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?
Friday, June 26, 2009
Sunday, June 14, 2009
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.
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.
Thursday, June 4, 2009
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?
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?
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