Epic Patents

You’ve seen The Poseidon Adventure, a big sprawling movie with a dozen or so stars, each having major parts that have to be properly developed to showcase their talents. Some patents are like that with multiple different inventions all confined in the same description. You could echo the analogy to big movies and call these “epic patents,” though I call them “omnibus patents.” Whatever you call them, they create special challenges.

For one thing, many claims are needed, at least one independent claim for each separate invention (a simplification for purposes of discussion, there are good reasons to have three or four different kinds of independent claims for each invention). And for each independent claim, it is always wise to include a set of successively narrower dependent claims as validity protection against potential prior art. So for an omnibus application with four or five separate inventions, there can easily be 40 or 50 claims, even in our simplified scenario.

But the U.S. Patent Office will limit its examination of an application to a single claimed invention, issuing a restriction requirement forcing the Applicant to elect just one set of claims for examination. Any others can be pursued separately in one or more divisional applications. It is usually not too hard to choose a first set of claims to elect for initial examination, but it is often unclear whether or which claims to file in divisionals and when.

Luckily for you, I am here with an answer to that. When the patent attorney is initially preparing an omnibus patent application, he or she should be able to foresee the situation above. And the first of group of claims for the first invention expected to be elected should start with claim 1 and a conventional set of dependent claims, e.g., claims 2-10. Then include some additional “special” dependent claims which narrow claim 1 by adding in limitations that include the subject matter of each of the other independent claims that correspond to the other (initially unelected) inventions.

Why? Because shortly after the election of the first restriction group of the claims, the Examiner is going to produce an Office action on the merits which initially rejects all of the elected claims. Supporting that rejection, he (or she) is going to cite one or more prior art references that purportedly show what is claimed. And the rejections of the “special” claims are going to give the patent attorney and the client a suggestion of just how new and valuable each of the unelected inventions might be. If the rejection of any of the special claims is reasonably solid, then that suggests that it might be difficult to prosecute similar independent claims without the additional restrictions of claim 1. But if the rejection of any of the special claims is not very compelling, then that suggests that a divisional patent application with similar broader claims might be promising.

Thus, the use of special dependent claims to provide a preliminary test of potential divisional claims can be a useful tactic in large omnibus patent applications.

Baking Patents

It can be tough to stand out in a crowd. There are a lot of patent lawyers to choose from, and as I explained in an earlier article, it is not easy to look at their work and judge how skilled they are. That makes their marketing messages pretty important as their main point of distinctiveness, their best chance to say who they really are, and to stand out from the rest of the crowd.

But collectively those marketing messages are a rather grim collection of Dilbert-y catch-phrases: “maximize the value of your IP assets,” “strategic investment in innovation,” “integrating a synergy between product development and marketing.” (Those are just made up examples—no point in attacking anyone in particular). I wonder, though, is that what clients want or need?

As a patent attorney, I make things. That is, I make patents. In that sense, it is like being a baker who makes bread. And, like patent attorneys, bakers also have to market themselves to their potential customers.

Not having been to law school, bakers seem sadly uninspired to stretch for the same kind of catchy marketing slogans: “maximize the value of your sandwich assets,” “strategic investment in bread,” or “integrating a synergy between gluten development and crust formation.” Bakers seem to assume that by offering good bread, they will naturally develop a loyal base of regular customers that builds over time by word of mouth.

Rather touching isn’t it?...

Can I offer you a baguette?

Provisional Patents: With Claims or Without?

A provisional patent application lasts for 12 months and can be much less formal than a regular utility patent application. They are supposed to be complete and thorough enough to satisfy the same section 112 requirements as a regular utility application with regards to enablement, best mode, and written description, but provisional patents are not examined by the Patent Office, so that burden is not meaningfully tested.

One interesting difference from a regular utility patent is that claims are permitted but not needed in a provisional patent. Sometimes, circumstances require filing a provisional without claims; for example, when a client asks: “Can you file something today?” Or when the client is experienced in the realm of patents, and has thought it over, and has given a policy directive that they don’t want claims filed with their provisionals. Okay, no problem.

But when you do have a choice, should you file claims with a provisional patent application? Or not? You can find thoughtful experienced patent prosecutors on both sides of that question. Personally, I say yes, and if that is all you need, then read no further, thanks for dropping by, and have a nice day.

I understand two different reasons for not filing claims. First, the provisional claims may be much broader than the claims that ultimately issue as a patent, and so the additional narrowing claim language may not be entitled to “equivalents” under the doctrine of equivalents. But that reasoning only applies to claims that are not literally infringed. I’m a harsh proud man—if you are practicing the invention in one of my patents, then you will be literally infringing my claims, I don’t want or need doctrine of equivalents. And if you are taking loss of equivalents seriously, I suggest you start by counting how many reported opinions each year find that the defendant infringed the patent under the doctrine of equivalents.
Another justification for omitting the claims is to conceal your intentions as long as possible and to maximize your options for claim language a year later when you refile the provisional as a regular utility application. I respect that reasoning, but it cuts the opposite way too by creating a suggestion that you did not really settle on the precise nature of the invention until you did actually provide the claims.

On the other hand, by including the claims with the provisional, you are creating another different suggestion that is far more useful—that you did know (more or less) the true nature and scope of the invention at the time that the provisional application was filed, and moreover, that the provisional application actually enables and satisfies the best mode requirements for those claims. That is a very useful and desirable impression to be making.

Now, this whole subject is actually quite deep and subtle, and susceptible to a longer and more formal consideration than a mere blog posting. But this is a mere blog posting, this is what you get.

Lame Obvious Patent Applications: HEAL!

Patent law is so complicated that it is very hard to connect the different parts together intelligently. But let’s take a look at two different branches of patent law and think about how they fit together.

First, there is obviousness. The basic requirement of a patent is that it be a new non-obvious improvement over the prior art. In the past, there was a strong presumption that an issued patent was valid and non-obvious over the prior art, and it was hard to successfully argue that an issued patent was invalid as obvious from the teachings of one or more prior art references. As a result, patent prosecutors writing a new patent application often provided just a description of how the claims and figures worked, with little or no extra discussion explaining the non-obviousness of the invention—what I now think of as a “bare application.”

Then in its 2007 KSR decision, the Supreme Court radically rewrote the test for obviousness, and strongly signaled that the courts should be more active in finding issued patents as obvious and invalid. Now a valid patent has to be a much more significant improvement than was required before. Suddenly, bare applications without discussion of non-obviousness are unprotected against a high risk of being found obvious.

Another topic, seemingly unrelated to the issue of obviousness, is continuation practice. The specification of an existing patent application can be refiled with new claims—a continuation application. Section 112 of the patent statute requires that the specification provide a written description of the claims that enables one of skill in the art to know how to make and practice the invention. If the patent attorney believes that the existing specification satisfies the written description and enablement requirements, then it can be refiled without any new matter as a straight continuation application. Sometimes the patent attorney believes that some new matter has to be added to provide written description and enablement. That new matter can be added to the existing application, which is then filed with the new claims as a continuation in part (CIP) application.

One downside of a CIP is that if the new matter is needed to support the claims, then the priority date with respect to the prior art is the new later filing date. Not good. Sometimes (for complicated reasons) a CIP does not need the new matter to provide support for the claims, and then the priority date is the better earlier filing date of the parent application.

So now, let’s play a little alphabet soup and consider the seemingly unrelated topics of KSR and CIPs together. There are many bare patent applications still pending that were filed pre-KSR and written without any context or obviousness story. But new matter can be added in a CIP that provides that context and describes the invention in a way that highlights its non-obviousness over the prior art. And the good part is that the new matter is not needed for written description or enablement, so the claims would still be entitled to the earlier priority date. But the new narrative context and story of the invention greatly improves the vulnerability of the patent against an obviousness attack.

Pretty neat, n’est-ce pas?

How to Tailor Patent Claims for Different Countries

Last time, I discussed recent developments in the international IP system that motivate patent applicants to tailor the claim structures of their patent applications more specifically for their various destination countries around the world. But being a problem identifier is not enough—it’s the problem solver who gets the worm.

The first step is reconsider the strategy of having narrower dependent claims—they are insurance against the possibility that the broader independent claims may have validity issues with the prior art. In that case, the narrowing additional features required by the dependent claims are hoped to be less obvious but still blocking or likely to be infringed.

While patent attorneys understand that, inventors tend to think of dependent claims as a place to list the important technical features of specific versions of their inventions. The patent attorney ought to discuss the dependent claims with the inventor to focus on the improved validity consideration rather than the tendency towards a technical listing. But such discussions can be difficult for a number of reasons. (I won’t digress into those reasons here). Often, the easy way is to please the inventor by using the dependent claims as that listing of the technical features. But because of the painful new excess claim fees discussed in the previous article, patent attorneys need to more strongly control a limited number of dependent claims that really do have non-obvious details.

And not only do the number of dependent claims need to be tightly controlled, so do the number of independent claims. Sometimes a patent application describes multiple patentable inventions. The old way to handle this was to draft full sets of claims for each such different invention and include them all when the application was filed. But that approach can be foolish in light of the new excess claim fees. A better approach is to fully claim the first invention to be prosecuted, and provide single placeholder independent claims for later prosecution of the other inventions, perhaps with placeholder language in the summary and detailed descriptions for full sets of dependent claims for the placeholders.

Finally, in view of more compact claim structures, it makes sense to further optimize each set of claims for each jurisdiction. Fine tune the US claims (only) to deal with all the US-specific issues regarding section 101 (subject matter) and 112 (form/definiteness). And fine tune the European claims for them, dealing with their restrictions on medical treatments, computer software, and business methods; dressing up the claims into Jepson/reference number form, and exploiting their flexibility on multiple dependencies. And for other countries, put the pedal to the metal on the claims and go for the “best” claim language and coverage without compromising on the US/EP specific issues.

Hey, this is fun stuff! Even better than Rumpelstiltskin, we don’t even need straw, patents spin nothing more than new ideas into gold.

Need to Tailor Patent Claims for Different Countries

Back in the far distant past, say five years ago, it took almost no effort to prepare a Patent Cooperation Treaty (PCT) international patent application from an existing US patent application: Just open the US application in Word and select “Save As.” The claims in the PCT application were rarely changed from the US claims. But no more. The combination of major substantive developments and painful new fee structures have created powerful incentives to devote some time and effort to the PCT claims in their own right.

In the US, changes in the fee structures for “excess” claims now can result in many thousands of dollars in filing fees. In Europe, a basic filing fee now covers only the first 15 claims, with a 200 Euro fee for each additional claim between 16 and 50, increasing to 500 Euros for each claim beyond 50. A moderately large number of patent claims in Europe now equates to tens of thousands of dollars in punitive fees. But at least the European claim fees can be minimized by amending the PCT application when entering the regional phase in Europe to reduce the number of claims. Unfortunately, excess claim fees in China are calculated based on the claims present in the originally filed application, and the fees cannot be minimized after filing.

And, notwithstanding the policy of harmonization, major substantive changes have also developed in the US and other countries. In the US, there has been a recent long chain of major case law decisions altering and reducing the scope of patents and their subject matter. And there are more entrenched substantive differences between the US and many other countries: no business methods, no medical treatment methods, and in Europe, no computer software as such and major limitations based on the “original scope” of the claims.

So both within the US and outside, there are strong new incentives for limiting the total number of patent claims filed. That leaves the question of how to adapt to these circumstances. Coming up next time.

Always Draft the Claims First

Earlier this week, there was a comment thread on Patently-O which debated an interesting patent prosecution question—Do you start a new patent application by drafting the claims first? I am amazed that this is even a question. Let me jump ahead to the correct answer: Always.

The contrarians argue that for complicated technology, it works better to prepare the detailed description first, during which process they come to understand the invention. And then, after they understand the invention, they are able to write the claims.
I agree that you have to understand the invention before you draft the claims. So that is the true first step. But you still have to draft the claims before you prepare any other part of the application.

The claims really are the patent, at least the meaningful enforceable part of the patent. The only purpose of the other parts of a patent—the detailed description, the figures, the background etc.—is to give life to the claims by telling others in the field how to implement the invention. And until the claims are written, there is just no way to know what is needed in the other parts of the application. Once the claims are written, then they need appropriate supporting figures, background, and description.

So one problem with writing the description before the claims is that you don’t know yet what needs to be in the description, or what can be left out. And a good patent application leaves out a lot of interesting material related to the invention, material that is not needed to support the claims and which the client can protect as a trade secret. A poorly prepared description written before the claims can bleed trade secrets everywhere, for no reason.

But some would say that they can go back and revise the description after they have written the claims to remove unnecessary material. First of all, that is easier said than done—removing existing discussion is difficult to do so that everything you don’t need is gone and everything you do need remains. Moreover, everything that gets revised out was never needed in the first place and was a waste of time. Either the client pays for that unneeded time, or the partner writes it off the bill, but either way it was time stolen away from the central problem and task of writing a patent application, writing the best possible claims.

Always draft the claims first.

Am I a Good Patent Lawyer?

I am a patent lawyer, but how do you know if I am a good patent lawyer? I think the answer to that basic question has an easy part and a hard part.

The easy part is that being a good lawyer means being a good service provider. And it is easy to recognize the difference between good service and bad. Being a good lawyer starts with being aware of the client’s business challenges and goals, and having frequent thoughtful discussions with the client about where patents fit in that setting. It also means being responsive to client communications and providing clear timely answers to client questions. I think of all this as the equivalent of what you would expect when dining at a three star restaurant.

The hard part of recognizing a good patent lawyer is judging their professional ability. Because patent law is so complicated and so difficult, it is hard to assess the substantive performance of a patent lawyer. This is another form of the expert service problem that we all face in other areas such as evaluating the services provided by doctors, dentists, auto mechanics, etc. The client simply lacks the technical background to be able judge the full substantive merits of the professional services of a patent lawyer.

But surrendering on that point leaves only the famous Dirty Harry question: Do you feel lucky? And there are some things to look for, at least two of which come to mind immediately. First, multiple grammatical and spelling errors are not consistent with careful quality work. In and of themselves, such errors may often have no significant impact, but such things are indicative of the larger picture—the equivalent of dirty tableware and stained tablecloths in that fancy restaurant. Second, even though the language of patent claims reflects complicated and unusual constraints, still, by law patent claims have to be clear and definite. Claims that are impenetrable are not right, and are not the mark of a skilled attorney.

So to return to my original question, how do you know if I am a good patent attorney? First, I have to deliver exceptional legal service in my communications and responsiveness. Second, my work product has to be consistent with high quality valuable patents, using clear and definite claim language without glaring grammar and spelling errors. Is that so much to require?

Patent Infringers Need Sunscreen

These are sunny days for patent infringers. In fact, the weather has never been better. Over the past few years, the U.S. patent system has been walloped by a virtual legal hurricane, but now in the aftermath of the storm, times are sunny and warm for some.

Since the infamous BlackBerry case, the courts and the Patent Office have been busy making change after change to the patent system. Each change on its own arguably makes some sense, but cumulatively, they have all been in the same direction—against patent owners—and the patent landscape has been transformed into something wholly new, a mini-me version of what it once was.

Whether you think of it as a rogues gallery or an honor roll, the list of transformative court cases is undeniably long: KSR-lowered threshold for obviousness challenges, MedImmune-enabling licensees to challenge the patents they license, Ebay-higher threshold for permanent injunctions, Seagate-easier to avoid willful infringement, Bilski-limiting patentability of business methods, Comiskey-mental steps not patentable, Nuitjen­-data signals not patentable. Sunny weather indeed for nearly everyone, except perhaps for inventors and patent owners, who we have now been trained to refer to as “patent trolls” (to be consistent, I also now think of big corporations as “patent billy goats gruff”).

And the forecast for future promises more warm sunshine for patent infringers. Congress continues to look for a role to play in these transformations, and at the moment looks poised to pass “reform” legislation to “fix” the many “problems” in the present patent system.

Say, are you using those sunglasses?

Beneath The Surface

Intelligence, good looks, charm—let’s face it, patent lawyers individually and collectively are the complete package. We pretty much have it all. But a top patent lawyer needs more than that. To excel as a patent lawyer requires super-powers. Well, at least x-ray vision is helpful, the power to see under the surface.

One of the core activities in getting a patent is preparing a response to an Office action from the Patent Office after the claims have initially been rejected as unpatentable. There are two basic types of such rejections: (1) the substantive inventiveness of the claims over the prior art, and (2) the form of the claim language in satisfying the patent statutes. Among the various requirements in the latter category is that the claims are clear and definite enough to understand what they cover.

Claim rejections based on indefiniteness are often not a major problem for an experienced patent attorney. Typically, either a brief argument or a minor amendment satisfies the Examiner. And with experience, many of the pitfalls of indefiniteness can be avoided by good claim drafting techniques when an application is first prepared.

So, on the surface, it looks like either the form of the claims is proper in the first place so that indefiniteness issues do not arise, or if they do, a bit of minor attention cures the problem. It can seem like the main effort in prosecuting a patent application is to convince the Examiner that the claims are allowable over the prior art.

But a little x-ray vision can reveal a different situation under the surface. The claim language might not have problems sever enough to create an indefiniteness rejection. But there still might be places in the claims that are potentially unclear or ambiguous, a problem that I think of as micro-indefiniteness. This might not give rise to a rejection of the claims based on indefiniteness, but instead can create a rejection of the claims based on the prior art.

For example, one common situation is a rejection of the claims based on prior art that might have somewhat similar elements to what the claims require, but which are arranged in a different order. The obvious strategy is to argue back to the Examiner that the difference in the order of the elements is important. But this is also a situation to use x-ray vision to look underneath the surface of what seems to be going on. The Examiner’s seeming failure to take into account the required order of the claim elements might reflect some micro-indefiniteness in the claims that fails to connect the various elements together in the way that was intended. A deep and full consideration of the claim language and structure may suggest where such a problem might lie, and often a relatively minor change to the claim language may correct the problem.

It is worth noting that some patent attorneys strongly oppose any amendment to the claims that is not forced upon them, and therefore they roundly reject the above strategy. But not addressing the micro-indefiniteness of the claims can force responses to set forth longer, more complicated arguments and explanations which the Examiner may have trouble following or which may be unconvincing. This then creates a further rejection of the claims in another Office action. I believe that it makes more sense to make a small helpful change to the claim language, present a brief clear explanation of how the claims differ from the prior art, and obtain an allowance of the claims without further Office action.

So a little x-ray vision at the right time can be just what is needed in a patent attorney. Other super-powers may be available as needed.