that the patent counsel’s task is much more than just describing and claiming what the inventor thinks he invented. He should also be

describing and claiming all that is inherent in that “invention”. To do this, he must thoroughly understand how the invention differs from the prior art, and devise all possible ways of embodying that difference. This generally takes much more creativity than inventing the thing in the first place. Often it takes an hour, or even several hours to understand where the inventive concept lies, and then to figure out all alternatives. The bottom line is that the invention is almost always broader than the inventor thinks it is.

C)Ways To Distinguish Good Patents From Bad Patents

The easiest way to distinguish good patents from bad is to focus on the length and number of claims. Well-drafted patents tend to have claims that are short and few in number.

(1)“Bad” Patents Tend To Have Long Claims

Consider the following claim from U.S. 4875144.6 The invention seems to be a good one, the use of fiber optics to create multiple images in a shirt or

6 U.S. 4875144 (Oct. 1989) ”Fabric with illuminated changing display”.

Patent counsel should claim all that is inherent in that “invention”, not just preferred embodiments.

other fabric. But the first claim is way too long, and contains numerous unnecessary elements.

1. A fabric with an illuminated animated display including a first frame and a second frame and comprising:

(A) a fabric outer surface;
(B) a first plurality of flexible optical fibers

each having a first end a second end; (C) a second plurality of flexible optical fibers

each having a first end and a second end; (D) said first plurality of optical fibers gathered

into a first bundle;
(E) said second plurality of optical fibers

Just for starters, why are there limitations as to the fibers being gathered into first and second bundles? A competitor could readily circumvent that claim by merely aligning the fibers in a flat connector rather than in a bundle. Second, the light sources are listed as elements of the fabric. There is no justification for that limitation; the light sources could easily be external to the fabric. Third, as disclosed in the title, the invention relates to a display that “changes”. There is no need to limit the invention to displays in which the changes create the appearance of animation.

U.S. 54450737 provides another good example of poorly drafted claims. Claim 1 recites:

This claim is very weak. Why limit the cooking chamber to having the shape of an inverted frustum of a cone? A competitor could have a four or five-sided funnel just as well. Further on in that same section the claim recites openings at the top and bottom. Those limitations are completely unnecessary for allowance, and are therefore superfluous. The next section goes on to recite that the basket has the same shape as the cooking chamber. So what? Unless that limitation is necessary for allowability, it should be omitted from the claim. The reference to “diameter” is

7 U.S. 5445073 (Aug. 1995) ”Apparatus and process for cooking potatoes”.

1. An apparatus for cooking potato pieces by heated air comprising:

a housing; a cooking chamber base within said housing, said cooking chamber base being in the shape of an inverted frustum of a cone with its larger diameter on top, said chamber being open at the top and bottom;

a removable air permeable basket in the shape of an inverted frustum of a cone similar in shape to said cooking chamber, with said basket bottom outside diameter almost equal to inside bottom diameter of cooking chamber base; said basket having a screen bottom and a removable screen cover on top;

a means for heating air, a means for blowing heated air upwardly through said cooking chamber base

(F) a portion of said second ends of said first bundle of optical fibers secured to said fabric and extending to said fabric outer surface to form at least a portion of said first and second frames of said display;

problematic because it once again forces the reader to focus on the funnel as being round. A multi-sided funnel, or even an oblong funnel, would have a perimeter without having a diameter. The references to “screen bottom” and “removable screen top” are also superfluous. The use of means-plus- function language in the third paragraph is just inexcusable. Means-plus- function limitations are so unnecessarily narrowing that their use is possibly malpractice. Here, the entire third section should have been replaced with the language “a hot air source”. The claim should have been worded as follows: