A question I am asked often is, "once I have the patent, will a competitor be able to get around it by copying the invention with just a modest change so that they no longer infringe?"
For example, if I have a patent on a table, and the patent claims recite that the table legs are joined to the surface by nails, can somebody make a table and defeat an infringement claim by joining the legs to the surface with screws?
One proactive way to defeat this would be to change the patent claim to recite that the leg is joined to the surface with a fastener, and then in the specification state that appropriate fasteners may be nails, screws, or other such implements. But after the fact, if we claim nails, can somebody just switch to screws and not be liable for infringement?
Probably not. Since the mid-nineteenth century, the courts have recognized a "Doctrine of Equivalents". The rationale is that patent law would be very weak if it were so easily defeated, to the extent that inventors would lose their incentive to innovate.
If it is clear to a jury that the alleged infringing design "performs substantially the same function in substantially the same way to obtain the same result," then it infringes the patent under the Doctrine of Equivalents. In our table example, joining the table leg with a screw most likely meets this test, so even if our patent recited nails and a competitor made their table with screws, they will likely be held liable for infringement even though our patent says nothing about screws.
Who determines whether the substituted design element is substantially the same? This comes back to the Person Having Ordinary Skill In The Art ("PHOSITA"). If a PHOSITA would recognize the substitution as one of just two interchangeable parts, then it is substantially the same. That is why this is a jury question. There will likely be testimony as to what a person skilled in the art would or would not recognize as being interchangeable, and a jury makes the credibility determination as to which side's assertion about what a PHOSITA would know is more likely.
The Doctrine of Equivalents helps assure strong patent rights, by ensuring a competitor can't pirate a patented invention by making some insignificant change that gets the device legally outside of what is literally claimed, while retaining the essence of the patented invention. In most instances a competitor won't be able to get around your patent because a court would invoke the Doctrine of Equivalents to find infringement.
Litigation is expensive, however, so the best solution is to employ a skilled patent drafter with the skills to protect your invention such that it is difficult for a copier to find an insignificant change to make that isn't already covered by the patent.
Wednesday, March 30, 2011
Wednesday, March 23, 2011
The Reason for Patents
The most basic definition of a patent is an exchange between an inventor and the government representing the people.
The inventor has something of value that is needed by the people. That thing of value is the knowledge to construct something innovative that doesn't currently exist. The government, representing the people, wants to elicit that knowledge from the inventor so that everyone can have access to the innovation.
An inventor may not be so willing to just give up the knowledge gained through hard work, however. This isn't apparent with all inventions, but consider a formula, such as the recipe for Coca-Cola, invented by John Pemberton in 1886. Rather than tell us how to make the soft drink, Dr. Pemberton decided to keep the recipe a secret so that only he could make it and profit from the invention. The result? The formula for Coke is a "trade secret". Rather than the recipe being in the public domain, where it could be commoditized and sold inexpensively, instead there is only one source for Coca-Cola which keeps the price artificially high.
Instead, Dr. Pemberton could have sought a patent for his invention from the government. In exchange for a disclosure of the formula, the U.S. might have awarded Dr. Pemberton the exclusive right - a monopoly - to make Coca-Cola for a period of 17 years. But at the end of that period, the rights would pass into the public domain, meaning that anybody could make and sell the product.
Another invention at about the same time was the common breakfast cereal, Shredded Wheat, invented in 1893. A patent was applied and granted for the machinery that made Shredded Wheat biscuits for the cereal. The manufacturer enjoyed a monopoly on the sale of Shredded Wheat, after which time the rights to manufacturer the cereal passed into the public domain. (That's not all - in a landmark trademark case, the right to the name "Shredded Wheat" was held to have passed into the public domain at the same time.) Today, you'll see multiple makers of cereal called Shredded Wheat at the grocery store, but there's only one Coca-Cola. The difference? The Shredded Wheat company got a patent, enjoyed their monopoly, and now anyone can make it. But Coca-Cola was and continues to be held as a trade secret, so only the Coca-Cola company can make it (or license it to bottlers, as the case may be).
This illustrates the basic bargain embodied in a patent. In exchange for the inventor telling us how to make the invention, so that we can all benefit from the knowledge and work that went into the new finding, the inventor is granted a time-limited exclusive right to "practice the invention" (in other words, to make it, sell it, use it, etc.). This basic concept informs several tenets of patent law. For example:
- It is in the interest of the government to get the knowledge into the public's hands as quickly as possible. To facilitate that, the government forces inventors to apply for their patents within one year of public disclosure or sale. Otherwise, the right to a patent monopoly is lost. An inventor can't extend the monopoly period by selling the product until a competitor also figures out how to make the product, and then filing for a patent on the invention.
- If a central part of the exchange is the inventor's knowledge about how to make the invention, then that information has to be disclosed in the application in sufficient detail to allow the rest of us to do so. Patent applications can be rejected for lack of specificity. How much detail is required? In general, a person having ordinary skill in the art must be able to use the information disclosed in the application to practice the invention. There's even an acronym here that patent practitioners throw around: "PHOSITA". If a PHOSITA would understand how to make the invention after reading the contents of a patent if it were to issue, then there is sufficient content in the application.
As an inventor, if there's an aspect of patent law that seems unfair or hard to understand, always go back to the basic bargain between the inventor and the U.S. government: the monopoly rights in exchange for the rest of us receiving information about how to make and use the invention. Remember, as an inventor, you don't get awarded a monopoly just for being clever and innovative. You are giving something to your country, but in order for that to be a fair exchange, you have to be giving something of value to receive a monopoly. That means something that nobody has ever invented, and a disclosure of it in sufficient detail that we can all eventually have it.
The inventor has something of value that is needed by the people. That thing of value is the knowledge to construct something innovative that doesn't currently exist. The government, representing the people, wants to elicit that knowledge from the inventor so that everyone can have access to the innovation.
An inventor may not be so willing to just give up the knowledge gained through hard work, however. This isn't apparent with all inventions, but consider a formula, such as the recipe for Coca-Cola, invented by John Pemberton in 1886. Rather than tell us how to make the soft drink, Dr. Pemberton decided to keep the recipe a secret so that only he could make it and profit from the invention. The result? The formula for Coke is a "trade secret". Rather than the recipe being in the public domain, where it could be commoditized and sold inexpensively, instead there is only one source for Coca-Cola which keeps the price artificially high.
Instead, Dr. Pemberton could have sought a patent for his invention from the government. In exchange for a disclosure of the formula, the U.S. might have awarded Dr. Pemberton the exclusive right - a monopoly - to make Coca-Cola for a period of 17 years. But at the end of that period, the rights would pass into the public domain, meaning that anybody could make and sell the product.
Another invention at about the same time was the common breakfast cereal, Shredded Wheat, invented in 1893. A patent was applied and granted for the machinery that made Shredded Wheat biscuits for the cereal. The manufacturer enjoyed a monopoly on the sale of Shredded Wheat, after which time the rights to manufacturer the cereal passed into the public domain. (That's not all - in a landmark trademark case, the right to the name "Shredded Wheat" was held to have passed into the public domain at the same time.) Today, you'll see multiple makers of cereal called Shredded Wheat at the grocery store, but there's only one Coca-Cola. The difference? The Shredded Wheat company got a patent, enjoyed their monopoly, and now anyone can make it. But Coca-Cola was and continues to be held as a trade secret, so only the Coca-Cola company can make it (or license it to bottlers, as the case may be).
This illustrates the basic bargain embodied in a patent. In exchange for the inventor telling us how to make the invention, so that we can all benefit from the knowledge and work that went into the new finding, the inventor is granted a time-limited exclusive right to "practice the invention" (in other words, to make it, sell it, use it, etc.). This basic concept informs several tenets of patent law. For example:
- It is in the interest of the government to get the knowledge into the public's hands as quickly as possible. To facilitate that, the government forces inventors to apply for their patents within one year of public disclosure or sale. Otherwise, the right to a patent monopoly is lost. An inventor can't extend the monopoly period by selling the product until a competitor also figures out how to make the product, and then filing for a patent on the invention.
- If a central part of the exchange is the inventor's knowledge about how to make the invention, then that information has to be disclosed in the application in sufficient detail to allow the rest of us to do so. Patent applications can be rejected for lack of specificity. How much detail is required? In general, a person having ordinary skill in the art must be able to use the information disclosed in the application to practice the invention. There's even an acronym here that patent practitioners throw around: "PHOSITA". If a PHOSITA would understand how to make the invention after reading the contents of a patent if it were to issue, then there is sufficient content in the application.
As an inventor, if there's an aspect of patent law that seems unfair or hard to understand, always go back to the basic bargain between the inventor and the U.S. government: the monopoly rights in exchange for the rest of us receiving information about how to make and use the invention. Remember, as an inventor, you don't get awarded a monopoly just for being clever and innovative. You are giving something to your country, but in order for that to be a fair exchange, you have to be giving something of value to receive a monopoly. That means something that nobody has ever invented, and a disclosure of it in sufficient detail that we can all eventually have it.
Tuesday, March 15, 2011
What can Monk teach you about patent law?
Also titled "can you patent something that is considered immoral?"
My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.
It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the "assassination machine" was "he won't be able to get a patent for that invention!"
Perhaps that means I think about patent law too much of the time, but it's true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.
The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I'm not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you've seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.
The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that's too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it's going to get mixed like a conventional fountain soda.
So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn't be liable for infringement. That's a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn't that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, "hey, we're doing something immoral."
In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.
So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren't patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).
But "...inventions that are injurious to the well-being, good policy, or sound morals of society..." are unpatentable, including "a new invention to poison people, or to promote debauchery, or to facilitate private assassination." (This language is from Lowell v. Lewis, a case from 1817.)
So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.
My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.
It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the "assassination machine" was "he won't be able to get a patent for that invention!"
Perhaps that means I think about patent law too much of the time, but it's true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.
The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I'm not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you've seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.
The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that's too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it's going to get mixed like a conventional fountain soda.
So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn't be liable for infringement. That's a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn't that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, "hey, we're doing something immoral."
In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.
So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren't patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).
But "...inventions that are injurious to the well-being, good policy, or sound morals of society..." are unpatentable, including "a new invention to poison people, or to promote debauchery, or to facilitate private assassination." (This language is from Lowell v. Lewis, a case from 1817.)
So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.
Monday, March 14, 2011
Application Publishing Revisited
In a prior post, I discussed the publication of applications for patents in the United States. For inventors who seek patent protection exclusively in the United States, there is an option for the application not to be published. For many, this is a good choice. Publishing of the application does have a benefit that is worth noting, however.
The benefit is in the area of damages in an infringement suit. Let's say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.
There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.
These options are available to you after you are issued the patent. In other words, you can't enjoin someone from selling the knockoff until after the patent issues. And normally, you can't receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.
If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for "provisional damages": compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.
The damages for this time period are limited to a "reasonable royalty". You can't make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren't guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.
Here's the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.
The benefit is in the area of damages in an infringement suit. Let's say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.
There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.
These options are available to you after you are issued the patent. In other words, you can't enjoin someone from selling the knockoff until after the patent issues. And normally, you can't receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.
If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for "provisional damages": compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.
The damages for this time period are limited to a "reasonable royalty". You can't make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren't guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.
Here's the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.
Wednesday, March 9, 2011
Patent Reform passes the U.S. Senate
Yesterday (Tuesday, March 8th), the United States Senate passed the "America Invests Act of 2011" by a vote of 95-5. As I have previously written on this blog, the act is a significant overhaul of the patent system in the U.S. The House of Representatives will be next to take up patent reform. Given the different political makeup in the House, it will be interesting to see whether the same provisions are in that bill, or if a serious attempt to retain our "First to Invent" system will be made.
Meanwhile, I thought I would post about another interesting provision of the bill that was passed yesterday: the establishment of a separate discounted fee for "micro-entities". Currently, many PTO fees are halved for individuals and organizations with fewer than 500 employees. On the fee calculation worksheets, there is a checkbox for "Small Entity" status which I check for most of my clients.
