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Archived updates for Wednesday, December 19, 2007

Three Points for Improved Invention Documentation and Evaluation

INVENTION IDENTIFICATION - A commercial embodiment for the invention needs to be clearly identified, preferably in the form of drawings and a claim outline listing several elements that have not been previously combined in the same manner, in order to satisfy the novelty requirement for patentability. (More on the "nonobviousness" inventive step requirement below.) Once a claim outline has been identified, then inventorship can be confirmed by examining individuals' contributions to the conception and/or enablement of those features. Mere experimental results that might suggest how to configure a commercial modification are not enough. All of the possible variations and permutations should be identified in the disclosure along with the "best mode" contemplated by the inventor(s) for carrying out the invention. A summary presentation format for helping to evaluate whether the cost of patent protection is justified will then typically include
  • the 2-3 (structural and/or functional) items that would be combined at the "point of novelty" in the claim
  • the closest prior art that we know of (to confirm point of novelty, and give some feel for patentability)
  • the main advantageous/unexpected/ technical and commercial results that the combination provides (for patentability and rating)

PRIOR ART IDENTIFICATION - The disclosure must also identify all closely-related earlier activities, including earlier invention disclosures by the same organization, products, and patent applications, publications by anyone, and other publications and dates of public uses and/or offers for sale of similar technology. Without such prior art identification, there is no way to know what scope of protection might be available for the invention, and/or how difficult it will be to obtain any such protection, and what the deadline is for getting the application on file. If pertinent prior art is not discovered until after the application is filed (by the patent office) or after the patent is enforced (by a competitor), then the original justification for the patent will likely have been incorrect, especially if the application is refused, or the patent is invalidated. "Intentional" failure to disclose makes any resulting patent unenforceable, and intent may be inferred at a later time the benefit of hindsight

INVENTIVE STEP SUPPORT - The invention disclosure should also include an explanation concerning why the new combination of elements provides advantageous, and preferably unexpected results. These will impact patentability and rating. Persuasive legal arguments will likely have to be made two to ten years after the application is filed in multiple applications filed around the world. These non-obvious arguments are slightly different in every jurisdiction, but generally follow the same broad rationales, such as

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices (methods, or products) in the same way;
  4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  5. ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Under the latest U.S. patent examination guidelines, once the Patent Examiner makes any of these "prima facie" findings, usually by combing prior art references, it is then up to the applicant to submit persuasive rebuttal evidence and argument for overcoming the rejection. For example, in the case of a claim to a new combination of conventional elements, applicants must be able to persuasively argue that

  1. one of ordinary skill could not have combined the claimed elements by known methods (e.g., due to technological difficulties);
  2. the elements in combination do not merely perform the function that each element performs separately; or
  3. the results of the claimed combination were unexpected

It is also important to keep in mind that prior art is not strictly limited to the four corners of the technical documents being applied, but further includes specialized understanding of one of ordinary skill in the art, and the common understanding of the layman. The Patent Office will therefore also rely on things like “official notice,” “common sense,” and “design choice” for material that is not literally discussed in the text of a publication.

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