International Patent Matters from a Canadian Patent Lawyer’s Perspective

How can a Disclaimer broaden a patent claim???

Hershkovitz v. Tyco Safety Products Canada Ltd

Canadian Federal Court of Appeal

Sometimes decisions are made by the courts that make you angry. And other times they just make you sad. This is a case that falls into both categories: Hershkovitz v. Tyco Safety Products Canada Ltd. 2010 FCA 190 Date: July 19, 2010

Patent 2,169,670, relates to an electronic circuit known as a telephone line coupler. A telephone line coupler is used to connect electronic equipment, such as a telephone or alarm system to a telephone line, while providing electrical isolation. The electrical isolation is necessary to protect equipment from power surges and unwanted signals. The electrical isolation is achieved by using optical-electronic components called “opto-couplers”. There’s no need to examine this patent further other than to observe that the patentee, by way of a “disclaimer” introduced into the scope of coverage of the claims the requirement that the following additional features must be present:

“(1) a receive opto-coupler (2) connected (3) in series (4) with the transmit opto-coupler [means] (5) on the line side (6) to draw a minimum of current (7) to place a light-emitting diode (8) of the receive opto-coupler (9) in an operational range.

These features were fully identified in the disclosure as originally filed.

It is perhaps important to note that the Trial Judge then added the observation:

“The Court notes that these newly added elements are considered by the inventor himself as being (1) inventive elements and (2) resulting in new combinations…”

an observation apparently adopted not only by the Trial Court in making its ruling but by the Court of Appeal as well. The implication is that these words pointed the scope of patent coverage in a new direction.

Focusing on the decision in the Court of Appeal, which perpetuates the errors made in the court below, the appeal judgment addressed the first issue as being: Was the disclaimer invalid because it added new inventive elements to the invention?

The Appeal Court found no error in the Trial Court’s decision that the appellant’s disclaimer broadened the scope of the patent by adding new inventive elements to it. On this basis, the disclaimer was held to be invalid. Worse, the Appeal Court endorsed the methodology of the Trial Court, namely of proceeding by construing the claims in the patent both before and as modified by the disclaimer, and then comparing the two in order to conclude that the claim had been broadened.

Before addressing why this is an erroneous approach, it should be observed that the Appeal Court decision makes the following observations on the nature and fundamental principles of patent law:

“At its essence, the patent system is a bargain between the public and inventors”
“An inventor can obtain a patent for any “new and useful art, process, machine, manufacture or composition of matter”….. The patent gives its holder, the patentee, a time-limited exclusive right to make, construct, use and sell the invention: section 42 of the Act. There is a quid pro quo.
“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.
“To be novel the invention must not have been previously made known to the public.
“…an inventor can only claim that which he invented. If an inventor claims more than was invented, the subject-matter of the patent will be too broad. This makes the bargain unfair – the inventor ends up with the exclusive right to exploit subject-matters not invented and not disclosed to the public. Simply put, patents cannot be overbroad.

“. . . a patentee may later discover that part of the invention falls short on one of the three criteria for patentability.

“Sometimes the patentee can address the deficiency upon discovering that part of the invention falls short on one of the three criteria for patentability. Where the deficiency is as a result of a mistake, accident or inadvertence, the patentee may renounce that part of the invention that falls short. …. Renunciation is accomplished by filing with the Patent Office a document called a “disclaimer”: section 48 of the Act. Section 48 provides as follows:

48. Patentee may disclaim anything included in patent by mistake

(1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

(a) made a specification [i.e. the claims and disclosure found in the patentee’s patent application] too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.

“The filing of a disclaimer narrows the scope of the patent. The narrowing of the scope of the patent happens automatically upon filing the disclaimer: the Patent Office does not have to assess and approve the disclaimer. As long as the disclaimer is in the prescribed form, the Patent Office registers it.

“When the patentee files a disclaimer, the scope of the patent exclusivity enjoyed by the inventor is reduced.
“Disclaimers that broaden the scope of a patent are invalid.
“In the view of the Federal Court [trial division], this was an invalid broadening of the scope of the patent through disclaimer.

