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Osram Contemplates Second Manufacturing Facility in India |
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Commentary & Perspective...
How to File a Patent That Withstands AttackMay 18, 2006...In light of the most recent wave of patent attacks, settlements... and competitors repeatedly ignoring valid patents, we thought it timely for one of Stephen Smith's intellectual property (IP) primers. Steve, a veteran compound semi engineer, is a registered patent attorney based in Champaign, Illinois who closely tracks the CS and SSL industries. In this guest column, Steve shares with readers the reality checks one should apply to the original patent filing and process... JMcD by Stephen Smith, Registered Patent Attorney It is apparent that the compound semiconductor industry, worldwide, is very aware of intellectual property and further understands the implications of infringing another's intellectual property or patent right. Hardly a day goes by without this author reading about two LED companies cross-licensing one another's patent portfolio. This is good news because it avoids costly litigation battles and the negative public relations that result. However, to be meaningful, patents in a licensed portfolio still must be well written and accurately define the protected subject matter in case litigation does result. I often cringe when I hear someone say that they can save money by avoiding a patent attorney for the filing of a patent application. Such an applicant is known as a pro se applicant representing himself or herself before the United States Patent and Trademark Office (USPTO) without legal counsel. The apparent goal for the pro se applicant is the issuance of a patent from the USPTO without the added cost of an attorney. However, the question that should be asked before embarking on this path without an attorney is: What is the purpose of the patent? If the goal is to have just a patent document that hangs on the wall demonstrating an ability to be an inventor, and that's the end of the story, then that is a worthy objective. However, if the goal is to protect a property correctly and to profit from subject matter claimed in the patent, then the patent application must be drafted to fend off any attack from an adversary. Remember, the patent is a legal document that excludes others from making, selling or using the invention. The patent owner can demand a license, i.e. money, from entities using, making or selling product that infringes. If a targeted entity has invested a relative fortune in the enterprise, the entity certainly will rebuff demands to take a license by waging a full-scale legal battle against the patent. At this point, the patent becomes the center of attention with lawyers poring over the claims and the specification to assure that the patent fully claims what is asserted. The inventor knows what was invented. However, the issue at the forefront of any patent battle is whether the patent really claims and encompasses the allegedly infringing product. The patent includes claims that legally define the invention by setting forth what the inventor regards as the invention. The patent also includes a specification that has a detailed description of the invention and the pro se applicant often gets sidetracked at this juncture. The detailed description includes "the process and manner of making and using" the invention as directed by regulation and explained in the Manual of Patent Examining Procedure, 8th Edition, Revision 3, Section 608.01. The goal of the specification is the teaching of those skilled in the art on how to make and use the invention. Thus, the specification includes the best mode for making the invention at the time of application and the known embodiments. One of the mistakes made by pro se applicants is that the applicant fully describes the embodiment in the specification, but does not properly and distinctly claim the embodiment in the claims. The applicant mistakenly believes that the invention is protected. If and when the patent finally issues, the inventor cannot prevail in an enforcement action. Patent attorneys filing applications generally avoid this result because claims with varying scopes of coverage are included in the patent. A good patent attorney quizzes an inventor during an initial interview about ways a competitor will design around the invention and prompts the inventor to think about alternative variations. The varying scope of the claims generally captures these alternative designs. To the uninitiated, claims often look stilted and include varying amounts of legalese. However, in preparation for trial, each word of the claim is dissected to ensure the proper meaning in context of the patent, and that the meaning encompasses the allegedly infringing device or method. By the time the trial starts, a team of lawyers, as well as subject matter experts, will have debated the meaning of each word in the claim. A court determines the final meaning of the claim by using a well-defined procedure that is beyond the scope of this column. Up until that time, there may be at least two interpretations for the meaning of the words as well as the claim itself. The final meaning of the claim can vary in relation to the facts of the case and the applicable legal standards. What legal standards prevailed a few years ago may no longer be relevant, changing the way the claim is interpreted. Granted, there are many "cook books" that a pro se applicant can use to guide the applicant through the writing of a patent application. However, patent attorneys and patent agents do not religiously follow those "cook books." The United States Appellate Court for the Federal Circuit continuously decides cases regarding patent interpretation making it difficult for pro se applicants to remain knowledgeable. Patent attorneys and agents are constantly monitoring case law for the latest developments regarding patent law, and they write patent applications that comport with rulings handed down by the Federal Circuit and also the United States Supreme Court. Granted, patent attorneys are expensive, but how about the time and resources
that an inventor expended developing the invention. Oftentimes, that is where
the bulk of the cost of an invention lies, in the development of the invention.
Think about the cost of one's education, lab, workshop, and tools. An inventor's
time is not cheap either, and generally the time spent writing the patent, even
if it issues, may be wasted, especially if the patent does not comply with the
guidelines of Federal Circuit. A patent allows an inventor to exclude others
from making, using, and selling the protected subject matter. Defendants charged
with patent infringement will hire attorneys to provide alternative definitions
for the asserted claims and the attorneys will attempt to dismantle a patent
to show its invalidity. A well-constructed and properly worded patent, and claims,
will stand up to such attacks. If the patent cannot withstand the rigors of
such attacks, the pro se applicant may lose much more than the cost of writing
and filing the patent application. If you have news or
views to share about the compound semiconductor, LED or solid
state lighting industries |
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