International Patent Matters from a Canadian Patent Lawyer’s Perspective

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

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

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