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. 
   

Like preambles for books, a claim preamble introduces the subject matter that follows.  A claim preamble is meant to name or define the thing that is to be claimed — e.g., "A sewing machine", "A transgenic yeast cell".  Preambles may also relate the purpose of the invention — e.g., "A sewing machine for stitching leather", "A method for transforming a yeast cell". 

A question about preambles often arises in the context of whether or not someone is infringing a claim.  For example, in the case of a claim preamble written as "an unleaded gasoline suitable for combustion in an automotive engine", would use of the claimed unleaded gasoline in a boat engine be infringing?  In patent law terms, does the language of the claim preamble limit the scope of the claim? 

The basic rule is that generally the preamble does not limit the claims; however, a preamble is limiting "if it recites essential structure that is important to the invention or necessary to give meaning to the claim."  Thus, if the preamble merely states the intended use or purpose of the invention, it usually does not limit the scope of the claim.  Of course, "usually does not limit" begs that there are times when it does limit the scope. 

Applying the basic rule to the example of the unleaded gas, if you concluded that it doesn’t matter what kind of engine the claimed gas composition is used in - you are right!   The stated use - in automotive engines - is an intended use, but not the only use.  (Union Oil Co v ARCO)   

Overall though, an inquiry into whether a preamble limits claim scope may require a review of the patent and patent record to determine what invention the patent intended to define and protect.  Here are some times when courts have concluded that preambles are limiting:

• when the preamble recites essential structure of the invention;
• when the preamble terms are necessary to give meaning to the claim;
• when a term in the rest of the claim refers back to the term in the preamble;
• when the preamble recites additional structure or steps highlighted in the patent texzt as important (or "preferred"). 

Nonobviousness of an invention is one of the requirements for patentability.  It is perhaps one of the most difficult concepts of patent law for scientists to comprehend.  Part of the difficulty is that the legal definition of "nonobvious" is at variance with common usage in science and in everyday life.  Probably the most criticism of the patent system by scientists is leveled at what appears to be a lax standard for nonobvious.  Of course, some patent lawyers, companies and judges also think the standard is too lax.  The difference in arguments between scientists and others mostly reflects discrepancies in understanding the legal definition and its application by the Patent Office and by Courts. 

It requires a very unusual mind to undertake the analysis of the obvious.
- Alfred North Whitehead

Before discussing the legal viewpoint of nonobvious, I’d like to illustrate a variety of ways that "obvious" is used by scientists.  In freshman physics class, we were introduced to the Feynman concept of something that was "trivially obvious to the most casual of observers".  It was clear that I was not cut out to be a physicist because rarely were these things trivially obvious to me!   As a phrase however, it denotes the lowest form of obviousness. 

Probably the most common way scientists use the word is in describing the experiment that follows from a set of results as the obvious next step.  So from a set of basic facts or observations new theories, models, or experiments are devised and are said to be obvious.  Several examples taken directly from abstracts in PubMed can be found in this post’s continuation page.  In each of these examples the author has characterized their experiment as obvious to do.  Unfortunately, as will be discussed in a future post, these uses of the word "obvious", while innocently said and in a scientific context, can be deadly if the author is trying to obtain a patent. 

Hindsight renders most ideas "obvious".  Anyone that has ever had an "AHA!" moment, whether in science or elsewhere, often views the idea as obvious - and may express the concern that someone else (or everyone else) will think of it too. 

That’s the way things come clear. All of a sudden. And then you realize how obvious they’ve been all along. - Madeleine L’Engle in "The Arm of the Starfish"

A prime example is the inventor that came into my office one day to tell me of an idea he had thought of - several years earlier!  Why did he wait so long?  Because he concluded that his breakthrough was obvious, and so others would think of it too.  But as time went on and no one proposed a similar idea, he started to realize that maybe it wasn’t so obvious.  DUH!

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Scientists and lawyers can sometimes use the same words but mean different things.  "Experimental use" is one such term.  Scientists often refer to the use of an invention  - patented or not - in performing an experiment as "experimental use".   In patent law, "experimental use" of a patented invention is an exception to the rights of the patent owner. 