“[34] In this Court, the appellants cast their challenge to the Federal Court’s ruling on this point very narrowly. They challenged the Federal Court’s finding that the disclaimer introduced, as a new inventive element, a connection between the receive opto-coupler and the transmit opto-coupler. However, even if the Federal Court were wrong on that, its finding that the disclaimer improperly introduced a number of other new inventive elements would remain. For example, in this Court, the appellants did not challenge the finding that “a minimum of current to place a light emitting diode of said receive opto-coupler in an operational range” broadened the scope of the patent. They failed to challenge any of the other elements that the Federal Court described in the above passage, which, in its view, broadened the scope of the patent. Whether or not the appellants’ narrow submission is correct, it does not matter in the end result: the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.

“[35] Because of the rather narrow focus of the appellants’ arguments concerning the above passage, it is not necessary for this Court to examine each of the nine inventive elements identified by the Federal Court and assess whether they are indeed inventive elements. In some cases, this might be necessary. There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”
[End of quotations from Court decision]

 

This ruling is a disaster. It not only does great damage to the provisions in the Act that permit a patentee to file a disclaimer, but it does so on the basis of a logical reasoning which is seriously deficient.

Adding new limitations to a claim does not broaden the scope of a patent monopoly. The claim has a scope before the new limitations are added, and after the new limitations are added that scope has been reduced because anything not including the new limitations is now excluded. A properly formulated disclaimer can never broaden the scope of coverage of a patent.

A key feature of a disclaimer is that it is available in cases where a specification [i.e. the claims and disclosure found in the patentee’s patent application] has been made too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor. (Reference to “more than that… the person… was the inventor” is old-fashioned language meaning that the subject claims covered pre-existing prior art. Hence such person was not the “inventor”.)

By permitting disclaimers, a patent claim that violates the Golden Rule of patent law (by extending to cover the prior art) can be repaired by truncating its scope.

There are two ways by which the scope of a patent claim can be limited. One is to declare that claim coverage specific to a prior art configuration that has been discovered after the scope of the claims has been settled through examination are not to be covered by the claim - coverage of such specific prior art is disclaimed. The other way by which the scope of a patent claim can be limited is to stipulate that coverage is to extend only to embodiments of the invention having a specific feature that is not present in the prior art. Properly, the specific feature must also be identified in the patent specification as being available to serve as part of the invention to be covered by the patent. Examples would be appropriate.

Example 1

Claim: I claim a pencil having an eraser attached to the end of the pencil.

Prior art: a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil

Disclaimer: I disclaim the case of a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil.

Example 2

Claim and prior art as above.

Disclaimer: I disclaim the cases of all pencils not having a brass sleeve fitted at the end of the pencil to hold the eraser in place.

In the first case, the disclaimer is specific to an example of prior art. In the second case the disclaimer adopts a limitation taken from the disclosure in the original patent filing and makes this a requirement for something to fall within the scope of the claim in order to infringe. The first example, whether appropriate or not, is not permissible under the patent rules. The rules stipulate that a disclaimer, other than the entire cancellation of a claim, must be formulated according to the following statement:

“The patentee disclaims the entirety of claim with the exception of the following:
http://laws.justice.gc.ca/eng/SOR-96-423/page-5.html#anchorsc:1

Following this procedure, the original claim may then be set out in its entirety with further limitations being added to it. This is the well-known procedure in patent law of narrowing the scope of a patent claim.

How could the Court invalidate the disclaimer on the basis that: “the disclaimer improperly introduced a number of other new inventive elements….” and “the Federal Court (trial division) has found that the disclaimer, by broadening the original claims in the patent, is invalid”? Not only did the Court on Appeal refuse to depart from the decision of the Trial Division but they also endorsed this by adding:

“the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.”

The Court then went on to make the novel and strange observations that:

“There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”

This new distinction seems to be related to the earlier statement taken from the Supreme Court of Canada decision in Free World Trust v. Electro Sante Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66 that:

“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.”

This parsing of claims into essential and nonessential elements is derived from the British House of Lords Catnic decision, Catnic Components Ltd v Hill & Smith Ltd (1982) R.P.C. 183 and the subsequent UK Court of Appeal Improver decision, Improver Corporation v Remington Consumer Product Limited [1990] F.S.R. 181. This adoption of the concept of essential and nonessential elements was made without reference to the subsequent British House of Lords decision in Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 (2004-10-21)

http://en.wikipedia.org/wiki/Kirin-Amgen_v_Hoechst_Marion_Roussel
http://www.claytonutz.com/publications/newsletters/life_sciences_insights/20050715/oh_my_lord-the_house_of_lords_clarifies_uk_patent_law.page

which clarifies the intent of the Catnic decision and nullifies the parsing of claims into essential and nonessential elements as the proper method for claim interpretation. That distinction was in reality a residue from the pre-Catnic law principle that the Doctrine of Equivalents cannot operate at the point of invention.

