How to protect your patent rights

Nov. 1, 1996
Experts explain the intricacies of drafting a patent application and what to expect from the patent examiner.

The US patent system has come under criticism from the optoelectronics community for providing effective patent protection only to those who can afford the costs of litigation. This is seen as a particular disadvantage in the optoelectronics field, where many important innovations are developed by start-ups and small businesses. Small companies are often unable or reluctant to pay for the costs associated with obtaining a patent that they may not be able to afford to enforce at a later date.

However, recent changes and proposals are making patents a more attractive investment for the optoelectronics community. The Laser and Electro-Optics Manufacturer's Association (LEOMA), for example, adopted an Alternative Dispute Resolution guideline at its meeting during CLEO '96 (Anaheim, CA; June 1996) to encourage the resolution of intellectual property disputes without resorting to litigation. Recently proposed changes to the patent laws will enable third parties to take greater part in administrative procedures at the Patent and Trademark Office (PTO) to resolve disputes over the validity of patents These changes may provide more opportunities to avoid litigation.

A patent gives the holder the right to prevent others from making, using, or selling the patented invention. A patent is also an important tool in licensing and—particularly for small companies—in generating revenue through licensing, attracting investment money, and making the company more valuable for potential acquisition, because it defines those technologies owned by the company.

Know the requirements

Inventions must be shown to be useful and new and must also be more than an obvious improvement over devices or processes that depend on existing knowledge. For most inventions in optoelectronics, there is usually little problem in showing that the invention is useful. Being useful, that is, carrying out some required function, is different from being valuable or marketable. The invention does not even have to have been shown to work; patents can be obtained for ideas yet to be realized so long as the patent application contains a written description of the invention sufficient to allow one of skill in the art to make and use the invention.

An invention is not considered to be new, however, if there is evidence showing that it was patented, publicly known, or published prior to being invented by the applicant. The belief that an invention is merely an obvious improvement over what is already known is the most common reason for a patent examiner to reject a patent application. It may be that the invention is something that has never existed before, but if the patent examiner determines that a mythical person "of ordinary skill in the art" having access to all available information concerning that particular field of technology would have been motivated to make the invention, then the invention can be rejected as being obvious. The question of whether an invention is obvious is not an easy one to resolve and is often the subject of debate between a patent examiner and patent attorney.

As a general rule, patent applications should be filed as soon as possible to obtain the earliest filing date. The time at which an application must be filed depends on whether an applicant will seek patent coverage only in the USA or also in other countries (see "Dual citizenship for patents").

Once you have decided you have an idea that may be patentable, you then have to decide whether filing a patent application is economically worthwhile. There are many reasons for applying for patent protection. It may be that you want to stop others from making your invention so that you can enjoy a monopoly for your product. Alternately, you may intend only to license the invention and never build the product yourself or add patents as a defensive posture—for example, for cross-licensing in order to prevent a competitor from creating a monopoly. You may also need a patent to build up an intellectual property portfolio because of potential investment, or you may simply enjoy the prestige of having a patent.

Get professional help

When you are ready file a patent application for your invention, you need to find someone to write the patent application for you. While it is possible to write and file an application by yourself, it is not recommended. Patent practitioners (patent attorneys and agents) spend many years perfecting patent-drafting skills; a patent application written by someone who is unskilled in the patent process is almost always less valuable than one written by a competent patent practitioner.

Most patent practitioners have a broad technical background, but few are highly specialized in a specific technology, such as optoelectronics. Because understanding the invention is the first step in drafting a patent application, you can either find a patent practitioner who already knows your technology, or you can choose to educate your practitioner. This is particularly important for areas of high technology where years of technical experience are needed to understand an invention. Remember, however, that a patent practitioner`s time is not free; you will end up paying for time spent learning to understand your invention. Thus, the more technically skilled the patent practitioner, all other things being equal, the less the application will cost and the more valuable it will be.

Make full disclosure

Once you have chosen a patent practitioner to be your patent agent, you have to supply a description of the invention, often referred to as an "invention disclosure." For many engineers, interacting with an attorney is seen as a distraction from their more important engineering work and, consequently, they do not provide much help in writing the patent application. While a skilled practitioner will be able to write the application with little involvement from the inventor, the costs associated with preparing the application will increase as inventor input decreases. The practitioner you hire to prepare your patent application will appreciate well-written notes, drawings from your notebooks, and even photocopies of pages from the notebooks to help understand the invention.

