navigating the patent maze

A hefty tome on claim construction, written by Harold Wegner, has recently been released on-line. The paper, “Claim Construction: Toward a Simplified and Predictable Body of Patent Law“, was prepared for a Foley & Lardner Intellectual Property Roundtable in Detroit, September 14, 2004. This paper is not light reading. I only wish that claim construction was simple and predictable. Lately, it has become very confusing and convuluted, as Hal Wegner explains. Moreover, it appears as if there is a different standard for biotechnolgoy inventions, especially those involving nucleotide and amino acid sequences.

Stay tuned as the Federal Circuit continues to confuse us all.

I have been asked many times to give an opinion about a patent and sometimes asked if a particular use is infringing on a patent. Mostly there seems to be confusion or misunderstanding about what is an “opinion” and the necessity or not for an opinion. In U.S. patent law practice, an “opinion” is either a “non-infringement opinion” (you are not infringing the patent in question) or an “invalidity opinion” (the patent in question is invalid because of prior art) and serves a singular purpose: to protect the client against charges of willful infringement. A finding of willful infringement can inure triple damages and attorney fees for the infringer.

A variety of reasons (e.g., cost - opinions can cost tens of thousands of dollars) may encourage or discourage a client from wanting an opinion. But what are the ramifications of a decision to forego an opinion or to claim that the opinion is privileged and not disclose it? Could this infer that the client knows it is infringing?

In one of the most important Federal Circuit patent cases this year, Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corporation, et al., the Court emphatically said, “no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel.”

Under U.S. patent law,

a person shall be entitled to a patent unless–
the invention was … described in a printed publication in this or a foreign country….

While we all recognize that a printed publication includes journal articles, books, etc., and that speaking at a conference is not a printed publication, what about a poster that is presented at a conference?
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Searching patent databases is not easy for most people. My own opinion is that most search interfaces are not really ‘user friendly’ for the ordinary mortal — meaning everyone except patent lawyers and professional patent searchers. Stated reasons to search databases are mostly to do with obtaining patents or monitoring competitors. And these are good reasons for companies do do searches.

There are excellent reasons however for scientists to use patent databases even if the scientists aren’t actively involved with patenting. The number one reason is that

patent publications are an excellent source of information about methods and technologies.

For example, most scientific papers provide very skimpy details about procedures, the ‘materials and methods’ used. The ‘how to do it’ is not always present, at least in enough detail to reproduce the experiment. If however the authors have published a patent application, the methodology will be in the patent publication, typically present in excrutiatingly detailed examples.

A second good reason for scientists to search patent databases is

to obtain general information about a technology.

Sometimes companies only publish their research work as patent applications. In such cases, reading only scientific literature will not give a complete picture of a field. But skimming or reading parts of a patent application will fill in these gaps.

In other posts, I will discuss how to find patent publications of interest and how to read a patent.

A claim preamble is the introduction to the claim. It can be identified as the part of the claim occurring before the word “comprising”, “consisting of”, “consisting essentially of”, “having”, or other such words.

For example, ithe preamble in the following claim (from U.S. Patent No: 5,612,179) is in italics:

A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:
(a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele; and
(b) analyzing the amplified DNA sequence to detect the allele.

What is its significance?
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I find that many people are surprised to find out the meaning of the indefinite article “a” or “an”. When used in a patent claim after the term “comprising”, it means “one or more” and not just “one”. The article “a” is interpreted to mean “one” only in rare circumstances when it is very clear that the patentee means only one.

For example, if a claim recites: “A vector comprising a gene of interest….” then the vector may contain one or more genes of interest.

Here are some suggestions for what constitutes a well-kept lab notebook:

1- The notebook is bound.

2- Each page is dated, including the year.

3- Photographs, etc. that are taped in are marked with a line or scribble that extends onto the notebook page.

4- Pages are written on sequentially. (Use the Table of Contents or a “go to page N” “from page M” to keep track of the flow of different projects.)

5- Empty spaces of any significant size are marked out.

6- Each page is signed by the notebook keeper and a witness who has read and understood what is on each page.

7- The page should ideally be witnessed right away but at least within a short period of time after it is done.

8- If you need to amend something on the page after it is signed, put it on a new page and refer back.

9- Give each experiment a Title, write a brief Background or Purpose of the Experiment, Protocol, Results, and Interpretation of Results.

10- Keep the notebook in a safe place. Do not take it home or let your dog eat it.

A personal view of notebooks can be found by reading more.
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