Inventor Corner

Patents

The IP Factor blog mostly covers Israel Patent Office and court decisions relating to Intellectual Property. The articles below are intended for the inventor and entrepeneur who is interested in finding out more about patents, designs and trademarks.

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

The scope is limited to that within the ambit of the claims as allowed.

A 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 final section of the patent application is a series of 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. This is useful where terms are ambiguous. 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 outside the United States and software per se. The boundaries change from time to time due to legislation and more often, 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.  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.

IP Considerations for Start Ups

They say that a little knowledge is dangerous. This is certainly true regarding Intellectual Property.

It has come to my attention that various consultants and mentors for start-up companies are advising their clients to hold off filing patent applications because of the expense and because ‘as soon as you file, your technology is published world-wide, so competitors can see what you are doing’.

Although patenting can be expensive, there are ways of minimizing and deferring costs. The second reason is simply wrong. A regular patent application will only publish 18 months after it is submitted to a patent office. If one files in Israel, the name of the application, the applicant and date publish earlier, but the application itself is only available 18 months later, unless it issues sooner.

If one only files in the US, one can request that a patent application does not publish prior to allowance.

If one files a provisional application, as with all first filings, one has a year to file abroad under the Paris Convention. If one does not file abroad, the provisional application lapses without publishing.

In any case, one can withdraw a PCT application or Israel application prior to it publishing and it simply won’t publish.

Keeping costs down

Why file a Patent Application?

In order to be able to discuss what an entrepreneur or company is doing with a third party, such as an investor, a potential customer, and the like, one needs to be able to prevent the third party taking the idea and running with it without the entrepreneur/company’s involvement. NDAs have some value, but if they are open-ended, standard NDAs, they are very difficult to enforce. Many large companies will not sign standard NDAs. If, however, an NDA is linked to a patent application, and relates to the invention as described in US Provisional Application No. XX/WWWW, or in Israel Patent Application No.  S#$%^&, then third parties will be happier signing, and, if they appropriate the idea, it is much easier to show when exactly this was disclosed to them, making the NDA enforceable.

  1. A patent is an asset, and even a provisional patent application, or a pending patent application is a provisional asset. It is something that can be valued and traded. Investors often want to see that a company has invested in IP.
  2. Patents are awarded to the first to file. Typically, several players around the world notice a market need and develop solutions in parallel. If one sits on an invention and does not file an application, a third party may independently invent the same product or process, and they will get the patent. Indeed, this may not only prevent you from getting a patent, but may prevent you implementing your idea.

I would not advise inventors to draft and file their own applications unaided, but a description of a technology together with illustrations could be filed as a US provisional application, online, by the inventor for merely the filing fee. Similarly, such a disclosure could be filed as a regular application in  Israel for not much more money.

Such do-it-yourself applications will obtain a filing date and number, and provide provisional protection for whatever they disclose. They should be enabling. This means that they really should be sufficiently detailed that someone working in the field could read the description and go away and make the invention.

For 2-3 hours, a patent attorney could edit such a document, move things around so that it looks more like a patent application, and add some claims. For $1000, he’d spend 2-3 hours, and also file it for you.

Cheap and cheerful provisional patent applications are risky. They only protect what they disclose. They must be enabling. This means that they must explain how the invention may be achieved, not merely describe what the invention is.

If you do not yet have a product or process that can be described in this fashion, you are probably still in the pipe-dream stag and it is really too early to file a patent application.

Ideally a provisional application should have all the features of a regular patent application, including an enabling description, figures and claims.

One reason often given to file a provisional and not a regular application, is to enable the applicant to reconsider what is filed and to add to it within the first year. However, this can be done with a regular US patent application as well. Before filing abroad within 12 months of filing, and/or filing a PCT application, which is a sort of provisional world-wide application that extends this 12 month deadline for a further 18 or 19 months, one can add material. In the US, one can add material by way of continuations, so long as the patent is pending.

