Unwise Shortcuts in Patent Preparation: Don't Trust "Cheap" Provisional or Utility Applicationis

One of my favorite blogs, IPwatchdog, has a new post on the costs of patent preparation: "Patent Application Costs: You Get What You Pay For." Well, you may not always get what you pay for, but you certainly aren't going to get what you don't pay for, unless you are working with very generous IP professionals.

Gene Quinn says this about the cost of preparing a patent:

[Y]you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.... So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.

At Innovationedge, we've done some non-provisional patents for much lower than $6k--when we are interested in taking the invention to corporations we work with for potential licensing or for other sound business reasons. Then it's in our interest to help the client get a strong patent and we're willing to put in a lot of extra effort at low cost to create intellectual assets that we think will lead to licensing success. But the many people who walk in and ask us to do a quick and dirty provisional on the cheap are usually sent away disappointed because I'm not willing to cheat them with a provisional that doesn't actually protect them.

We've had some real heartbreaking moments when a client showed us their cheap $1500 or even $4000 provisional application that was just three or four pages long and barely even described the invention. We've seen companies telling their investors that they had thorough IP for their new product when it was provisional garbage. The false security created by a bad provisional application can lead people to disclose their invention and lose rights thinking they have a priority date when the cheap document they have put their trust in may not even come close to an enabling disclosure.

We do provisional applications all the time, but I generally prefer to craft each one as if it were a utility application, ready to file as such with a full set of claims. I prefer to do a detailed search, then draft a detailed description with many alternative embodiments, considerations of how the invention will be used, recycled, marketed, etc., with implications across the supply chain, with regulatory considerations, etc., as needed to give broad enablement and to provide details and verbiage that can help respond to many unexpected twists and turns in prosecution. Especially for the utility application, a lot of work is required to come up with a reasonable strategy in claim construction and to build in the support disclosure. While our rates are low compared to many, the final cost is not going to be $1500.

If the cost of a good patent is too much, don't patent it. Trying to patent something for next to nothing will usually just give you nothing and waste your money in the end. It may feel good to have a patent filed, but if it is actually worthless, you have nothings (except, perhaps, the benefit of having taught the rest of the world something about your invention, such as how to make it).

Claiming a "System" in Your Business Method Patent? Think Apparatus: MPEP Reminder

If you are claiming a computerized "system" of some kind in a patent application related to software or business methods, be sure to think of the claim in terms of how the PTO will examine it. Your system will probably be viewed as an apparatus and will need to have hardware and tangible elements built into the claims that support its novelty. The fact that the system is used for a novel purpose is great in method claims, but might not be of any help in a system claim unless you recite novel structure.

A friendly examiner at the USPTO recently explained that Section 2114 of the MPEP should be consulted when contemplating system claims. This section offers important reminders about how to claim an apparatus, and why a novel use of a prior art device (like a server) is not sufficient for an apparatus claim:

2114 Apparatus and Article Claims - Functional Language [R-1] - 2100 Patentability

2114 Apparatus and Article Claims - Functional Language [R-1]

For a discussion of case law which provides guidance in interpreting the functional portion of means-plus-function limitations see MPEP § 2181 - § 2186.

APPARATUS CLAIMS MUST BE STRUCTUR-ALLY DISTINGUISHABLE FROM THE PRIOR ART

While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART

A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material". The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure
of the mixer and thus the claim was properly rejected.).

A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM

Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference. It should be noted, however, that means plus function limitations are met by structures which are equivalent to the corresponding structures recited in the specification. In re Ruskin, 347 F.2d 843, 146 USPQ 211 (CCPA 1965) as implicitly modified by In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elements that could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening element, either expressly or inherently.).

Cheaper Drugs or Missing Drugs? Why Patents on Drugs Help Consumers

Many voices are clamoring for abolition of patent protection on drugs or compulsory licensing of patent drugs at reduced rates. Some nations already demand this. The simple-minded thinking behind this is that by eliminating the high royalties that patent holders can command for their drugs or other products, prices will be lowered and the masses will be blessed. It takes only a little consideration to realize that this movement is more about gaining political power and popularity than it is about strengthening health care, for if the profit incentive is removed, there is no incentive to invest billions in drug discovery, development, and testing. There would be no incentive to take on the extreme risks of marketing a drug. In short, there would simply be far fewer drugs.

