WEB PATENT NEWS--July, 2002

by contact usRobert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.

CONTENTS

I. TAX ON INVENTING - The cost of patenting your invention in the U.S. is about to increase dramatically, unless you become involved.

II. U.S. SUPREME COURT OVERTURNS FEDERAL CIRCUIT FESTO DECISION - Patentees are now wise to have described and claimed equivalent structures and steps that are "foreseeable" in their patent applications.

III. SAY WHAT? TEACHING YOUR INVENTION TO OTHER - Guidance on how to prepare of an invention disclosure.

I. TAX ON INVENTING

The U.S. Patent and Trademark Office (USPTO) is proposing to significantly increase its fees. The American Intellectual Property Law Association (AIPLA), a national intellectual property bar association of more than 14,000 members, calls the move "a stealth tax increase only on America’s inventive community."

The fee increase is expected to significantly reduce patenting activity by small entities (independent inventors, small businesses and universities) because they will no longer be able to afford to use the system. This change and others will allow the USPTO to hire 2,500 fewer new Examiners (Federal employees who examine patent applications and decide patentability) over the next five years.

The proposal calls for more than tripling the fees charged to small entities for basic patent applications. Currently, small entities pay the USPTO $370 to file a non-provisional utility patent application, and that includes the cost of examining the application. Under the new fee schedule, a small entity would pay a $150 filing fee and a $1,250 examination fee - a $970 jump over the current filing and examination cost for a basic patent application. In addition to the basic fees, the UPTO is proposing to establish a schedule of rapidly escalating fees for including additional claims in an application (either when it is filed or later) and to levy significantly increased patent maintenance fees.

Research has shown that the number of independent claims in an issued patent is strongly predictive of the value of the patent. It is not unusual for the total number of claims needed to adequately protect a complex and potentially valuable invention (e.g., a chemical, biotechnology or software invention) to reach or exceed 50 and for the number of independent claims to reach or exceed 20. Currently, 30 additional total claims and 17 total independent claims would add $884 to the filing fee for a small entity. Under the USPTO proposal, this number of additional claims would increase the filing fee by an incredible $85,680. Huge fees will be imposed on inventors who attempt to "game the system" by filing continuing applications that claim the same invention in a different way than it was claimed in an earlier-filed application. The cost to a small entity for maintaining a patent over its 20-year term would increase from $3,000 to $4,450. It is clear that adoption of the USPTO proposal will essentially deny access to the U.S. patent system by small entities with potentially valuable inventions and destroy the small businesses of the practitioners who serve them (like me).

The proposed fee increase must be approved by Congress. If you do not agree with this proposal, I urge you to express your opinion to your Senators and Congressman. You can obtain their e-mail addresses at: http://www.senate.gov/contacting/index.cfm and http://www.house.gov/writerep/.

II. U.S. SUPREME COURT OVERTURNS FEDERAL CIRCUIT FESTO DECISION

In what has been described as one of the most important patent law decisions in decades, the U.S. Supreme Court in May, 2002, threw out the ruling of the U.S. Court of Appeals for the Federal Circuit in the Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case. The Federal Circuit ruling had denied application of the "doctrine of equivalents" in patent infringement suits seeking to enforce patent claims that had been amended for a reason related to patentability during the patent prosecution process. Under this ruling, the scope of amended patent claims was to be limited to the structure or steps literally described in the claim, thus significantly reducing the scope of the claims and the economic value of over a million issued U.S. patents.

In its Festo decision, the Supreme Court decided that the presumption that a patent holder has given up the right to prevent copyists from making insubstantial changes to their products as a way to avoid patent infringement can be overcome under certain situations. From now on, the doctrine of equivalents can relied upon if the patent holder can show that (1) the equivalent was unforeseeable at the time of the application, (2) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or (3) there is some other reason why the patentee could not reasonably have been expected to have described the equivalent in his/her patent application.

While all the implications of the decision are unclear at this point, it does provide some guidance in the preparation of future patent applications. Importantly, the Festo decision encourages inventors to include a larger number of claims in their applications with the goal of having at least some claims survive the prosecution process in an unamended state. Another thing that is clear is that inventors should describe in their patent applications alternative ways to make their inventions that are "foreseeable" (to a person having ordinary skill in the art) at the time the application is filed. It is also clear that any variation of the invention described in the application that the inventor wants to protect must be claimed. So, it is now more important that ever that the inventor teach not only the best structures or steps but also their equivalents to his or her patent practitioner. The patent practitioner, in turn, must take care to draft claims covering all the embodiments the inventor wants to protect. Ironically, it appears that just when it is becoming prudent for patent applications to contain more claims, the USPTO wants to make that approach too expensive for most inventors to adopt.

III. SAY WHAT? TEACHING YOUR INVENTION TO OTHERS

The greatest technical challenge, bar none, that inventors face is teaching their inventions to others. Disclosing an invention, getting it down on paper, is a vitally important step in the patenting process, but it is one that eludes many very bright inventors. Inventors see relationships in our world that others do not, but sometimes they have difficulty in explaining how those relationships exist. They are intuitive souls who often "are sure" that their inventions will solve the technical problems they address before they have thought through exactly how to make their inventions.