Not only does the present Court of Appeal decision maintain the distinction between essential and nonessential elements in a patent claim, but it also introduces the concept that claims may add inventive elements as well as essential elements, vis: “There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.” The reality is that adding limitations to a claim cannot broaden its scope. This analysis is hopelessly wrong.

A further effort might be invested in determining whether there were good policy reasons for reaching the same decision on other grounds such as the inventor’s understanding at the time of the patent grant, but for now, we have to decide whether to be either angry or sad at the direction that a decision such as this will point the law in the future.

David J. French
Ottawa, Canada

Posted in Patents, Canadian Law, For Attorneys August 11th, 2010 by David J. French | No comments

Patenting Software in Canada

                                        Patenting Software in Canada

While the world waits for the US Supreme Court decision in the Bilski case, the Canadian Patent Office is going forward with establishing its policies as to when patents can be granted for software inventions in Canada. They have done so by publishing a draft revision to the Patent Office manual that addresses this issue.

The Canadian Patent Office publishes the Manual of Patent Office Practice - MOPOP - to serve as a guide for both examiners and the public regarding patenting in Canada. On June 16 CIPO began its consultation on a draft revision to Chapter 16 of the MOPOP which addresses the subject of “Computer-Implemented Inventions”.  CIPO invites comments in response up until August 19, 2010. Thereafter, the response will be evaluated in the development of a final policy to be adopted regarding computer-implemented inventions. Note: Comments submitted will be posted on CIPO’s website for public viewing.

This draft chapter is 41 pages long and is available at this link:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00758.html

The issue addressed goes to the very heart of the patent system: What sort of things should be patentable. Policy wise, patents should probably be granted for things that need to be encouraged to come into existence and would be less likely to arise without the incentive of a patent right to motivate human initiative. In the past, stemming from the Statute of Monopolies in 1624, patents were intended to introduce “new manners of manufacture” into the land. In the last hundred years, the premise for the granting of patents has shifted from establishing new enterprises to encouraging the disclosure of inventive concepts. But we can still ask, inventive concepts regarding what types of things?

The Canadian statute, borrowing from the US Patent Act of 1836, recites that patents are to be granted for “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This is the definition of an “invention” under the Act. This statutory language was last addressed by Parliament in 1936. There’s no doubt that the issue raised by Chapter 16 of the MOPOP was far from the minds of any Member of Parliament at the time. 

The issue is: to what extent can computer-implemented inventions be said to qualify under the definition of “invention” and therefore be qualified for the granting of a patent in Canada.

As long as hardware is involved, there is virtually no doubt that a patent can be granted if the other requirements for patentability, namely novelty and unobviousness, are met. The more difficult issue arises when the novelty resides in the manner of organizing or treating information, or surrogates for information, in the form of electric signals. This is the strength of computers. The information that they sort and analyze is valuable because it represents an analog to the real world. The mere fact that a computer process is used to carry out some other tangible activity, such as adjusting the color of paint in a paint production line, should not disqualify the overall process from being patented. The difficulty arises when the invention, the purported invention as presented by the patent applicant, resides in the processing of the information itself. An example may prove helpful.

One of the most powerful innovations in communication and computer technology was the conception of the checksum digit as part of computer words. Originally, when computers used eight bit words based on a string of eight binary values of zero or one, one digit was reserved to be used to indicate the “parity” of the other seven digits. Thus if a computer word consisted of: 11101010, the parity of the last seven digits is established by adding the digits and checking whether the result is an even or odd number:  1 + 1 + 0 + 1 + 0 + 1 +0 =  4.  As 4 is an even number, by convention its parity is considered to be 1.  Accordingly, the first or checksum digit is given the value: 1.

There are actually numerous mathematical algorithms that can be implemented to carry out this type of function: http://en.wikipedia.org/wiki/Check_digit

They all serve to catch errors arising from the corruption of information that is being transmitted. Within a computer, this transmission is occurring millions of times a second and it’s important to catch errors when they occur. This checksum parity check doesn’t catch all errors;  two errors in one word may cancel out.  But when a single error has occurred, and the checksum digit doesn’t match, a computer circuit can be programmed to ask for the retransmission of the corrupted data until apparently valid information is received.