Inherent in the new bill is a new category, the "micro-entity". Individual inventors will qualify for micro-entity status under the bill and be eligible for a 75% discount on many of their fees. Now, assuming individuals can beat larger, well-funded inventive entities in the race to the filing window that will be the result of the shift to "First to File", the prize is they are at least eligible for a reduced cost of dealing with the Patent and Trademark Office.
Meanwhile, I thought I would post about another interesting provision of the bill that was passed yesterday: the establishment of a separate discounted fee for "micro-entities". Currently, many PTO fees are halved for individuals and organizations with fewer than 500 employees. On the fee calculation worksheets, there is a checkbox for "Small Entity" status which I check for most of my clients.
Inherent in the new bill is a new category, the "micro-entity". Individual inventors will qualify for micro-entity status under the bill and be eligible for a 75% discount on many of their fees. Now, assuming individuals can beat larger, well-funded inventive entities in the race to the filing window that will be the result of the shift to "First to File", the prize is they are at least eligible for a reduced cost of dealing with the Patent and Trademark Office.
Friday, March 4, 2011
First to File Remains
Yesterday, Senator Feinstein's amendment to remove the "First to File" provisions from S.23, the "America Invents Act of 2011", née the "Patent Reform Act of 2011", was voted upon and did not have the votes. "First to File" remains in the current patent reform effort.
Historically, "First to File" has been looked at with less favor in the House, so the House version of the bill may retain the "First to Invent" system, leaving the discrepancy to be sorted out in a conference committee.
More to come...
Historically, "First to File" has been looked at with less favor in the House, so the House version of the bill may retain the "First to Invent" system, leaving the discrepancy to be sorted out in a conference committee.
More to come...
Thursday, March 3, 2011
Patent Reform Debate Continues
The "America Invents Act of 2011" is still being debated in the Senate. Among the amendments that have been made to the bill so far is an end to "fee diversion."
The Patent and Trademark Office generates a large pool of revenue, and some of that cash has gone to fund other federal government activities. But the PTO needs more money to increase its modernization, and to hire more examiners to help reduce the backlog of unexamined applications for patents.
The end to the fee diversion means the PTO will be able to keep and spend more of the money it takes in. One eventual outcome may be that the three-year time period it generally takes from the time a non-provisional patent application is filed until a patent is issued will be reduced.
As I previously discussed in this blog, a key provision of the act is transforming our patent system to a "First to File" system, harmonizing our patent law with most of the rest of the world in this respect. It was thought that Senator Feinstein of California would introduce an amendment stripping the change to "First to File" from the bill, but it hasn't happened yet and may not.
Yesterday's amendment featuring the move to let the PTO keep more of the revenue it generates by ending fee diversion shows the Senate is serious about making progress on this bill. Patent reform has not made it through Congress in previous sessions, but it seems likely we will get some movement in 2011. Of course, the House of Representatives will need to pass its own bill and then the two bills must be reconciled, but Senator Leahy, the primary sponsor of the America Invents Act of 2011 seems to believe that all will happen quickly.
More to come...
The Patent and Trademark Office generates a large pool of revenue, and some of that cash has gone to fund other federal government activities. But the PTO needs more money to increase its modernization, and to hire more examiners to help reduce the backlog of unexamined applications for patents.
The end to the fee diversion means the PTO will be able to keep and spend more of the money it takes in. One eventual outcome may be that the three-year time period it generally takes from the time a non-provisional patent application is filed until a patent is issued will be reduced.
As I previously discussed in this blog, a key provision of the act is transforming our patent system to a "First to File" system, harmonizing our patent law with most of the rest of the world in this respect. It was thought that Senator Feinstein of California would introduce an amendment stripping the change to "First to File" from the bill, but it hasn't happened yet and may not.
Yesterday's amendment featuring the move to let the PTO keep more of the revenue it generates by ending fee diversion shows the Senate is serious about making progress on this bill. Patent reform has not made it through Congress in previous sessions, but it seems likely we will get some movement in 2011. Of course, the House of Representatives will need to pass its own bill and then the two bills must be reconciled, but Senator Leahy, the primary sponsor of the America Invents Act of 2011 seems to believe that all will happen quickly.
More to come...