A recommended form of invention disclosure is to describe problems or shortcomings with existing technology, to describe the invention, and to point out how it overcomes the problems or shortcomings; the disclosure should also list any other advantages offered by the invention. It is good practice for inventors to write these disclosures themselves, because it helps them define the inventions better. When developing new inventions, it is important to maintain up-to-date notebooks that are illustrated with sketches and short descriptions of your ideas and witnessed and signed by someone who understands the invention.

Well-kept notebooks not only provide the patent attorney with good disclosure, they may also be important in establishing the date of inventorship at a later stage. Prime examples of the importance of good working notes are Gordon Gould's laser patents. Although he filed his patent applications in 1959 several months after Charles Townes and Arthur Schawlow filed theirs, Gould managed to obtain his laser patents on the strength of the dates established in his notebooks, which showed an earlier date of invention. If he had not been able to prove a date of inventorship with his notebooks, Gould would have been unable to obtain his patents.

Tell the whole story

Also important for disclosure are references of related art, such as published papers, other patents, and conference proceedings, which will aid the practitioner in understanding the boundaries of the invention and will help to satisfy your obligation to bring this information to the attention of the patent examiner. For example, if you invented a diode-laser-pumped fiber laser that was the first to use fiber gratings to form the fiber laser resonator, you could provide the practitioner with up-to-date references on diode-laser-pumped fiber lasers and fiber gratings.

The official patent application consists of three major parts: the specification, the drawings, and the claims. The main purpose of the specification and the drawings is to teach those skilled in the art to which the invention is directed how to make and use the invention. The claims, much like the metes and bounds that define the boundaries of real property lines, define the legal rights granted to your invention. In drafting the claims, your practitioner will write the claims as broadly as possible in order to increase your patent coverage and prevent others from easily designing around your invention. Generally you want to stake out as much property as you can at this stage; it is always easier to pull your "property lines" back rather than extend them. It is extremely important that you understand the claims and discuss them with your practitioner before the application is filed.

After the application is filed, an examiner performs a search of prior patents and publications related to your invention and then examines the patentability of the invention in light of these publications and patents. In the vast majority of cases, and for a variety of reasons, the examiner will reject the patent application for being either obvious in light of, or anticipated by (that is, lacking novelty), the discovered patents and publications. This preliminary rejection is very common and should not be cause for significant concern. Your patent practitioner, in consultation with you, will consider the examiner`s reasons for rejection and will either argue the case or will amend the invention claimed in the application, essentially moving the claimed property lines back to a point acceptable to the examiner.

When the application fails

In many cases, the examiner will allow the application to issue as a patent at this point. However, the examiner may still not be satisfied and will, instead, issue a "final rejection." Despite the implication of the term, it is still possible to get the application allowed (that is, reconsidered) after the final rejection, although with significantly less latitude. The claims may be amended again, in a more limited fashion; the case may be appealed to an appeal board in the PTO; or the case may be refiled, which, while preserving the original filing date, restarts the examination process and provides you with greater latitude to further refine the claims.

At all these stages of prosecuting the patent application, expect your patent practitioner to explain the current situation, what your options are, and the likely outcomes of any decision you make. Practitioners are not mind-readers; they require your input. Nor are they fortune-tellers. Your practitioner should be able to make a reasonable prediction as to what the patent examiner will do, at least after the first rejection, and advise you accordingly.

Respond quickly to all requests and expect to be kept informed of what is happening throughout the drafting and prosecution of the application. This kind of teamwork will avoid misunderstandings, cut your costs, and help smooth out any other bumps and ruts you encounter throughout the patenting process.

This article is no substitute for legal advice. The authors recommend that you contact competent patent counsel to discuss issues regarding patents. They remain willing to answer questions of a general nature.

About the Author

Iain McIntyre

Iain A. McIntyre, J.D., Ph.D., is a partner at the Minneapolis law firm Carlson Caspers. He gained his doctorate in laser physics from The University of St. Andrews in Scotland. After working as a professional physicist in lasers and electro-optics for 10 years, he switched careers and has worked in patent law for over 25 years. He is experienced in patent prosecution, litigation, counseling, FTO, and due diligence analyses.

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