Still a provisional application is cheaper to file than a regular application. However, since one will need to file regular application eventually if one wants to obtain a patent, provisional applications do not save money, they merely defer costs and prolong getting a patent.  Indeed pharmaceutical companies, with their very long time to market for the few applications that go anywhere, tend to first file provisional applications as a delaying tactic. Here the 21st year has value.

For most applicants, however, an early issued patent is worth having and a provisional application is not even in the queue for examination.

Accelerating examination

As a rule, patent applications are sorted into various broad classifications and assigned to an examination group. The group typically examines each application is term. Depending on the ratio of applications to examiners in the relevant patent office for the specific class of inventions, an application can wait several months or several years before an examiner looks at it.

There are various ways to fast-track an examination so that it is examined more promptly.

These include:

  • Age or health of inventor
  • A technology that is treated specially
  • A request based on need for a patent to issue because of actual or likely infringers
  • Fast tracking via Patent Prosecution Highway or Bilateral agreements
  • Patent Office Fast track initiatives

Age or Health of Inventor

If one of the named inventors is over 65 years or is suffering from a terminal illness such as cancer or AIDs, one can request immediate examination to increase the likelihood that the inventor will see the patent issuing in his lifetime.  Whether someone is an inventor or not, is a matter of fact, and unlike academic journal articles, there is no room to add inventors as a courtesy. However, the patent attorney may be unaware that one of the inventors is in his or her late Sixties. It is worth telling him.

A technology that is treated specially

Various patent offices will fast track environmentally friendly (green) patent applications or patent applications relating to homeland security. The Israel Patent Office fast-tracks green patent applications, for example.

A request based on need for a patent to issue because of actual or likely infringers

If a product covered by the claims of a patent application is on the market and the applicant become aware of infringers, or if the product is easily retro-engineered, the applicants can ask for immediate examination to be able to enforce their patent application.

Fast tracking via Patent Prosecution Highway or Bilateral agreements

There is a plethora of binational and multinational agreements wherein if a patent has been examined and allowed in one jurisdiction, one can request that the results of the examination be considered by the patent offices in other jurisidictions. These other patent offices are not generally bound by the results of the first examination, and can do their own searches, and can even come to different conclusions regarding the relevancy of the same piece of prior art. Nevertheless, this is a good way to accelerate examination.

Patent Office Fast track initiatives

On some occasions, time can work against independent inventors and small business owners. The life cycles for many products are notoriously short, and infringement is always a concern. Investors often prefer to back technology that has been granted a patent, but without their financial support, every other operation in a business plan could stall. Speed is an important leverage factor when bringing products to market.

The United States Patent and Trademark Office (USPTO) has made tremendous progress in shortening pendency from the time an application is filed to when a final decision is made. But even that shorter wait can feel too long for some independent inventors and small businesses. With the passage of the America Invents Act (AIA) of 2011, the USPTO implemented Track One Prioritized Examination to give applicants more options for moving their ideas quickly.

What Is Track One?
Track One expedites the examination process of nonprovisional utility or plant applications for an additional fee (Track One is not available for design patent applications). Track One is also available for request for continued examination (RCE) applications. The goal is to provide a final disposition within 12 months of Track One status being granted, but the program is currently producing final dispositions in an average of just six months. Be aware that applications are subject to certain restrictions for Track One eligibility.

Note, some fast track solutions are like the queue to the check-out in a supermarket which serves those with up to ten items in their basket. One can easily get into the fast lane, but if there are a lot of others waiting in it, one can be stuck there for a long time.

Searching

It is fraud to file a patent application for something one knows is not new. Whether or not something is obvious is subjective, and far less clear cut. Sometimes applicants file patent applications for dubious inventions for marketing leverage, so that they can advertize the goods covered as patent pending, or, in the case of a PCT application, as “world patent pending”. As long as there is no reason to assume that a patent will not issue, this is legitimate. Indeed, during the year following filing of a provisional application in the US, one can advertise a product covered by the provisional patent application as patent pending.