Tamoxifen is one example. A brief summary of the issues is provided in a letter-to-the-editor today in the Wall Street Journal by Michael Murphy of Cambridge, Massachusetts:

Regarding the letters of Oct. 7, 15 and 19 responding to your editorial "The 'Pay For Delay' Rap" (Oct. 5): The underlying assumption seems to be that lower drug prices will always benefit consumers. However, this assumption is not just wrong; it has the potential to significantly harm consumers as well.

To demonstrate how, consider the story of tamoxifen, a drug originally developed in 1962 by ICI (now AstraZeneca PLC) as a contraceptive. Although this research was unsuccessful, an unrelated study at the time found another potential use for tamoxifen: treating breast cancer. However, ICI also considered abandoning its tamoxifen research because of economic concerns, most notably its ongoing inability to patent tamoxifen in the U.S. Fortunately, one of the scientists was able to convince ICI to continue development.

AstraZeneca was finally granted a U.S. patent for tamoxifen in 1985, but two years later this patent was challenged by Barr Pharmaceuticals (which wanted to market a generic version). In 1992 the patent was ruled unenforceable, which was likely a fluke ruling, seeing as the patent was upheld in three later challenges. But despite the likelihood that it would prevail on appeal, AstraZeneca instead agreed to a reverse settlement with Barr that preserved its patent while allowing Barr to immediately market tamoxifen at a slightly reduced price.

Though consumers paid less for tamoxifen as a result of this settlement, the Federal Trade Commission opposed it, believing this was a "weak" patent that deserved far less protection. Had ICI been aware of this in 1972, it may have abandoned its tamoxifen research after all. Instead, an estimated 400,000 people are alive today who otherwise would not be thanks to tamoxifen, and I doubt many are concerned that they overpaid.

Related reading: Barr's press-release about their patent victory resulting in lower prices for Tamoxifen. But if the patent pain ICI/Astrazeneca faced had been recognized initially, we simply wouldn't have had this drug today. We need patent protection to give innovators a chance of realizing significant gains for those few and rare drugs that puss through the increasingly difficult hurdles the FDA and other have put in the path to market. Without incentives, innovation dies--and so do those who could have benefited from the drugs.

Score One for the Big Guys: How to Trick a Future Nobel Laureate into Walking Away from a Patent and Giving Away His Rights for Free

Tim O'Reilly (@timoreilly on Twitter) had a recent tweet about the Nobel Laureate Andre Geim who discovered graphene and many potential uses for the super strong two-dimensional diamond-like material. His tweet was "Puts the lie to the claim that patents help small inventors: Why Geim Never Patented Graphene http://bit.ly/9QrEC3". The link is to a discussion on Slashdot that begins with this observation about why Dr. Geim didn't patent graphene. Turns out he almost did, but chose not to after a conversation with someone from a big multinational company that could become a major user of graphene in the future. Here's the content that Tim O'Reilly and others feel shows why patents don't help small business owners:

gbrumfiel writes

"As we discussed on Tuesday, Andre Geim won this year's Nobel prize in physics for graphene, but he never patented it. In an interview with Nature News, he explains why: 'We considered patenting; we prepared a patent and it was nearly filed. Then I had an interaction with a big, multinational electronics company. I approached a guy at a conference and said, "We've got this patent coming up, would you be interested in sponsoring it over the years?" It's quite expensive to keep a patent alive for 20 years. The guy told me, "We are looking at graphene, and it might have a future in the long term. If after ten years we find it's really as good as it promises, we will put a hundred patent lawyers on it to write a hundred patents a day, and you will spend the rest of your life, and the gross domestic product of your little island, suing us." That's a direct quote.'"

While some people, including some in the anti-patent community, see this as a self-evident case for the problem with patents, it's actually just the opposite, in my opinion.