While this example has been given in respect of the transmission of an electronic message in binary form, it would be equally applicable to the semaphore signalling systems of earlier times. At regular intervals, a flag signal could be raised that reflects on the nature of the earlier signals. Thus the concept which constitutes a valuable advance in signalling can be divorced from the mechanical way in which it is implemented.

Should such a process be entitled to the grant of a patent?
There are two approaches.  One approach is to determine whether the new concept can be fitted within the words of the statute.  On its face, almost anything could qualify as a new and useful “art”.  But the meanings of words in the statute are constrained by the traditions of judicial interpretation.  Another approach is to go to a higher level and ask the policy question: “Is this a case where patents should be granted to encourage innovation to occur that would be less likely to arise without the incentive of a patent right to motivate human initiative?”  Some would quickly answer: “of course”, relying on the presumption that anyone who discloses a new and useful gift to humanity deserves a reward.  On the other hand, a sophisticated review of the modern economy may show that there is sufficient incentive already for people to conceive of more efficient ways to communicate, analyze and manipulate information.

Allowing that innovations that include a mechanical component are accepted as being patentable, creative patent agents can, and have in the past, conceived of very cunning ways of defining an inventive concept so that it appears to apply to something tangible. Even the semaphore system operates on the basis of flags. 

A further policy question therefore arises as to whether patents should be granted for essentially software innovations when they are presented in combination with hardware; or should a restriction be applied based on where the essential inventive feature resides.  If the inventive feature resides in the conceptual manipulation of information, should this be grounds for rejecting a patent application, even if the prospective monopoly is presented in terms of a mechanical hardware environment?

The draft revision to MOPOP guidance on this issue takes the position in section 16.08.04 that a computer program per se is considered to be an abstract scheme or set of rules that is not of itself patentable. This policy would appear to bar patenting of the higher principle arising out of the checksum concept. But it would still leave open the prospect of granting patents for such an invention when incorporated into an arrangement involving tangible components.

This presentation of a draft document to define how the Patent Office expects patent applicants to behave is a compendious analysis of the issue. It is a valuable contribution to understanding how a patent office should manage applications that address computer-implemented inventions. While everyone is awaiting the long-delayed US Supreme Court Bilski decision, this document prepared by the examiners and staff at the Canadian Intellectual Property Office, is well worth reading.

 

 

 

Posted in Patents, Canadian Law, Articles June 17th, 2010 by David J. French | 1 comment

US Law Reform: Prefiling Protection for Inventors under revised S515

 US Law Reform: Prefiling Protection for Inventors under revised S515
 
The Canadapatentblog postings of November 16, 2009 and January 31, 2010 addressed the scope of the draft novelty requirements under US Senate bill S515 as originally approved by the US Senate Judiciary Committee in April, 2009.  A proposed revision of that text has now been published by the Senate and is reproduced in the Patently’O blog posting of March 9, 2010 available here:
 
http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-proposed-first-to-file-statute.html#comments
 
The language used in this revision expresses much more clearly the apparent intent of the legislators.  The extensive Patently’O blog  commentaries on this revised text finally show that interested members of the patent profession are beginning to attempt to address the real meaning of these provisions.  These commentaries are all well worth reading.
 
In the Canadapatentblog posting of January 31, 2010, the key recommendation was that, under the new scheme being proposed, persons intending to obtain patent protection in the United States should: “file early and file often”.  Some of the key points to consider are as follows:
 
- initial priority patent filings including US Provisional applications should be as complete as possible in order to meet 35 USC 112 requirements
 
- foreign priority filings will enjoy the benefits of the US grace period provisions equally with the filing of a US Provisional application
 
- every patent filer should take advantage of the right to make additional filings during the priority year and consolidate the disclosures of all such filings into the final, non-provisional, patent application that may then be used around the world
 
- the proposed new US patent law includes a Canadian style self-originating grace period which applies to self-originating disclosures, i.e. disclosures originating from the inventor associated with the filing
 
- the proposed new US patent law includes an additional feature present in the following sections:
 
35 USC 102 (b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— …….
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…….
 
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ………
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; ………
 Read the rest of this entry »

Posted in Patents, Canadian Law, US Law, Articles, For Inventors, For Attorneys March 17th, 2010 by David J. French | No comments

First-To-File vs First-To-Invent: Why is there a Dispute?

