United States: Is Your Patent Attorney Asking you the Right Questions?

Originally published in President & CEO magazine October,2003

Not all inventions are equal. Some inventions may constitute core technology of a major product line and may represent great value for your company, to be protected at all costs.

In contrast, other inventions you may seek to patent may not be commercially valuable. Perhaps you're seeking a patent for defensive purposes, to "flesh out" your patent portfolio, or to reward an inventor for being innovative. These two types of inventions call for entirely different approaches to the patenting process.

To further complicate matters, recent decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit have placed severe limitations on the so-called "doctrine of equivalents." Suppose your patent literally covers a device having an arm that is twenty inches in length, and your competitor comes out with a competing device having a sixteen-inch arm that performs the same function. While not literally within the scope of your patent, under the doctrine of equivalents the competitor's arm might be considered the "equivalent" of your arm and therefore infringe.

However, it is no longer safe for a patent owner to rely on a trial court to liberally interpret his patent to cover anything outside its literal scope. The fact that a patent owner can no longer count on a court to construe his patent to cover "equivalents" of what is claimed in his patent should have fundamentally changed the way in which your patent attorney approaches your patent applications. Has it?

The "traditional" way of drafting a patent application is for the patent attorney to take an invention disclosure from the inventor, either orally or in writing. The patent attorney then drafts a patent application covering what the invention disclosure encompasses and claiming whatever the inventor identifies as novel. The identified novel feature may or may not have commercial value. Without knowledge of what is already known, i.e., the "prior art," the claims are almost invariably overly broad, and the patent office will force the claims to be narrowed during the examination process. At the end of the examination process, a single patent issues.

This approach has the advantage of relatively low cost. However, this approach has far too many disadvantages even to be serious- ly considered as a means for protecting valuable core technologies. As to limitations added at the requirement of the patent office to distinguish over prior art, no range of equivalents is allowed, and the scope of that claim limitation will be limited to its literal language. Thus, a competitor can circumvent the claim by substituting an equivalent feature for that particular element. Also, there may be few or even no alternative designs disclosed or claimed in this type of patent, leaving the door open for competitors to design around the patent. Finally, the claims of the patent may not even be commercially relevant.

The preferred approach for protecting core technologies is for the patent attorney to get involved perhaps as early as the design stage. With the involvement of patent counsel, a design can be selected that is most likely to provide the possibility of patent protection. When Gillette was developing its Sensor® razor, for example, there were seven designs under consideration. The design that was ultimately selected was the design that provided the greatest possibility of a patent wall.

Once the design is selected, a prior art search should be conducted to determine the state of the art. This will enable the patent attorney to draft claims that do not read on the prior art, thereby minimizing the possibility of being forced to narrow the claims during examination to avoid prior art cited by the patent examiner.

The patent attorney should also meet with the inventor and preferably other engineers on the project to receive disclosure not only about the final design but also about all possible alternative designs. These alternative designs should be patented, even if you never intend to market them, to set up a wall to prevent competitors from entering the market with a competing product.

It is also advisable for the patent attorney to meet with someone involved in marketing the product, for there may be features of the invention that are insignificant to the inventor that may be a major selling point to a marketing person. As an example, one of the patents for the Gillette Sensor covered packaging that opened with a "masculine" ripping sound. As another example, the inventor may view his invention as the entire product, while a marketing person may recognize a substantial aftermarket for replacement components, e.g., a razor and razor blades. Once made aware of the aftermarket for replaceable components, the patent attorney can try to obtain patent protection for the razor blades separate and apart from the razor, to prevent competitors from entering the aftermarket for the replacement blades.

A patent application drafted in this manner may well result in multiple patents. It will result in focused claims that avoid - but cover right up to the edge of - the prior art. It will avoid commercially trivial claims. It will cover alternative designs, even those that are not being marketed, so as to block competitors from entering the market with a competing product. It will avoid the need for amending claims during examination and thus avoid giving up the range of equivalents to which the claims are entitled. And it will result in claims that literally cover a wide range of designs, such that reliance on the doctrine of equivalents is minimized.

This approach is not suitable for every invention. It is costly, as it requires a greater investment of time by the patent attorney, a longer patent application, a greater number of claims, prior art searching before filing the application, and the possibility of multiple applications, which results in multiple filing fees, costs of multiple examinations, multiple patent issue fees, and multiple patent maintenance fees. However, for your core technologies, the extra cost is justified. It is up to your patent attorney to know which style of patent prosecution is appropriate for the particular invention.