The rights granted to the patent owner are to exclude others from making, using, selling or offering to sell the invention.  These rights can be circumscribed by exceptions that the granting country enumerates.  For example, in the United States some of the specific exceptions are for uses reasonably related to submission of data to the FDA (Food and Drug Administration) and for practice of patented medical or surgical procedures by medical professionals.  Note the lack of a general exception for "experimental use". 

In countries that have exceptions for experimental use, the use is generally for experimenting on the invention.  Rarely is an exception given for using the invention as intended.  A model law allowing experimental use may include exceptions for:

• determining how the invention works;
• determining the scope of the invention;
• seeking an improvement to the invention.

Thus, under an experimental use exception, a scientist may be testing different additives in PCR to find one that markedly improves amplification.  In that case, the scientist is experimenting on the invention, not using it in her experiments.  Whereas, using PCR to assay for presence of a gene sequence would be an experimental use of PCR and not an excepted use under this model.

Photograph of Barbara McClintock using a microscope from National Library of Medicine Profiles in Science website. 

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Claim construction: The past several years have been increasingly tumultuous for patent lawyers  advising
clients on the meaning of claims.  At
times the maxim and mantra of patent law — that patent claims define the “metes and boundaries” of the invention — feels like a cruel joke.  If the
Federal Circuit (one stop short of the Supreme Court) can’t agree on the
proper way to construe claims, what hope is there for the rest of us? 

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Like a good lawyer I’ll tell you that the answer "depends".  Depends on the country, depends on how long ago the patent issued, depends on the basis for the challenge. 

The United States has never had very good ways to challenge a patent unless you have lots of money and willing to take your chances in court.  Reexamination of the patent in the Patent Office has been available, is not costly, but was never really highly favored because the procedure basically excluded third parties after placing a request for reexam and also greatly favored the patent owner.  In an effort to correct the perceived imbalance, Congress amended the Patent Act in 1999 to allow greater participation of third parties in reexams; this new procedure is called inter partes reexaminations.  It was immediately clear that certain provisions of the law - especially the limitation of the requester to appeal the outcome - meant no patent lawyer would recommend the procedure.  Some of the problems in the law were fixed in amendments enacted by Congress in 2002, but not the provision limiting the scope of appeal by the third-party requester. 

Sure enough, the Patent Office’s report evaluating the reexamination proceedings confirm the sorry picture of a good idea enacted into bad law.  In a gross understatement of the problem, the report noted that "the number of [reexamination] filings did not increase at the rate anticipated.  Take a look at the chart below to see just how far off the mark of predicted use this procedure falls. 

After 5 years, the intra partes reexam had been used only a total of 53 times!!!!  Based on this dismal performance, the Patent Office solicited comments from the public and has now made 3 recommendations for improving the current system.  Let’s hope that Congress fixes it and gets it right, finally. 

The answer to this question can be had by flipping a coin - heads for dictionaries and tails for the patent text. I exaggerate a bit, but not much! In the United States, gone are any clear-cut guidelines for determining the meaning of a term in claims. The Federal Circuit (the court that hears all cases that are appealed from the trial court) has been doing “flip-flops” on this important piece of law.

One line of cases indicates that evidence intrinsic to the patent, e.g., the text of the patent, is the primary source for determining claim meaning. Extrinsic evidence, e.g., dictionaries, is only resorted to when necessary. This procedure is how I learned claim interpretation. (The analysis of the Junk DNA patents relied on this procedure.) Given that the “patentee can be his/her own lexicographer”, it makes sense. If the patent text isn’t used, then why do I write all those definitions?

The other line of cases looks to the intrinsic evidence only after establishing the “ordinary and customary meaning” of the claims as viewed from a person of skill in the art. Basically, a dictionary is first consulted. Of course, because all dictionaries don’t give the same definitions, figuring out which dictionary is appropriate (usually some sort of technical dictionary) and then which definition of those given for the term is the subject of much debate.

Hopefully, we will be put out of our misery soon. The Federal Circuit has agreed to decide on which approach is proper. The briefs are now being submitted. Maybe they will even get to the ‘right’ decision.