Back-to-Basics Patents

This is the first of a series of weekly articles providing an overview of different aspects of patents and other types of intellectual property. The target audience is heads of R & D, entrepeneurs and the like, rather than practicing IP professionals. Feedback, is appreciated as always.

A patent is a monopoly that is limited in scope, time, and territorial coverage.

The scope of protection is determined by the ambit of the claims as allowed. The patent is only enforceable once it has issued, and whilst it is in force by paying renewals. Typically, a patent may be enforced for up to 20 years from filing (sometimes extendible to 25 years).

Patents can be enforced in the specific territory covered by the issuing jurisdiction to prevent  manufacturing, exporting from, importing to and exploiting within the specific jurisdiction.

A patent application will have a title, usually a background section and a summary of the invention, and then a description showing different ways the invention can be realized which often includes reference to Figures.

The patent application finishes with claims which are single sentences that succinctly define the invention. Writing patent applications, and particularly the claim section, is a skill. Great care is taken to avoid any ambiguity. The first time a noun is used, it is given with the indefinite pronoun ‘a‘ or ‘an’, and when subsequently mentioned, it is referred to as ‘the’ or ‘said’. This is to ensure that each and every element, whether it is a component of a device or system, or a manufacturing step of a process, is clearly differentiated from every other component. Each component must be referred to in the same manner throughout the claims. The same usage and terminology should be used throughout the description, since the description is used to understand the claims. Terms may be defined in the description or the summary. This is useful where such terms are ambiguous, and their exact meaning is different when applied to different technologies, or when used in academia the meaning is slighlty different to that when used in industry. However, care should be taken that such internal definitions should not contradict the dictionary definitions of the terms.

Patents are available for products and processes and new materials. To be eligible for a patent, an invention as defined by the claims has to be:

  • Novel
  • Non-obvious
  • Useful

There is some subject matter that is not considered patentable, such as business methods, therapeutic methods (apart from in the United States) and software per se. The boundaries change from time to time due to legislation, and, more often, due to case-law. However, a good patent attorney may be able to claim an invention that is novel, non-obvious and useful, in such a way that it is acceptable.

Essentially, the patent is a limited monopoly granted for teaching an invention, which facilitates human progress.

Novelty

Absolute novelty is generally required. If an invention is already on sale, or is described in print in some document in a library, no matter how obscure, it cannot be patented.

If an invention is slightly different from that described in a single document, it may be considered obvious and still not be patentable.

Similarly, if an invention is taught by a combination of documents that can reasonably be joined together, it will be considered obvious.

Obviousness is the US term. In Europe, the patent office relates to an invention needing an’ inventive step’ over that known.

The main difference between novelty and obviousness is that novelty is objective whereas obviousness is subjective. If the Examiner alleges that the claimed invention is described in a single document, he is either right or wrong. If he is right, one may sometimes overcome the objection by adding a further feature to the definition of the invention in the main claim. If the Examiner considers an invention obvious in light of a combination of pieces of prior art, one can argue that the invention is only obvious in hindsight, or that the combination of the elements itself involves an inventive step.

Claims may be independent, i.e. free-standing, or dependent, in which case they refer to an earlier claim and include all the limitations of that claim, but add some further limitation.

The claim structure should be succinct and clear. Different patent offices allow different numbers of claims and different numbers of independent and dependent claims for the basic cost of filing. Additional claims may be submitted, but at further cost. For example, the USPTO will allow up to 20 claims including up to three independent claims for the basic fee.  Additional cost is incurred for exceeding 20 claims, but the per claim increase is not a tremendous amount. In Europe, one is allowed 15 claims, and additional claims beyond the first 15 are very expensive.

A patent can only relate to one invention. However, different countries understand the term invention slightly differently. In general, in Europe one will be allowed one independent claim for a device or system and one independent claim for a method of use, or a process for fabricating the device.

The America Invents Act has brought the USPTO into line with the patent systems around the world. Historically, however, obviousness was slightly different from inventive step, in that the USPTO assumes that an invention is patentable and the onus is on the examiner to rebut this assumption by finding prior art that teaches the invention. In Europe, the inventor is supposed to make a positive contribution beyond that known, i.e. to make an ‘inventive step’ to deserve a patent. Apart from the different terminology, there is one other remnant of this distinction. In Europe, the Examiners like a two part claim construction, where that known is first recited, and then the inventive feature is provided at the end in a clause starting “characterized by…”.

Most patent examiners are guided by major court rulings in their jurisdiction when considering whether something is or is not inventive. A good patent attorney will have access to these decisions and will try to find relevant precedents. He will advocate on behalf of the applicant, and fight to obtain a patent that gives as broad protection as possible.

A good patent attorney will generally take into account the requirements of the main jurisdictions when drafting an application so that optimizing the claim-set for each jurisdiction is fairly straight forward.



Categories: patentable subject matter, Patents, Uncategorized, פטנט, פטנטים

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