By MARC ZUTAUpdated: DECEMBER 22, 2016 08:36
People often ask me, how to get the best patent protection for their ideas and inventions.Well, after 21 years as patent attorney, I can write a book on the subject. This article covers just some of the essentials.1. Be the first to file: You have this hot, great invention, which addresses a real need or problem. You are now in a worldwide competition, maybe others also saw the opportunity to address that problem; the first to file a patent application, will get a patent granted. The others, well... will not.In the past the United States used a different method, "First to invent", but the America Invents Act changed that to the "First-inventor-to-file (FITF)" approach.You can't buy back time, time is priceless. One faces the dilemma: either to file a patent application fast, in the knowledge that it is far from being perfect, or to prepare an excellent application, which will take time to accomplish. In the former case, the application may be rejected at examination because of obvious flaws; in the latter, the application may be rejected if someone else has already filed an application for the same invention.We solved this problem, of eating the cake and having it too: file two patent applications. The first application is filed as soon as possible, to secure an earlier filing date; the second filing is a quality patent application, to achieve excellent protection.This is entirely different from the contemporary practice, of filing a provisional first, with a Patent Cooperation Treaty (PCT) to follow within a year.For one, in the new method the second application is also filed ASAP rather than within a year, so the two applications together form the initial patent filing.The second application will cover more ground than the first, so maybe not all the innovative matter therein will be granted the priority of the first application.For another, the provisional is not so devised as to be filed ASAP and still to allow for a second, improved version to be filed subsequently. And there is more...
If you want patent protection in more than one country, you still have to file patent applications in those countries, or a PCT application, within one year from the date of the first application.2. Effective strategy for positioning your invention, to better distinguish it: There is a huge number of patents and applications worldwide. For example, a database query for the word "smartphone" in the title alone gives 2,162 results. How to compare your invention with the existing patents, so your patent application will accentuate the unique features of your idea?For complex inventions there is the problem of comparing the various features of your invention with the prior art; for simple inventions the task is easier with each patent, but there are much more patents to compare with. The human mind just cannot comprehend and process unassisted so much information.To assist the patent attorney in this task, we developed a computerized tool, Patentics. Patentics uses precise mathematical equations to describe inventions, so a computer can process them. Patentics was approved for use at the Nazareth District Court (Judge: The Honorable Shaher Atrash) for presenting my expert opinion there. 3. Prepare a quality patent application: In your application, the descriptive text, the drawings and the claims should intertwine, to achieve synergy and to form one homogeneous presentation of your invention. For each innovative feature of your invention there should be a distinct descriptive text backed by a corresponding drawing, together to form the basis for one or more claims.Although the law permits inventors to use any terms in their application ("Inventor is own lexicographer"), I strongly disagree. In practice, this results in weak patents. At examination or in Court, there often arises the question, what exactly the inventor meant with a key term. The inventor cannot then answer the question, because the examiner or the judge will ask, what the inventor meant at the time the patent application was filed. Of course at a later time, the inventor will give a better answer, with the benefit of hindsight. Best to use professional, precise terms in the application.Clarity of description is a prerequisite for patent grant. Sometimes inventors use a nebulous description, in a vain attempt to hide their secret, or in the false belief that they can disclose the invention later, or simply because their thinking is not well organized. We use a systematic hierarchical approach: first the overall system is presented, in the context of the problem addressed and existing patents; then we delve into details, to present innovative features in various components of the invention.The components of the invention should be assigned bibliographic control numbers using a hierarchical approach as well. Thus, if you look at memory 128, you instantly know that it pertains in the microcomputer 12, which itself is part of the speech synthesizer 1.Thus, the numbering of the parts also contributes to achieving synergy, clarity and excellence.By contrast, it is a terrible waste of real estate in your patent, to give arbitrary, nondescriptive numbers to the components there.4. Efficient examination of your patent application: I recommend using the accelerated examination path. The chances of getting a patent granted are much better, and it is possible to achieve stronger patent protection. In the regular path, it may take four to ten years to get a patent granted. Using accelerated examination, you can get a patent granted within one to two years.For one, the maximum lifetime of a patent is 20 years from the filing date. So if it takes 6 years to get a patent, there remain only 14 years at most for you to benefit from its business advantage.For another, in a faster examination there is less chance that your competitors will awaken to oppose to the patent grant. So you can get the patent granted, and with a strong protection, too. After you get the patent registered, it will be much more difficult for competitors to fight it. Patent protection and product commercialization support each other in a virtuous circle: patent protection gives you a monopoly to sell your product, at a better price; the profits can support still stronger patent protection, etc.By contrast, delayed examination may lead to a vicious circle: unprotected, your new product sales may flounder; copycats will be fast to introduce cheap copies to compete with you; you will not have the funds to protect your invention, etc.Note: it is impossible to guarantee that a patent will be granted on any specific application.5. Strong claims system: After the patent is granted, the claims define the extent of the protection provided by the patent. A strong patent has a significant number of claims (usually 10 to 20), and so devised as to cover systematically as much ground as possible. Here as well, our novel method Patentics can be used to devise an effective strategy for the examination: to compare our patent application with the citations presented by the examiner, to demand for our application the widest protection coverage possible- and to prove to the examiner that we have a right to it.All too often, applicants renounce too much ground, too fast. Afterwards this cannot be corrected, because of the rule: "Subject matter surrendered cannot be reclaimed". The applicant should stand his ground on legitimate issues. There are patents having only 3 or 5 claims- these are weak patents, because they provide weak protection while extant, and are more vulnerable to cancellation at the Patent Office or in Court. It is easy and convenient, when the examiner objects to some of the claims, just to agree with him and cancel these claims. This is the "vanishing claims" effect: During examination, the examiner objects to 4 claims and the applicant submissively cancels those claims, so the number of claims goes from 18 to 14; later the examiner finds another citation or objection, and objects to 5 claims more, and so on. At the end, either a weak patent is issued, or the number of claims reaches zero, so the application is rejected.I disagree with this practice: if there is a legitimate objection to some of the claims, I try to amend them to keep them alive; at least it is possible to add new claims within the allowed, agreed with the examiner patentable subject matter.In any case, new claims can always be added so the patent granted will include a satisfactory number of claims.6. Keep your patent protection up-to-date: Even the best patent protection erodes with time, as your products improve and you plan for a new product line.Suddenly you find that your new products differ from the description in your patent, and the products are not sufficiently covered anymore. Especially if you consider suing an infringer, you should first review your patent protection and update it. It is so much easier to achieve enhanced patent protection at the Patent Office than to fight in Court, and the cost is lower, too. This works both ways: If the patent doesn't satisfactorily cover your product, the patent is vulnerable to cancellation on the grounds that it does not disclose the best mode of implementing the invention. This strategy also extends the term of your patent protection, so you can benefit from patent protection for more than 20 years.For example, by filing additional patents for improvements, Edison extended the patent protection for his electric lamp to more than 50 years.I hope, dear reader, that this article will help you to demand a good protection for your invention, or to review your patents and applications.This is no legal advice, rather you should consult with a patent attorney regarding your specific situation.Future articles will further detail the various issues presented above.Eng. Marc Zuta,Patent attorney.marc@patent4u.co.il