Patent law reform legislation, for the third time, is presently pending before the US Congress. During 2009 the debate over Health Care has moved this subject to the back burner. But in the last days of 2009, initiatives are now being taken by proponents to save the old first-to-invent patentability system rather than switch to a first-to-file concept as adopted elsewhere in the world.

Defenders of the existing first-to-invent system argue that it spares inventors the burden of rushing to the patent office to make a record of their inventions. If you are the first inventor under the existing US system, then you’re entitled to delay for up to one year from the date of your conception of your invention with complete security. You may do so only so long as you are working on reducing your invention to practice, by either building an apparatus that incorporates the invention or by filing a patent application. But if an inventor is diligent in this respect, there is no rush to the patent office.

The patent law blog Patently’O run by Prof. Dennis Crouch addressed this issue once again on December 10, 2009:

http://www.patentlyo.com/patent/2009/12/the-matrix-for-first-inventor-to-file-an-experimental-investigation-into-proposed-changes-in-us-patent-law.html

This posting makes reference to a paper of December 4th by Brad Pedersen and Justin Woo of Patterson, Thuente, Skaar & Christensen, P.A. in Minneapolis entitled “The ‘Matrix’ for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law”:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1518660

Amongst numerous comments made on the Patently’O blog in response to this posting, a strong defense of the existing first-to-invent system was put forward by Ron Katznelson, whose views are representative of many of the 160,000 small business and startup companies represented by the The Small Business Coalition. These comments were based on the practical experience of small businesses and startups who count on patent rights to get themselves under way but cannot afford to comply with the early filing requirement of a first-to-file system.

Here are Ron’s comments on this issue:

“Consider an actual profile of a five-year R&D and invention effort of the Mova® system developed by my friend Steve Perlman. It is described in Steve’s Columbia University presentation available at http://j.mp/Mova-development. Slide 35 shows that no less than fifty important inventive ideas had been conceived, evaluated and tested over periods spanning months or years in the course of this system’s development (labeled by “invention” squares).

The majority of these inventions proved to be useless. During that time, only about six patent applications had been filed (labeled by “path to success” arrows). In most cases, there was no way of filing prompt and enabling applications. As Steve explains in his presentation, the prospects of such a development effort under FTF would have been dire. Because the cost, effort and time lost to have acted on every one of these inventions would have been prohibitive, this R&D team would have had to frequently face a painful dilemma as to which of these inventions should be written up and filed in a patent application.

Unfortunately, many such premature guesses would have proved wrong, so, under FTF, costly applications would be filed for some useless inventions and patent protection would be lost for other valuable inventions. Investors will not assume such risks, which is why such inventions seldom occur under FTF scenarios.”

Posted by: Ron Katznelson President of Bi-Level Technologies, Encinitas, California, Dec 16, 2009 at 08:25 AM as a comment to the Patently’O Blog of December 10, 2009.
In commenting on the Pattersen and Woo paper (above) Prof Dennis Crouch had observed in his Patently’O Blog of December 10, 2009:
“The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. While touted as a way to harmonize the US system with “first-to-file” (FTF) systems used in other countries, an experimental investigation of a matrix of two hundred typical fact patterns for two competing inventors was analyzed under all three systems (FTI, FITF and FTF) to test this assumption. Based on the matrix analysis, it appears that if FITF is adopted there likely will be changes in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system; and, it is unclear whether FITF really gets the US any closer to patent harmonization.”

Fair enough comment. But where is all this anxiety regarding a switch to a first-inventor-to-file system coming from? If you review the comments of Ron Katznelson above and the recent submissions of The Small Business Coalition on Patent Legislation in a letter sent to the U.S. SBA ( http://bit.ly/SB-Coalition-Letter-to-SBA ) , the great concern appears to be the consequences of pressuring small businesses in America, and particularly new business startups, to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood.
First some clarifying observations.

