Drafting a patent application is not easy. A patent application needs to describe your invention completely, and if you really are entitled to a patent then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something new that has not previously existed if more of a challenge than most people realize.
Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.
That is all fine and well, but how do you explain your invention? Here are five things to keep in mind that are critical in order to fully and completely describe your invention. Thoughtful consideration of these will help you better articulate what you have that is unique in a way that will satisfy legal requirements in the United States.
This is one of those articles that I write every so often, in slightly different ways, in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake. For better or for worse, there is a popular misconception that patent attorneys and patent agents are not really necessary and an inventor can do it themselves and save money. The truth is that patent attorneys are among the most highly trained attorneys you will ever meet. In addition to having to successfully complete law school and taken a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination. As John White explains, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work! But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?
Of course, financial resources can and do provide a real impediment to moving forward with any business opportunity. Unless you are independently wealthy you are almost certainly going to need to proceed one step at a time as you move forward toward your goal of commercial success and financial reward. That means investing wisely, and sometimes doing more on your own than you would like. To get from point A, where you have an idea or early stage invention, to point B, where you are reaping the rewards, it is imperative to proceed in a business responsible way. That must also include proceeding with your eyes fully open and understanding the potential pitfalls and consequences if you are going to attempt to represent yourself in the patent world. If the choice is to move forward on your own versus not moving forward at all, then representing yourself is the only option. If you have the choice and can afford professional assistance, hiring a patent practitioner should be considered essential.
In order for any patent application to be complete the invention must be described with great particularity. Many times an inventor will only generally describe the invention in a patent application, which creates a significant problem.
This problem recently presented itself to me when an inventor provided me with an extremely vague description of their invention and wanted me to do a patent search and prepare a provisional patent application. I explained to the inventor that I needed much more detailed information. The inventor told me that he supplied plenty of information and was not going to supply any more because he wanted to keep the description very general. That is, of course, his right, but a general description is a recipe for failure. I declined representation. I don’t need those type of headaches.
This interaction is more common than you might think. Inventors not only frequently think they know more about patents than a patent attorney, but inventors also frequently think it is best to have the broadest most vague description of an invention possible. Conceptually a general description may seem best, but if you have any knowledge of U.S. patent law you realize that general, non-informative and vague descriptions are unacceptable. The law simply requires more.
“It’s never good news when your area of the law is on 60 minutes,” says Courtenay Brinckerhoff, partner at Foley & Lardner LLP at the 2013 AIPLA Annual Meeting. It’s no secret that the Association for Molecular Pathology v. Myriad Genetics case had more than its fair share of media buzz. The decision, holding that isolated DNA was not patent eligible, left many of us wondering how to best address the needs of our biotech clients going forward.
The main claims at issue in this case are the isolated DNA claims. Claim one is broad enough to cover naturally occurring DNA, and claim two is specific to synthetic DNA. In 2010, the district court came out with a decision holding that DNA was not patent eligible subject matter, which was a bit of a shock to us. Most of the rationale was focused on the idea that DNA embodies information, and regardless of what the actual molecule looks like, Myriad’s claim is for that defining characteristic. The case went up to the Federal Circuit where former chemist Judge Lourie held that technically the isolated DNA is different than natural DNA, because you have to break the covalent bonds to isolate the methylated gene. There were, of course, also policy reasons to uphold the claim like the reliance of the biotech industry on the USPTO already having granted these sorts of patents for nearly 20 years.
If you’re trying to draft a patent application for a computer-related invention, you’re basically left in a mess of opinions that the Federal Circuit refers to as CLS Bank Int’l v. Alice Corp. The decision, described by Judge Rader as a failure of his institution, left us wanting for just a tad –by a tad I actually mean a ton– more predictability. For now, we can only try to parse out why the opinions differed, take cues from our historical backdrop, and revise our prosecution strategy accordingly.
“A lot of times when we talk about patent eligibility we really need to know what the claims look like, so I thought we could spend four or five hours discussing this claim. Oh not enough time,” says Bruce Sunstein, founder of Sunstein, Kann, Murphy, and Timbers LLP at the 2013 AIPLA Annual Meeting. Fair point, Sunstein. So here’s the gist of CLS Bank. We have a computer readable medium claim in a format we’re accustomed to and that seems to be perfectly acceptable— program code for this program code for that. There are system claims that also would seem completely okay. Finally, there’s a method claim, which notably doesn’t include the word “computer.” Unfortunately for us, seeming completely okay was clearly not the test for patent eligibility. This was an en banc decision. The 10 available votes came out as follows:
Seven judges say method claims are not patent eligible.
Three judges say method claims are patent eligible.
Five judges say systems claims are not patent eligible.
Five judges say systems claims are patent eligible.
Judge Lourie writing with Dyk, Prost, Reyna, and Wallach says none of the claims are patent eligible. They reject the method claims for being too abstract. Then they say the storage and systems claims are just method claims in disguise, and so are also not patent eligible.
It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine, but fooling yourself into believing that you can and will do as good a job as a patent professional is an enormous mistake.
I cringe at times because some inventors will make a reckless choice, or choose to represent themselves because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art. It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, and in that case inventors are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue patent rights, or you have to do something on your own that is within your budget.
If paying a patent attorney is out of the question because of lack of funding you would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future. Rarely in my experience does an inventor have only one idea/invention. Creative people create, which means it can be particularly important to manage your budget wisely. Carelessly pursuing one invention and recklessly spending funds can make it difficult, if not impossible, to move forward when you find the truly great idea/invention.
Recently U.S. Patent No. 8,515,829(the ’829 patent) came to my attention. It is a patent issued to Google, which is titled Tax-free gifting. See Google Patents Tax-Free Gifting. The invention is interesting in its own right, but as I reviewed the patent I noticed an interesting figure — Figure 14 really caught my attention. Before proceeding to discuss the importance of Figure 14, allow me to provide some background information about this particular patent.
Generally speaking, the invention relates to a system and related techniques for gifting, and paying for, digital content, including media, such as audio and video. The core of the invention, as suggested by the title, relates to giving someone something tax-free. While the title may suggest the invention is potentially nefarious, or at least aimed at exploiting some tax loophole, that is not the case. The government is not going to be cheated out of collecting taxes. Instead, the invention relates to a method that allows for the giver of the gift to pay for the tax imposed by the jurisdiction where the gift (i.e., gift card) is redeemed.
Indeed, Claim 1 in the ’829 patent specifically includes a limitation specific to the payment of the tax that would otherwise be imposed when the gift is redeemed. Claim 1 recites (emphasis added):
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.