One can file an application with claims and wait for examiner to search the prior art. In Israel and the US there is a duty to make relevant prior art of record to the examiner, but in most countries, although it would be wrong to request a patent for something one knows is not new, there is no obligation to report the prior art.

A common misconception is that if something is not already patented, it can be. This is not the case. If it is disclosed, for example by being on sale or taught in a scientific paper, it is already known and can’t be patented.

Examiners tend to search the patent literature first as they are most familiar with it and know how to search it efficiently. However, examiners can and will cite other types of prior art. Chemistry research is well indexed in chemical abstracts, and medical developments can be accessed via Medline, and Examiners in these fields often find and cite scientific research published in journals.

US Examiners tend to assume that if something does not exist in the USPTO databases it does not exist at all. They are less likely to cite patent applications from other jurisdictions than other leading patent offices. They also rarely cite scientific literature. This may make it easier to obtain a patent, but if one tries to enforce a patent against a third party, their first line of defense will be do try and invalidate the patent by finding prior art missed by the Examiner.

Japanese and Chinese inventors often only file in their home countries. In many cases when filing in the US, Europe and the Far East, one obtains a US patent and then the Japanese patent office cites something that on reflection, renders the issued US patent invalid. Once a patent has issued one is no longer required to report prior art, but it would be foolhardy to try to enforce a US patent if there is a corresponding application that later ran into difficulties because of the prior art. The alleged infringer will find and cite this art.

Searching in the patent databases can be done by classification or be key words (Boolean search) or a combination of both. If one finds  a similar or related patent, one can look up the patents it cites, or those citing it. One can also use the classification information of a relevant patent to confirm the correct classification for an invention of interest.

There are different types of searches. Examiners do a patentability search to determine whether a claimed invention is patentable. This is also the basic early search made by inventors and investors. When bringing a product to market, there is another consideration: Freedom to Operate. This addresses the issue whether the proposed product infringes the patents of a third party. Note, the fact that a product includes a patentable invention, or is protected by one or more patents owned by the manufacturer or distributor does not mean that the same product can necessarily be sold. It is possible for a product to be patentable, but to include some component or aspect that it patented by another.

With pharmaceutical drugs having one active ingredient, there may be only one patent for the ingredient and perhaps one for the manufacturing process. A high tech device such as a smart phone may infringe dozens of patents covering the screen, memory, batteries, communications protocol, etc.

In some technologies, reasonable fixed royalties can be paid for all the main patents, using fair, reasonable, and non-discriminatory (FRAND) terms. This ensures a competitive market. This is very important, for telecommunication equipment that has to interact with equipment made by other suppliers.

In some cases, a Freedom to Operate search may be justified before introducing a new product. In other cases, it may make more sense to launch the product and to deal with infringement issues as they come up. If the infringing aspect is not critical to the product sold, it may be modified to avoid infringing. Alternatively, the patent owner whose patent is infringed may be willing to grant a license. This can be a win-win situation.

Searching is a skill. It may make sense to have a patent attorney search for you, or to out-source this to dedicated searching company. The main difference is that searchers can find prior art such as earlier patents or scientific papers, but are not really qualified to opine on whether the earlier art will prevent a patent from issuing. Patent attorneys are capable and qualified to make this determination and also tend to have  a better scientific understanding than some searchers. On the other hand, not all patent attorneys have good search skills. Indeed, many IP firms do not offer search services, but simply recommend using a search firm.

Where to file first

If one files a patent in any country, one can file corresponding applications in other jurisdictions within 12 months and have the filing date of the first application recognized as the date that any subsequent disclosures, patents, and publications by third parties is not considered prior art.

This is only true to the extent that the first application teaches the invention. If one files a provisional or indeed a regular application that lays out a research plan or describes an idea but does not provide details for enabling it, it may not be considered as providing an earlier date against prior art. Indeed, a publication of such enabling details between the filing of the provisional and subsequent dependent applications may be cited against those later applications and may render them non-patentable.