Look at the story again. A genius on the verge of filing a foundational patent for a major breakthrough in technology approaches a large corporation who might benefit from the technology. The company learns that the inventor is about to file a patent. A valid patent would mean that the company would have to pay royalties for the invention, perhaps very expensive royalties. If no patent is filed, the company can use the technology for free and develop its own patents without having to cross-license or worry about what Andre Geim owns. Hmm, which would be better: paying a lot, or paying nothing? Having to work with an inventor or tech transfer office or new patent owner who may end up thinking an invention is worth billions, or having the whole thing pretty much gratis? Tough call, but I think the corporate leader was quick to recognize the advantages to nipping the patent threat in the bud. How could he talk the inventor out of a patent? What negotiating tactic to deploy? ah, how about the Hindenburg? That's where you explain to the other party that their intended course of action would be a flaming disaster, with burning bodies falling out of the sky--oh, the humanity!--resulting in the adversary becoming toast themselves.

The Hindenberg it is. The corporate leader then explains that IF Geim is so foolish, so greedy, so inhumane as to file a patent, disastrous suffering will follow and he'll be burned. "100 patents a day!" Overwhelming force! You'll go into debt suing us for nothing! You'll be toast, baby. One big flaming Hindenburg crashing into the ground.

Baloney! All bluff and bluster. But the intimidation and scare tactics work. "OK, OK, I won't file my patent. Sorry for even thinking about that. Now I see that patents don't help the little guy, Mr. Big. Here, take what I've got for free. I'm just honored to watch you commercialize my work."

Patents are the great equalizer. It's what gives lone inventors a fighting chance against the big corporation that wants to take what they've got for free. It's not easy and may not work, but with patents you've got a chance and corporations know it. Good ones respect that and will work with out. Others will try to take what you've got anyway, or better yet if they can, talk you out of pursuing a patent. Without one, you've already surrendered. You might as well throw the keys of your car to any passing stranger and hope they will pay you someday after they drive away.

The story isn't about why patents don't help the little guy. In fact, I think it's about how much some big corporations despise and loathe patents in the hands of little guys. So much so that they would make outrageous statements to trick a brilliant scientists into NOT doing the one thing that could have helped him most: filing a patent. Instead, he handed them his inventions for free. Score one for the big guys.

Genome Patents Are from Venus, Genome Sharing Is from Mars: The Cocoa Genome Published, not Patented

In the UK, The Independent reports an interesting story about discovery the details of the cocoa genome, a major scientific project that could help cocoa producers worldwide become much more productive in raising this sensitive crop. What I found interesting was the decision by the corporation behind the work, Mars, Inc., to not seek patents based on the work but rather to publish their discovery so that everyone, even competitors, might benefit from the work. Of course, they hope to benefit by having more abundant and higher quality cocoa as a raw material, but I'm still delighted with the decision. Genome patents are tempting and have a role (with over 3 million genome-related patents having been filed in the US, it must be a pretty big role), but are highly controversial and sometimes rather questionable. It's a complex issue to be debated another time. For now, let's just savor the decision by Mars and look forward to major advances in cocoa agriculture.

Here's an excerpt from The Independent:

Scientists have sequenced the genetic code of the cocoa tree, which they say could triple the yield of the disease-prone crop and transform the lives of millions of poor farmers in Africa and around the developing world who rely on it for their livelihood.

The US chocolate firm Mars, working with the computer firm IBM and the US Department of Agriculture, took two years and two months to unlock the genetic code of the tree, Theobroma cacao ("food of the gods").

Instead of patenting the genome, they have placed it online for anyone to use for free. They say that its discovery will allow breeders who use traditional methods to grow hardier, more productive and disease-resistant trees

See also The Cacao Genome Database where Mars and others have published the results of their sequencing of the cacao genome. Best enjoyed while sipping hot chocolate. You'll need a big cup.

Other reading on related topics:

• "Tycoon [Craig Venter] seeks patent for 'minimal genome' " - New Scientist
• "Gene Patents" - Wikipedia
• "Here Comes SuperCacao: Mars, Inc. Sequences the Cacao Genome" - FastCompany

Should Patents Have Background and Summary Sections?