Compare “first-to-file” and “first-inventor-to-file” Read the rest of this entry »

Posted in Patents, US Law, Articles, For Inventors, For Attorneys January 31st, 2010 by David J. French | No comments

Swearing Back under a revised US patent law: 37 CFR 1.131 equivalent in S515

Dennis Crouch, as part of his Patently O blog is circulating a survey that addresses the first-to-invent/first-to-file patentability requirements. He is doing so in conjunction with a larger survey addressing the extent to which applicants are able to swear-back of prior disclosures published in the one-year grace period before their US filing date. According to the US code of federal regulations applicable to patents, 37 CFR 1.131 provides as follows:

37 CFR 1.131 Affidavit or declaration of prior invention.

(a) When any claim of an application …is rejected, the inventor of the subject matter of the rejected claim…….may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based……

A cited reference means a publication or a pending application filed by another party located by the examiner which does not claim the same invention but which nevertheless either discloses the same invention or renders the applicant’s invention obvious. Swearing-back of such a reference does not close the book on whether a valid patent will be granted. The other party may be the true first inventor and the cited reference may be associated with a public use that could eventually defeat the applicant’s eventual patent. But by forcing an applicant to make a 37 CFR 1.131 declaration, the patent office has at least applied the first-to-invent concept to the extent that the patent that will be granted is not clearly invalid: If you can’t swear back of a reference then you are not the first inventor!

Dennis Crouch has been gathering evidence on the extent to which reliance has been placed by applicants before the US patent office on this procedure. This goes to the heart of the issue as to whether a switch to the first-to-invent system would be appropriate for a revised United States patent law.

Meanwhile, bills are progressing through both the US House of Representatives and the Senate to revise the US patent law in certain fundamental respects. One of the proposed revisions will be to adopt a first-to-file system, more correctly described by its proponents as a first-inventor-to-file system. Not appreciated by virtually all of the commentators is that these two bills pending before Congress contain a remarkable provision for which there is no precedent anywhere in the world. Using Senate bill S515 as a reference, this bill includes a kind of echo of the existing 37 CFR 1.131 procedure. This legislation would amend Section 102 of the US patent law to explicitly provide as follows:

“102(b)

(b) Exceptions.–
(1) Prior inventor disclosure exception.–Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.” Read the rest of this entry »

Posted in Patents, US Law, Articles, For Attorneys November 16th, 2009 by David J. French | No comments

The Crisis in the American Patent System

                                    The Crisis in the American Patent System
   

                                                                      Part I
 

This first section is part of a multi-part paper addressing the challenges presented by the American patent system.  The first part is historical.  The second part, to follow, addresses proposals pending before Congress in 2009 to improve the operation of the American patent law in the 21st century. A further part will provide a comparative analysis of the experience of Europe and Canada with the principles of “absolute novelty”, more precisely “absolute world novelty”, adopted in those jurisdictions in 1978 and 1989 respectively.
 

                                                The Patent Crisis of the 1830s1
 

            In the 1830s, the United States was undergoing a patent crisis.  It is not the same patent crisis that it faces today, but something can be learned from what occurred in those most interesting years.
 

The Patent Act of 1790
 

            On April 10, 1790, President Washington signed the first patent statute into law.  The first patent statute did not create a Patent Office. It directed applicants to file a petition for a patent with the Secretary of State. Then the Secretary of State, the Secretary of War, and the Attorney General were to determine if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent.         
 

            The first officers given this duty were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. They called themselves collectively the “Commissioners for the Promotion of Useful Arts,” or the “Board of Arts,” although others called them the Patent Commission or Patent Board.
 

            The Patent Act of 1790 did not satisfy applicants, and it did not satisfy those who were appointed to administer it. Applicants did not like the strictness with which the Patent Board determined who should and who should not receive patents. There was no appeal from the discretion of the Patent Board. The members of the Patent Board had high positions in the Government and did not have sufficient time to spare to run the patent system.  Thomas Jefferson wrote a letter years later in 1813, stating that the investigations of patent applications had required more time than the members of the Patent Board could spare from their higher duties and that the applications had required a great deal of time to understand and treat with justice.
 

            In a 1792 letter to Dr. Hugh Williamson, the chairman of a congressional committee to revise the patent law, Jefferson wrote that it distressed him to render crude and uninformed opinions on valuable and important rights without being able to devote the full attention that the petitions deserved. He drafted a bill to reform the patent law on December 1, 1791, and discussed it with Dr. Williamson.  Mr. Jefferson’s bill would have eliminated all examination and made the Secretary of State the registrar of patents, with determinations of patent validity to be made by the courts.
 

           While Mr. Jefferson’s bill as written was not introduced into Congress, some of its provisions were incorporated into a bill that was passed as the Act of February 21, 1793. It is likely that the primary reason for the Act of 1793 was not the dissatisfaction of inventors but was the inability of the Patent Board to administer the Act of 1790 while carrying out their other duties. Read the rest of this entry »

Posted in Patents, US Law, Articles, For Inventors, For Attorneys September 11th, 2009 by David J. French | No comments

The Role of Patents in Focused Innovation

Throughout my career as a professional engineer working as a patent attorney I have repeatedly been trying to appeciate why people do not understand what patents are all about. Almost invariably, everyone who has approached me to discuss patenting has arrived with preconceived notions about the subject. I have spent a large part of my career trying to reorient those notions.

