navigating the patent maze

Reluctance or resistance to having a patent lawyer review articles for publication before submission is sometimes due to a lack of understanding about the purpose of the review.   The typical review is to identify material not contained in a patent application.   For this, time is needed to decide whether or not to submit the material in an application.  In this case, delaying submission of the article for a period of time is pretty much unavoidable.  A second reason, which is at least as important, is to ensure that the discussion is consistant with patent and business strategy.  The editing changes required for this are generally minimal and don’t invoke much of a delay. 

Pretty much all patent lawyers have at least one horror story about an inventor who wrote (or said) something inappropriate, which became a stumbling point.  While live presentations are harder for a patent lawyer to monitor, the written word at least offers an opportunity to avoid future problems.  In my experience, most of the issues in a paper for submission to a scientific journal are found in the background / introduction and the discussion sections.    For example:  in the background section of a  paper containing all the experiments and ideas that had been submitted in a patent application, the authors’ own work was described as the "obvious next step".  Wrong choice of words.  Even though "obvious" in this context was not meant as patent-legal "obviousness", a patent office would likely interpret the statement as an admission that the invention was obvious. 

In the extreme, a paper published after filing of a patent application and that was inconsistent with the invention has led to invalidation of the patent.  In Research Corporation Technologies v. Microsoft (Dist. Ct. Az. 2006), the patent was directed to a "blue noise mask" used in procedures to halftone digital images.  The stated advantages of the mask procedure - "visually pleasing" and lacking "low frequency graininess at every level of gray" - were disputed in the journal article, written by the inventors.  In the article, the inventors found the procedure led to "visually annoying clumps".  Worse still, this publication was not disclosed to the U.S. Patent Office as required by the patent rules.  The result?  The patent was invalidated and Microsoft also won $8 million in attorney fees because of RCT’s egregious behavior. 

So, as a researcher who wants your work published, please realize that the patent lawyer is just trying to ensure smooth sailing for you and your invention.