Often, with complex inventions, it is not practical or economically feasible to "just build one," that is, to construct and test a working model or prototype. These inventions must be built "on paper" before they can be patented. In a patent application, an invention must be described in sufficient detail and with sufficient specificity that a person having "ordinary skill in the art of the invention" (an ordinary practitioner of the art, not a novice or an expert) is able (enabled) "to make" and "to use" the invention based solely on the teachings of the invention disclosure and his (assumed exhaustive) knowledge of the field. Developing such a description can also render a novelty search much more valuable than a search of a vague, general concept of an invention. This article suggests some approaches to meeting this challenge.

One valuable technique is to "divide and conquer." With this approach, the formidable problem of disclosing an invention is divided into smaller, more manageable tasks. In the Inventor’s Guide portion of my website, I provide a listing of the elements of an invention disclosure and teach the inventor how to prepare each element, with explanations and examples.

Another technique is to diagram the invention. For example, hardware inventions are often a novel combination of conventional elements. Block diagrams can be used by inventors to crystallize the concept of an invention and to work out the details of how to make one. With a block diagram, blocks that represent the conventional structural elements of a device or system are connected by lines that illustrate the relationships among the blocks. All inventions are made of "earth, fire and water" or some other existing elements and showing how the elements are related can enable an ordinary practitioner of the art to make and use the invention.

Inventions can almost always be thought of as processes, as sequences of steps that accomplish some useful result. Moreover, processes are sometimes easier to explain than static physical structures. Process inventions include "process of making" and "process of using" inventions. Sometimes, it is helpful to conceptualize "how to make" an invention as the process by which it is made or assembled. A useful technique is to pick a place to start (an initial element, maybe at the bottom or base of the invention or something the entire invention is attached to) and then to explain the process by which the invention is assembled from constitutive parts, its elements — "the knee bone is attached to the thigh bone, the thigh bone is attached the hip bone."

A typical "process of using" invention is made up of the individual steps that, together, describe how the function of the invention is accomplished. With software inventions, it is often helpful to envision the different ways a user can interact with the software. For each "use scenario," one can conceptualize the "flow" of discrete instructions that the software would give to the computer, typically after a user initiates the execution of a part of the program. This "flow" is documented in one or a series of flowcharts in which each interim-result-producing instruction or set of instructions is a numbered step in the process. The numbers (called "reference numerals") are used in the accompanying description to identify each step. Using a gerund (a verb form ending in "ing") to name each step (e.g., "sorting step 114") can clarify the primary function of each step. Software programs like Visio are helpful in preparing both block diagrams and flow charts. Performing a key word search for patents containing the terms "block diagram" and "flow chart" at the USPTO website (http://patft.uspto.gov/netahtml/search-bool.html) will produce many examples of the use of these techniques and illustrate the level of detail required (essentially a schematic design) in an invention disclosure.

A trap that it is easy for inventors to fall into is to want to conceal some aspect of their invention. Whether the concealment is the result of an unconscious urge not to "let go of my baby" or a conscious decision to deny knowledge to competitors, it can still hamper effective invention disclosure. An inventor must accept the fact that he must "make a pact with the Devil" to obtain a U.S. patent. He must describe "how to make" and "how to use" at least the "best mode" of this invention (the best way to practice his invention) in order to obtain a valid patent. Anything less than the best mode of an invention can be concealed, but at the risk that someone else will independently invent it and earn the right to patent it (i.e., earn inventorship) over the true first inventor. Of course, if an inventor really does not know "how to make" and "how to use" an aspect of his invention, that aspect of his invention is not completed and he has not really "invented" it — he just wishes it were possible.

If disclosing the best mode is not difficult enough, it is also the case that less advantageous embodiments should be disclosed. I advise my clients that (especially in the light of the Festo decision) it is prudent to disclose and claim any embodiment that they would be angry to see on sale at www.amazon.com or their local Wal-Mart and not be able to allege infringed their patents. Only if a variation of the invention is so impractical as to not pose a credible competitive threat should it be left out of the disclosure. If some of the claims in your application are written using "means-plus-function" language (e.g., "means for performing a function X" as allowed by Sect. 112, par. 6), then the specification must disclose all the alternative structures you want the court to use in the application of the "insubstantial differences" test when you sue an alleged infringer. This is the case because the Court of Appeals for the Federal Circuit has stated "the test for determining equivalency under Sect. 112, par. 6 is whether the differences between the structure in the accused device and any disclosed in the specification are insubstantial" and "an accused device satisfies a means-plus-function element literally if it performs the identical function recited in the claim, and incorporates the structure disclosed in the specification or an equivalent thereof." Actually including claims that read on the alternative embodiments is important because another recent Federal Circuit decision has made it clear that "disclosed but unclaimed subject matter is dedicated to the public."

I hope that practicing the above techniques will make it a little easier for you prepare your invention disclosure. Because of the challenge imposed by invention disclosure rules, I advise my clients that patenting an invention always takes much more of their time than mine. Taking on the challenge step by step is the way to beat it.

Aloha,

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
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