In parallel, I have come to recognize that there is a need to articulate the process by which innovators can focus on the most appropriate technology or opportunity for them to pursue. In respect of the patenting aspect, this requires an understanding of the benefits that a patent can deliver, and its limitations. It also requires an understanding of the essence of an inventive advance. This last requirement is closely related to the field of engineering.

A core concept is as follows:

The object in patenting is not simply to obtain a patent on your own product.  For a patent to be of commercial value, it should extend to and cover close alternatives that could compete with your own product. This actually requires an inventor to think about how the benefits of an invention could be achieved in other ways.

An inventor seeking to obtain a valuable and effective patent should engage in “super inventing”. This means going beyond thinking of the original invention in terms of its specifics. Every invention starts-off as an assembly of parts and processes. Instead, the invention has to be understood at its most abstract level. This will help greatly in identifying alternate variations on the original invention. The objective, for patent purposes, is to characterize the larger inventive concept in language that will encompass all of these variants.

Surprisingly, to many, most inventions change over time as inventors come to understand the invention at a deeper, or higher, level. Once alternate variations of an original invention have been identified it will often be recognized that the original invention had its own deficiencies. A modified invention can then be identified that is superior to the original concept. This process can be carried-out iteratively, with the potential for great profit. Not only can the invention be improved, but the prospects for obtaining an effective patent monopoly can be enhanced.

Many examples can be generated where this principle is demonstrated. One example that may surprise people is that of the Wright Brothers patent, granted just over 100 years ago. This patent as originally drafted was deficient in respect of the feature identified as the principle inventive advance. The Wright Brothers did not really understand their own invention.

It is the responsibility of every patent applicant to not only describe their invention in terms of how to build it, but also to define it. The Wright Brothers knew that they had not invented the idea of an airplane that would fly under power. Such a concept had been thoroughly discussed in the previous 40 years and a considerable number of attempts to build a flying vehicle had been made. Steam powered model aircraft had already flown distances on the order of half a mile. Patents are not granted for doing something for the first time; they are granted for originating the idea of how something should be done, that is, coming up with a new idea. The idea of flying was old. To obtain a patent, the Wright Brothers had to conceive of something that had not been proposed before.

The Wright Brothers believed that they had invented the idea of controlling an aircraft so that it would bank to the left or bank to the right - to achieve “roll” - by twisting the tips of the wings. They built a glider aircraft with “soft” outer wing ends that could be warped. But when this didn’t work very well they ran a rope to the tail to correct a steering problem by “slaving” the tail to turn in conjunction with the wing tips. That’s what they thought was the essence of their invention when they filed their patent application.

Once they had filed a patent application they visited the Examiner at the Patent Office in Washington. He recommended to them that they engage a patent attorney. Returning home, they located and met with a patent attorney who appreciated the importance of what they had accomplished. By then they had made their first successful flight under power using their new control system.

Eventually, this patent attorney was able to re-characterize the features that constituted the essence of the real advance that had been achieved, and amended the patent accordingly. Even then, once the patent was issued, the Wright Brothers were faced with “infringers”, including in particular Glenn Curtiss, who built aircraft with rigid wings and small, secondary, “ailerons” to control roll.

The story of the litigation that followed provides further valuable insight into the patent universe.

If you think you understand this principle then you can test it out yourself by making a list of all of the features which characterize a scrollbar on a computer screen. How many can you identify? Are you able, in one sentence, to provide defining language which will cover all of these features? If so, you are well-qualified to understand the fundamental nature and challenge faced by inventors when they set out to originally conceive and eventually patent their inventions.

More significantly, you will be well-positioned to engage in “Directed Innovation” which means conceiving inventions which have an improved prospect of being profitable.

 

 

Posted in Patents, Articles, For Inventors, For Attorneys September 8th, 2009 by David J. French | No comments

Invention Harvesting vs Directed Inventing

Gregory A. Stobbs in his 2001 book “Business Method Patents” describes how the classic corporate invention harvesting mechanism, based on filtering concepts presented by workers at the bottom of the corporation, can yield a sizeable patent portfolio in terms of numbers.   But, Stobbs warns, the results often lack focus.  Stobbs goes on to explain how more profitable patenting can be achieved by pursuing an innovation-development business model for the corporation. This involves establishing a proactive innovation procedure within the business organization.

