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Archived updates for Sunday, January 21, 2007

Things to Consider When Reviewing a Patent Application

1. Accuracy and Completeness

As you review the written description and drawings of a patent application with any co-inventors, make sure that they contain an accurate and complete description of the invention. Once the application is on file, it will not be possible to add "new matter" without filing a new application, paying additional government fees, and possibly jeopardizing your filing date.

In the absence of an agreement to the contrary (such as an Assignment), each inventor will have the right to make, use, sell, or license any patent rights that are granted under the application. Any intentional deception that is associated with the naming of inventors may result in the corresponding patent being held unenforceable. Although errors in inventorship that arise without deceptive intent can be corrected at any time, it is preferable to name the correct inventors when the application is filed. In this regard, any person who contributed to the conception or "enablement" (discussed below) of the claimed invention shoul be listed as an inventor. On the other hand, a person who merely makes drawings or a working model from instructions provided by others is not an inventor.

Joint inventors are not required to work together at the same time or location, or make the same type or amount of contributions. Rather, each inventor must only make a contribution to the subject matter of at least one claim. However, where an invention is conceived by two or more people during a "brainstorming" session, then it is likely that all people who spoke up during the session should be considered as co-inventors, unless it is clear that an individual who spoke up did not add anything of substance to the conception of the invention. Where records and recollections are not clear, it is generally preferable to name all individuals present at the session as co-inventors.

2. Enablement

You should also keep in mind that U.S. law requires patent applicants to submit a written description of their invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the invention." However, compliance with this "enablement" requirement will ultimately be considered by a judge and/or jury with little or no technical training. Therefore, I generally try to provide enough background information so that even unskilled persons will be able to appreciate the various features and advantages of the invention that are recited in the claims.

I generally try to broadly describe a variety of features in addition to the preferred embodiments that were discussed in your disclosure materials. Regardless of whether you currently intends to seek protection for any of these additional features, it is generally a good idea to disclose them in the application so as to bar patent protection for others with closely similar inventions, and to give us the freedom to broaden or narrow the scope of the claims during the examination process. For example, it may become necessary to narrow the claims in order to further distinguish the invention from earlier prior art technologies. Alternatively, it may become necessary to advocate a broader claim interpretation in order to cover a closely-related, competing technology. Therefore, if there are any other embodiments or features that you may have considered, but rejected, or if there are equivalent structures for performing the function of a particular element, then you should bring them to your attorney's attention so that they may also include them in the application.

3. "Best Mode"

U.S. patent applications are also required to disclose the "best mode" contemplated by the inventor(s) for carrying out the invention at the time the application is filed. Therefore, please make sure that the description section contains an accurate and complete description of the most useful embodiment of the invention, and, in particular, any improvements that may have been recently developed since the date on your invention disclosure materials. It is not necessary for the best mode to be identified as such as long as finding the best mode would not require undue experimentation.

4. Claims

A. Infringement

The scope of a patent owner’s right to exclude others from exploiting a patented invention is defined by the claims at the end of the application. In order to infringe a patent claim, each limitation of the claim must be present in the accused product, either literally or equivalently. Literal infringement requires that the accused product or process include each and every element of the claim. Consequently, if one or more elements of the claim are not satisfied, then the requirements for literal infringement are not met. Even if a claim does not literally "read on" an accused product or process, it may still be infringed under the Doctrine of Equivalents if the differences between the accused product or process and the claims are insubstantial. However, neither the literal or equivalent scope of a claim is allowed to cover the prior art described below with respect to your "duty of disclosure."

B. Claim Interpretation

In the claims, you will see the terms "comprising" or "consisting essentially of" as a transition from the preamble to the body of the claim. These terms have well-defined meanings in patent law. "Comprising" generally means including, but not excluding other features, while the more-narrow "consisting essentially of" means excluding all other features except those that are of no special consequence.

You may also see "means–" and/or "step–plus–function" language in the claims. An element in a claim which is expressed as a "means" or a "step" for performing a specified function is interpreted to cover the corresponding structure, materials, or acts described in the specification, and equivalents thereof. For literal infringement, the accused device must perform the identical function specified in the claim element by virtue of a corresponding structure that is disclosed in the patent specification for performing that function, or an equivalent of that corresponding structure. This is another reason why it is important to identify as many alternative embodiments of your invention as possible.

C. Scope of the Claims

In order to minimize the government surcharge fees charged for examining claims over a certain number, we generally try to limit the number of claims to around a total of twenty. We also try to direct the claims to a single invention in order to avoid the payment of multiple filing fees for independent or distinct inventions that the Patent Office must examine seperately. Nonetheless, you should let your attorney know if there are any other aspects of the invention that should be protected.

With regard to the claims, you will often see that that try to cover a range of embodiments for the invention and, where possible, have included device, method, and/or computer logic claims. In particular, we have created several claim "trees," where each tree has one "root" independent claim sprouting several "trunks" leading to various "branches" of dependent claims. The intuitive result of this configuration is that each dependent claim includes all of the features of the independent claim plus the features in any intervening dependent claims along the trunk to which it is attached. In this way, even if some of the claims are later held to be invalid because they cover prior art for which we were not aware, we can still obtain and enforce a slightly more-narrow scope of protection for the other "embodiments" of the invention that are defined by the remaining claims.

The claims should be reviewed to make sure that they "read on" all of your anticipated commercial embodiments and any other commercially-significant features.

5. Duty of Disclosure

All individuals who are associated with the filing and prosecution of the application have the legal obligation to disclose to the U.S. Patent Office all information that is known by them to be material to the examination of the application. Failure to disclose such information may lead to any resulting patents being held unenforceable. This "duty of disclosure" remains in effect until any patents are ultimately issued and most often applies to two types of "prior art" which could otherwise prevent the issuance of a patent as discussed below.

A. Prior Art

The first type of material prior art is information concerning the invention being "known or used by others in this country," or "patented or described in a printed publication" anywhere in the world, before the invention was completed by the applicant. The second type of prior art concerns the invention being "patented or described in a printed publication in this or a foreign country," or "in public use or on sale in this country," more than one year before the date that the patent application was filed in the United States. With regard to U.S. patents, it is also important to remember that they become effective as prior art on their U.S. filing date, rather than the later issue date on which they are actually published.

B. Submission of Prior Art

In order to comply with this duty of disclosure, copies of any references that are cited in the application will typically be cited to the Patent Office as part of an Information Disclosure Statement, or "IDS." Since government surcharge fees can be avoided by filing the IDS within three months of filing the original application, we ask that you bring any additional prior art to our attention with your other comments on the application. If you become aware of additional prior art later, then you shoul bring it to the attention of us or your attorney as soon as possible so that other surcharge fees can be avoided by promptly submitting the information to the Patent Office within three months of its discovery.

6. Bars to Patentability

Finally, please note that the one-year "grace period" discussed above for certain prior art in the U.S. is not always available for corresponding patent applications that are filed in other countries. Therefore, in order to preserve all of your foreign patent rights, your patent application should be filed before conducting any public or commercial activities which could start the grace period. In other words, the invention should not be publicly disclosed, offered for sale, licensed, or sold until you have received confirmation that a patent application has been filed. If any of the circumstances may apply to this invention, then you should notify your attorney immediately.
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Anonymous John Rizvi said...


You provide a good "easy reading" summary of things to keep in mind when reviewing a patent application. I noticed that most of these items are the responsibility of the patent attorney drafting the application.

I would like to come up with a short checklist for inventors to use themselves in reviewing the work of their patent agents or attorneys.

February 27, 2007 8:54 AM  

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