Patent Irony: Crush Your Invention by Calling It Such

One of my favorite ironies in the world of intellectual property involves the deadly magic of the word "invention." By simply using that word in describing the invention in a patent, you may cast a spell that sucks the life out of your intellectual property and destroys the value of your invention. How can such self-referential doom be possible? This is only possible thanks to the deep magic of certain highly-trained wizards dressed in the dark robes of judges, who have developed dark techniques for taking various statements about the "invention" to teleport new, unintended limitations into patent claims, making their scope smaller and smaller until they practically vanish into thin air.

Ronald Slusky in the Feb. 2010 issue of Intellectual Property Today has a good article, "Writing the Detailed Description, Part II," in which he discusses some of the problems in using the word "invention." It's not that the word itself is poison or a deadly potion, but statements about the "invention," if not carefully accompanied with detoxifying qualifiers, can be used to override the language of the claims and add poisonous, unintended limitations. For example, if you say, "Figure 1 depicts the invention," then there is a risk that details shown in the figure that may be completely optional or peripheral to the "real" invention may be assumed to be an integral part when a judge interprets your claims. If an accused infringer doesn't have those peripheral features, he may escape even if he appears to literally infringe the "plain meaning" of your claims.

You can still use the word "invention," but use it with caution, as in these examples: "In one embodiment of the invention, there may be . . ." or "Figure 1 shows a system that may be considered for use in some versions of the invention."

Some practitioners now strive to avoid using the word "invention" at all, but perhaps that is unnecessarily restrictive.

Slusky urges practitioners to understand the invention thoroughly before writing the Summary or Detailed Description to avoid making sloppy statements about what the invention is or is not, in order to ensure that the specification really does justice to the claims. For inventors, make sure you are working a patent attorney or agent patient enough to learn from you and really understand what your invention is and what its points of novelty and nonobviousness are relative to the prior art. Make sure that the way she or he wants to describe your patent adequately reflects your real invention. It's the up-front work between you and your patent practitioner that will determine the value of the writing in the patent and the ability of your future patent to provide value.

In the drafting of the patent, make sure this simple commandment is obeyed: "Know thy Invention!" And then speak its name with reverence and caution, or you may cast a spell to aid your adversary.

You Could Win a Free Book: Call Me on GotInvention Radio This Thursday Evening

An exciting new radio show for inventors and entrepreneurs, Got Invention Radio (GotInvention.com), is the creation of master inventor and entrepreneur, Brian Fried. This Thursday night, March 18 at 7 pm CST, I have the privilege of being interviewed. The topic is quality patents and other IP-related topics from the book, Conquering Innovation Fatigue. We'll be giving away a couple of books to a few callers during the hour-long program, so call in with a helpful comment or good question and have a chance to get a free copy of this hardcover book.

The program is aimed at inventors and entrepreneurs, so we won't get too deep into some of my favorite topics, but we do hope to cover some basics on low-cost IA strategies, lessons learned from common and painful patent-related mistakes of inventors, the importance of a good prior art search, and other information that could help your future patents be more valuable and your future business more successful.

Also tune in next week on March 25 to hear Cheryl Perkins, CEO of Innovationedge.

When you are on the GotInvention shows page or most other pages on the site, click on the green box in the upper right-hand corner to launch your media player and listen to the show. It runs every Thursday evening at 7 pm CST. Be sure to call in! The call-in number is provided on the website (in the box you must click to listen, in fact).

Gauging Innovation: Sometimes An "Obvious" Change of Scale Can Be Revolutionary

I'm one of the skeptics who yawned when the iPad came out. "Just like existing products, only bigger, with fewer features and still no Flash...." I may have been dead wrong. Sometimes what looks like an "obvious" change in a something as simple as a physical dimension can enable who new levels of functionality. That wasn't terribly clear to me with the iPad, and still isn't, but another innovative company following suit opened my mind to the real possibilities here. Meet Spice 2.0, courtesy of Frito-Lay. Now I get it!

So the lesson for the rest of us is to consider what a change in some dimension of your existing products could do to change the way people solve real problems. Better yet, understand the unmet needs of the users of your products and competitive products, and understand how a change in some aspect of what now exists could provide surprising solutions to those problems. Doritos, you've taught us something here. I hope Apple's iPad will also realize similar potential.

Trademarks in China: The Toblerone® Case

Further progress in China's IP system is reflected in recent trademark litigation in China. See Vanessa Zhou's article on three-dimensional trademarks in China in a recent issue of World Trademark Review. She discusses the success that Kraft Foods experienced when suing to protect their trademark for the triangular 3D shape of their famous Toblerone® chocolate brand.

Along the way, she discusses the nature of trademarks on 3D shapes. Though unusual, they can be obtained.

A three-dimensional mark may consist of the configuration of the goods, the package of the goods or other three- dimensional designs. Popular examples of three-dimensional marks include the ridged Coca- Cola bottle, the Rolls-Royce figure of the Spirit of Ecstasy and Ronald McDonald, the McDonald’s clown character. In practice, however, not all three-dimensional signs can be registered and protected as trademarks.

This is because three-dimensional marks must not be merely functional. Article 12 of the Trademark Law states that "where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered".

She continues to explain further details in deciding if a 3D trademark registration is possible.

Kraft prevailed against a Swiss competitor in protecting their Toblerone® brand. Given the track record of foreign companies increasingly prevailing against Chinese companies in IP litigation, when the facts are in their favor, I suspect and hope that the outcome would be similar if the infringer had been a local Chinese company. There may yet be cases of this kind to observe.

One of the challenges for 3D trademarks arises from related design patents, which may be held by other parties. Ms. Zhou gives a recent case in China where Nestlé sought to sue a Chinese soy-sauce manufacturer for infringement of their 3D trademark of a particular brown bottle shape for their soy sauce product. The competitor, Weishida, actually received a design patent for their bottle shape in 1991 and have been selling the product since 1983, and have sales far greater than Nestlé. Ms. Zhou says that these facts will make it very difficult for Nestlé to prevail.

A related problem occurs in patents, when companies doing business in China find that patents on their products have been filed and issued by others in China. Sometimes their own published patents have been filed by someone else, or in other cases someone has drafted a new patent that may seem to be based on the company's original patent or at least their internationally protected products. These problems are correctable, but can add to the challenges. It's important to have careful searches of Chinese patents done to detect such problematic patents and take appropriate action. As the Chinese IP system becomes more sophisticated and strengthens its resources, questionable patents will become much less of a problem.