I propose that this process be called: “Directed Inventing”.

A firm can move to a directed invention patenting program by first carrying-out an analysis within the firm as to the firm’s track record in terms of research and development, and the results achieved in terms of patents granted. These results are then compared with the objectives of the corporation and the planned initiatives that the corporation wishes to pursue in the future. The test question should always be: “Are these patents directed to features that could help the Corporation earn profits?”   Often this exercise will disclose the inadequacy of results that have been achieved by the previous corporate patenting program.  Corporate patents will in many cases be shown to lack focus.

A company’s patenting policies should be focused on innovations that have the potential to actually support corporate plans for the future.  In some firms corporate planning for the future may be very thin. In such cases, establishing a proactive patent policy should not be the firm’s first concern. Attention should be focused first on corporate plans for the future.  But when a firm does have clearly established corporate objectives for the future, these can serve as a beacon not only for evaluating inventions for possible patenting, but also for guiding the very invention process itself. Read the rest of this entry »

Posted in Patents, Articles August 18th, 2009 by David J. French | 2 comments

The Torture of Explaining to Clients - KSR

Every attorney practicing patent law has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.

Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation. Read the rest of this entry »

Posted in Uncategorized, Patents, Patent Prosecution, US Law, Articles, For Inventors, For Attorneys January 17th, 2008 by admin | No comments

US Provisionals and the Priority Year

The priority filing under the world patent system, established by the Paris Convention, reserves the first filing date for a patent application for up to one year for use in making filings in foreign countries. A United States Provisional patent application can serve as such a priority filing. However, US attorneys on occasion may not understand an important feature of the world priority filing system.

A priority filing establishes the right to file for the same subject matter essentially anywhere else in the world, reserving the original filing date, so long as the other world filings are made within one year of the first patent application filed anywhere in the world. However, this privilege may only be acquired once. It applies only to the first filing made anywhere in the world in respect of specific subject matter.

Typically, a US attorney will file a Non-provisional U. S. application within the 12 month period running from the original filing date of the U. S. Provisional application. A temptation may exist, however, to delay filings elsewhere for up to a further year. If this is done, the benefits of the original application, the Provisional application filed as much as two years earlier, will not be available in Paris Convention countries around the world. This is because the second, US Non-provisional application will not have been the first application to disclose subject matter which is also reflected in the earlier US Provisional application.

The second Non-provisional application can give rise to priority rights.
But it can only do so in respect of new matter that has not appeared in an earlier patent application filed anywhere in the world.

Thus a danger exists that, where an American applicant has already
made a U. S. Provisional filing, they may wait for up to nearly a further year beyond the date of the US Non-provisional filing before sending instructions for a filings to be made in countries outside of the United States. They may delay mistakenly assuming that they have reserved a second priority filing date based on the second, US Non-provisional filing. This would be in error.

An application made in Canada on this basis will vulnerable to any third-party disclosure that has occurred before the priority date to which the Canadian application is entitled. That priority date only applies in respect of new matter, appearing first in a foreign application, within no more than one year before the actual Canadian filing date.

The Canadian law does provide a grace period of one year running back from the actual Canadian filing date. The Canadian grace period does not extend back from the original, US Provisional priority filing date. And this one-year Canadian grace period only shelters applicants from public disclosures that originate from themselves.

If a third party has disclosed an invention publicly before a proper priority date has been established, then it is too late to file an application in Canada. Between competing inventors, Canada is on a first-to-file system, and if an independent inventor discloses an invention publicly before a priority date which can be legitimately claimed in Canada, this third-party disclosure terminates the rights of all persons other than the third-party to make a patent application in Canada.

The solution is to always make foreign filings for which priority is to be claimed within one year from the original U. S. provisional filing date.

Additionally, a US attorney should always inquire of the client as to when the invention was first made available to the public by the applicant. Arrangements must then be made to have an application on file in Canada within a year from that first event. This is due to the fact that the Canadian grace period extends back only from the actual Canadian filing date, and is not tied to any priority claim.

Posted in Patents, Patent Prosecution, Canadian Law January 11th, 2008 by admin | 3 comments

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