If the first application is filed as a regular application and is deficient, on examination it may be considered non-enabling.

So it is important that the first filed application has a full enabled disclosure, i.e. it teaches the invention. However, it does not need claims to serve as a priority document for later applications. It is not advisable, but a good research paper could be used as a provisional application. Preferably, there should be at least some broad claims though.

Let’s assume that the inventor has invested in professional drafting services and has a full patent application written that could be examined. Where should he/she first file?

There is no one-size fits all answer to this.

For a company active in Israel, making a low tech type of invention, the only market of interest may be Israel. There are a couple of manufacturers of brackets for supporting air-conditioner compressors that have litigated, tried to enforced a patent and tried to have a patent voided. Their product is not something that is really enforceable outside of Israel since it can be welded together and manufactured cheaply and there are very many installers of air-conditioning units in countries with hot weather. Similar considerations may apply to companies addressing peculiarly Jewish issues. If the only market of interest is Israel, it may make no sense filing patent applications abroad.

Although sometimes a good patent attorney may be able to devise a strategy for patenting elsewhere, a method of medical treatment may be only patentable in the United States. For such an invention, it does not make sense filing elsewhere.

Security related technologies that are invented in Israel have to be first filed in Israel, either as a regular Israel application or as a PCT application. The application is forwarded to the Ministry of Defense which has to decide within three months whether the technology should be restricted, in which case it prevents the patent being filed abroad and also prevents it publishing. This is rare, but it is not uncommon for patent applications to be referred to the Ministry of Health. I’ve had this happen a few times, and once for a technology that was not obviously security related. In cases where the technology is security related, one should first file in Israel.

Patent Strategy

Israel, is a relatively small country with a small population. Many Israeli companies are interested in marketing abroad. For a company with potential sales worldwide, it is tempting to file patents in dozens of jurisdictions. However, this is expensive, and the prosecution and maintenance of a large patent portfolio can be beyond the capabilities of many companies.

Within the first year, one may file abroad under the Paris Convention and/or file a PCT application which effectively extends this 12 month period to 30 or 31 months. The PCT also provides an International Search Report and preliminary opinion on patentability, which, since it comes from an Examiner rather than from a patent attorney or search company employed by and answerable to the patent attorney, it is more persuasive to potential investors and can also be used as guidance when considering whether or not to file the application widely by entering the national stage.

It is important to realize that despite wide coverage, the PCT system is not truly world-wide. The most important company not covered is Taiwan, and to obtain a patent there, one has to file within 12 months of the first filing (the priority date). Another exception is Argentina. This may not be high on every Applicant’s list, but I once handled a patent application related to maize. Here, Argentina was a major market.

Filing PCT applications rather than directly filing in jurisdictions of interest, typically increases the overall cost of obtaining the patent portfolio. It defers costs however. Particularly for a start-up, this can be significant. Sometimes a year is not enough to know whether a patent should be filed broadly.

In general, applicants should consider markets and competitors. If they operate in a niche with high entry costs, obtaining patents in countries where they have existing competitors may be sufficient. One of my clients makes wide-format printers. Here the market is worldwide, but competitors are in Israel, US and recently Italy. Obtaining patents in these jurisdictions is sufficient to block competition.

For software and telecommunications, the market may be worldwide, but a US patent may have sufficient blocking power. Product life-spans may be such that it does nt make sense filing more widely.

For pharmaceuticals, manufacturing is fairly easy and can be done anywhere. The products are small and easily smuggled or personally imported. The markup for successful drugs is hugh. It is necessary to file widely.

Most products fall somewhere in between. Israeli companies typically file in the US, China, Europe, Taiwan, Korea, Australia, Canada, India and Japan in approximately that order.

The same English language application can be filed in Israel, US, Europe, Australia, Canada, India and New Zealand. When filing into countries such the China, Taiwan, Korea and Japan one incurs translation costs. It is worth being succinct and avoiding unnecessary wordage to reduce filing fees. Simple sentences are also easier to translate.

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