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Posts Tagged ‘ enablement ’

AIA Oddities: Trade Secrets, Re-patenting and Best Mode

Posted: Wednesday, Sep 18, 2013 @ 8:30 am | Written by Gene Quinn | 5 comments
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Posted in: America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patents

EDITOR’S NOTE: This article is Part 4 in the America Invents Act: Traps for the Unwary series. I will be speaking on this topic at the AIPLA annual meeting on October 24, 2013. CLICK HERE to register for the AIPLA annual meeting.

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Trade Secrets Now Patentable

This will seem almost unbelievable to many, but as of March 16, 2013, long held trade secrets are now patentable. In fact, should Coca-Cola want to patent a secret process for making Coke they would be able to do so. But how is that possible?

35 U.S.C. 102 (a)(1) now reads:

A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…

The USPTO explained their interpretation of the critical “or otherwise available to the public” language as follows:

Residual clauses such as “or otherwise” or “or other” are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the “or otherwise available to the public” residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.

Therefore, if you have a long held trade secret — and really kept it secret — it simply will not be considered prior art any more for a patent application. So if you have been telling clients that they could not patent a long held trade secret, as was the proper advice under pre-AIA 102, you should re-evaluate. Those trade secrets are patentable now when on March 15, 2013 and earlier they were not.



Turn Your Idea into an Invention with a Good Description

Posted: Sunday, Sep 1, 2013 @ 7:29 pm | Written by Gene Quinn | 15 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics

Previously I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention.  This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible.  Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution.  Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea.  Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there.  But it doesn’t have to stop there.  Frequently you just need some help collecting thoughts and a little push in the right direction.  In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.

One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting.  So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product.  If you can improve upon something, there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention.  Certainly, you are much farther along the path to success with that trifecta.



Patentability Overview: Obviousness and Adequate Description

Posted: Saturday, Jun 9, 2012 @ 11:57 am | Written by Gene Quinn | 11 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patentability, Patents

There are essentially five patentability requirements. In order for a claimed invention to be patented each of these requirements must be satisfied. The claimed invention must be (1) comprised of patent eligible subject matter; (2) useful; (3) novel; (4) non-obvious; and (5) adequately described. The first three of these requirements were discussed generally in Patentability Overview: When can an Invention be Patented? published last week. This article picks up with an overview of the law of obviousness and what constitutes an adequate description.

The Nonobviousness Requirement – 35 U.S.C. 103

Obviousness is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.



Patent Drafting: Drilling Down on Variations in a Patent Application

Posted: Friday, Jan 13, 2012 @ 7:25 am | Written by Gene Quinn | 1 Comment »
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patents

The goal of a patent application is to teach others how to make and use the invention. But why would an inventor want to describe their invention to the point where others could simply copy them? The simple reason is that the US patent laws require such a description. The more complete answer is that such a description is required because in order for the government to grant a patent Congress has said that you must describe your invention so that others will be able to benefit from it, learn from it and advance it moving forward. The only way to do this is by describing your invention with great care and detail.

When you file a patent application it is always necessary to file an application that completely and clearly describes the invention so that others would be able to understand the invention. For many, particularly new inventors, business executives and newbie patent attorneys or agents, it is difficult to understand the so-called description requirement to patentability. It seems easy enough to comprehend as a general matter, but it is overly simplistic to merely say that a patent application must describe the invention. Those who fall down with respect to this adequate description requirement do so because they do not have a full conceptualization of what it is that they have as a protectable invention.



Turning Your Idea into an Invention

Posted: Saturday, Oct 8, 2011 @ 7:30 am | Written by Gene Quinn | 3 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles

In July I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention.  This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible.  Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution.  Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea.  Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there.  But it doesn’t have to stop there.  Frequently you just need some help collecting thoughts and a little push in the right direction.  In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.



Patent Drafting: Language Difficulties, Open Mouth Insert Foot

Posted: Tuesday, May 3, 2011 @ 4:05 pm | Written by Gene Quinn | 2 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles

Lately I have been this “educational” mindset more than is usual. Not only am I gearing up for the run of summer Patent Bar Review Courses, which begin next week in New York City, but at the beginning of June I will be teaching a Patent Prosecution course for a week at the John Marshall Law School in Chicago, Illinois. What better topic to revisit than the importance of using the right language when describing an invention and dealing with an examiner. Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended.



Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

Posted: Wednesday, Apr 13, 2011 @ 6:25 pm | Written by Eric Guttag | 5 comments
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Posted in: Eric Guttag, Federal Circuit, Guest Contributors, IPWatchdog.com Articles, Patent Litigation, Patents

After the Federal Circuit ruled in Ariad Pharmaceuticals v. Eli Lilly there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112, some may have thought that all might be quiet on the “written description” front.  But the recent case of Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., suggests that all may no longer be quiet on that front.  In fact, I’ll express the “heretical” view that the Federal Circuit missed the real “written description” issue in this case, namely what is (or should be) the impact of the “characterised in that” (or as we Americans would phrase it “characterized in that”) language used in the common patent specification of the two patents involved in this case.



Tricks & Tips for Describing An Invention in a Patent Application

Posted: Saturday, Mar 19, 2011 @ 11:50 am | Written by Gene Quinn | 20 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patents

One of the biggest problems that inventors face when setting out to define their invention is with describing what the law refers to as “alternative embodiments of the invention.” Most inventors are quite good at describing exactly what they have invented. The invention is your work and you know it best, so it is not surprising that most inventors can (with enough effort) explain the preferred version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, it is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to say those alternatives are covered by your disclosure, which will prevent any issued patent from covering those undefined variations. This may not seem like a big deal, but history has shown that it is critical. If you are lucky enough to have invented something of great importance there will be a number of individuals and companies trying to capitalize on the opportunity you have created. If you dismiss variations or entirely different and unique embodiments then you are leaving those to the individuals and/or companies that would seek to capitalize on a product or process that is similar to your own, but not specifically covered by your patent claims. So what can you do?

Before you do finalize your provisional patent application, or if you are working with a patent attorney or patent agent — before you finalize what information you provide to them, you should go back through what you have written and ask yourself whether you are using any terms that may have a particular meaning. With each term ask yourself whether it has a commonly understood meaning by those who are skilled in this field? If the term does have a commonly understood meaning in the industry it is absolutely essential that you use it to mean what others in the industry think it means. Do not get creative. While the patent laws do say that a patentee can be his or her own lexicographer, it is important not to make too much of this latitude. If those in the industry understand a term to carry a certain meaning that is the meaning the courts will use when interpreting the scope of the patent disclosure, but why take a chance? When in doubt it is always the best practice to explain through illustration and description rather than to simply rely upon a meaning that may or may not be understood in the industry. The specification you create and ultimately file is the glossary for the invention and is intended to describe what you have in its full glory and to define any terms or concepts so everyone understands and there is no ambiguity.