Wednesday, March 2, 2011
"At least", and support in the specification
Patent application drafters generally try to write applications that result in inventions being defined with a broad scope. A patent is essentially a property right, so wouldn't an inventor would want the patent practitioner to try to acquire rights in the most property possible?
One way patent practitioners accomplish that is to sprinkle the term "at least" liberally through the application. For example, pretend that the bicycle had never been invented, and an inventor sought patent protection for the two-wheeled pedaled-vehicle. But it might be desirable to hold the property right for pedaled-vehicles with more wheels that might be invented in the future. Say, a tricycle for example.
To ensure the inventor receives protection for both the current bicycle, but also for future refinements in pedaled-vehicles that have additional wheels such as the tricycle, a patent practitioner might compose one of the patent claims like this:
A pedaled-vehicle, said pedaled-vehicle having at least two wheels.
I wouldn't write a claim like that for various reasons, but it illustrates that the inventor's bicycle having two wheels is encompassed by the claim, as is a tricycle invented by someone else in the future.
So is "at least" the best way to get an extremely broad patent? A recent U.S. District Court case shows what can happen if this is done carelessly. In MagSil v. Seagate, decided about two weeks ago in the District Court for Delaware, a claim using the term "at least" was invalidated because there was no support for the claim in the patent's specification.
A patent specification must enable someone (not just any someone, but a PHOSITA, the meaning of which is a post for different day) to be able to make the patented invention. If the patent application contains "at least" in the claims, without there being a top end to the range, the specification must give some idea of how to construct the invention having virtually any number of whatever is being claimed. Otherwise, you haven't properly told another how to make the device you are claiming.
In MagSil, the claim in question had a value for resistance, and the claim specified "at least" a certain resistance. At the time the claim was written, the inventor had no idea that technology would progress to the point that a version of the device with the high resistance used in the eventual device was even possible.
Years later, another company came up with a design for a high-resistance device that was technically within the range specified by the claim, and got sued for infringement. They successfully defended on the grounds that the inventor had not specifically detailed how to construct a device with that much resistance in the specification.
The moral of the story is that when using the term "at least," it is important to reasonably bound the range with support in the specification for the range being claimed. Or, use claim language other than "at least" that still captures future variations.
One way patent practitioners accomplish that is to sprinkle the term "at least" liberally through the application. For example, pretend that the bicycle had never been invented, and an inventor sought patent protection for the two-wheeled pedaled-vehicle. But it might be desirable to hold the property right for pedaled-vehicles with more wheels that might be invented in the future. Say, a tricycle for example.
To ensure the inventor receives protection for both the current bicycle, but also for future refinements in pedaled-vehicles that have additional wheels such as the tricycle, a patent practitioner might compose one of the patent claims like this:
A pedaled-vehicle, said pedaled-vehicle having at least two wheels.
I wouldn't write a claim like that for various reasons, but it illustrates that the inventor's bicycle having two wheels is encompassed by the claim, as is a tricycle invented by someone else in the future.
So is "at least" the best way to get an extremely broad patent? A recent U.S. District Court case shows what can happen if this is done carelessly. In MagSil v. Seagate, decided about two weeks ago in the District Court for Delaware, a claim using the term "at least" was invalidated because there was no support for the claim in the patent's specification.
A patent specification must enable someone (not just any someone, but a PHOSITA, the meaning of which is a post for different day) to be able to make the patented invention. If the patent application contains "at least" in the claims, without there being a top end to the range, the specification must give some idea of how to construct the invention having virtually any number of whatever is being claimed. Otherwise, you haven't properly told another how to make the device you are claiming.
In MagSil, the claim in question had a value for resistance, and the claim specified "at least" a certain resistance. At the time the claim was written, the inventor had no idea that technology would progress to the point that a version of the device with the high resistance used in the eventual device was even possible.
Years later, another company came up with a design for a high-resistance device that was technically within the range specified by the claim, and got sued for infringement. They successfully defended on the grounds that the inventor had not specifically detailed how to construct a device with that much resistance in the specification.
The moral of the story is that when using the term "at least," it is important to reasonably bound the range with support in the specification for the range being claimed. Or, use claim language other than "at least" that still captures future variations.
Subscribe to:
Posts (Atom)