Greg Aharonian's recent PATNEWS newsletter mentions that he is reviewing the book Drafting Patents for Litigation and Licensing, edited by Bradley Wright of Banner & Witcoff. A chapter in that book led Greg to raise the question about whether inventors and patent owners are helped in any way by including background and summary sections in patents. Greg mentions that numerous risks that can arise when prior art is improperly discussed or when statements in the background or summary sections are imported by judges as unwanted limitations in claims. With all the risks, and with no legal requirement to include such sections, why do it?

It's a fair question and perhaps patents will be more successful if unnecessary sections are left out, but there's another perspective to consider.

Greg is not alone, and in fact is thinking along lines of Irving Kayton et al. at PRG who have been advocating barebones approaches to skirt the numerous pitfalls from judges and courts. (I really enjoyed the "Drafting and Crafting Winning Patents" course I took from them several years ago where they introduced their minimalist concepts.) Skipping the background and summary makes a lot of sense with those concerns in mind. However, the chance of a judge abusing your issued patent is minuscule, and in fact is ZERO if it doesn't get past the Examiner. In light of KSR, I would argue (and do so argue in the book Conquering Innovation Fatigue from John Wiley & Sons, 2009) that it is valuable to build some storytelling into the patent to help the examiner avoid the temptation of applying hindsight to the invention and, when possible, to help the Examiner see that the invention involved more than just conventional problem solving to deal with known problems in standard ways.

Sometimes the key to a brilliant invention is discovering what the real problem was. Once understood, the solution may seem "obvious" and straightforward, and if the patent just presents the solution, the nonobvious nature of it may be lost upon the examiner. Examiners are people who will be most helpful in advancing patents when they get the story and have their imagination captured, and that is what can be done in the background and summary. Tell a story to advance your nonobviousness position, but do be cautious about discussing prior art and avoid listing benefits or "objects" of the invention which can certainly haunt you in future litigation. But when there isn't much of a story that needs to be told, skipping the background altogether might be wise.

Another consideration is the benefits of helping others besides judges appreciate and understand the invention. This might include members of a jury as well as potential licensees or business partners. Again, the storytelling role of the background can add value to the patent.

Storytelling: it's what marketing is, and patents need to be drafted with marketing insights and plans in mind for both long-term and immediate success.

The Miazaki Case: Raising the Bar for Definiteness in Patent Claims

A senior patent examiner at the USPTO in a phone interview recently stressed the precedential BPAI case, Ex parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008). In this interesting case, the Board had trouble with the language in this claim:

1. A large printer comprising:
a paper feeding unit operable to feed at least one roll of paper, at least one substantially flat sheet of paper and at least one stiff carton, the paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process including replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton;

a printing unit located below the paper feeding unit;

a discharged paper stacking unit located below the printing unit; and

a paper feeding path extending in a substantially straight line from the paper feeding unit to the discharged paper stacking unit via the printing unit.

The claim tried to describe a relationship between a person of average height and elements of the printer, but the Board found that there were infinite possibilities in the actual structures described. Where was the person standing - on a platform, for example? And where was the printer - on the floor, or on a table, or what? Given the uncertainty, there is certainly an argument that the claim is indefinite and thus invalid.

However, the Board did more than simply identify the indefinite nature of the claim. They went much further in giving a new standard for finding a claim indefinite under Section 112, paragraph 2. Woodcock Washburn LLP notes the problem in their client alert, "BPAI Expands Definiteness Requirement During Patent Prosecution in Ex parte Miyazaki":

On November 19, 2008 the Board of Patent Appeals and Interferences (Board) announced in the above captioned case that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, slip op. at 11-12....

The mischief created by the Board in this case is not whether the claim is or is not indefinite under the statute but, rather, it is found in the Board’s broad holding regarding the application of 35 U.S.C. § 112, second paragraph. Many claim limitations are amenable to two or more reasonable constructions as that is what gives a patent claim breadth. If the Board’s holding is taken at face value, we can expect a flood of rejections of claim terms as being indefinite under the statute.

It may be increasingly important to review claim language carefully and make sure that at least some claims avoid multiple interpretations in ways that could fall under Ex parte Miyazaki. Naturally, almost every limitation of every claim has gray areas that could be interpreted in multiple ways. I hope reason will prevail in the quest for definiteness in claim language.