WEB PATENT NEWS – July, 2002 by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and
innovating organizations.

CONTENTS

I. READ MY LIPS: BUSH ADMINISTRATION INCREASES TAX ON INVENTING – The
cost of patenting your invention in the U.S. is about to increase
dramatically, unless you become involved.

II. U.S. SUPREME COURT OVERTURNS FEDERAL CIRCUIT FESTO DECISION –
Patentees are now wise to have described and claimed equivalent
structures and steps that are "foreseeable" in their patent
applications.

III. SAY WHAT? TEACHING YOUR INVENTION TO OTHERS – Guidance on how to
prepare an invention disclosure.

IV. LINKS – View this newsletter in HTML at the following link:
http://www.webpatent.com/news/news07_02.htm

I. READ MY LIPS: BUSH ADMINISTRATION INCREASES TAX ON INVENTING

In an attempt to balance the Federal budget in part on the backs of
inventors, the Bush Administration is proposing to significantly
increase fees charged by the U.S. Patent and Trademark Office (USPTO) to
allow it to increase the diversion of USPTO fees to the General Fund to
$162 million annually. The American Intellectual Property Law
Association (AIPLA), a national intellectual property bar association of
more than 14,000 members, calls the move "a stealth tax increase only on
America’s inventive community." http://www.aipla.org/

The fee increase is expected to significantly reduce patenting activity
by small entities (independent inventors, small businesses and
universities) because they will no longer be able to afford to use the
system. This change and others will allow the USPTO to hire 2,500 fewer
new Examiners (Federal employees who examine patent applications and
decide patentability) over the next five years.

The proposal calls for more than tripling the fees charged to small
entities for basic patent applications. Currently, small entities pay
the USPTO $370 to file a non-provisional utility patent application, and
that includes the cost of examining the application. Under the new fee
schedule, a small entity would pay a $150 filing fee and a $1,250
examination fee – a $970 jump over the current filing and examination
cost for a basic patent application. In addition to the basic fees, the
USPTO is proposing to establish a schedule of rapidly escalating fees
for including additional claims in an application (either when it is
filed or later) and to levy significantly increased patent maintenance
fees.

Research has shown that the number of independent claims in an issued
patent is strongly predictive of the value of the patent. It is not
unusual for the total number of claims needed to adequately protect a
complex and potentially valuable invention (e.g., a chemical,
biotechnology or software invention) to reach or exceed 50 and for the
number of independent claims to reach or exceed 20. Currently, 30
additional total claims and 17 total independent claims would add $884
to the filing fee for a small entity. Under the Bush Administration
proposal, this number of additional claims would increase the filing fee
by an incredible $85,680. Huge fees will be imposed on inventors who
attempt to "game the system" by filing continuing applications that
claim the same invention in a different way than it was claimed in an
earlier-filed application. The cost to a small entity for maintaining a
patent over its 20-year term would increase from $3,000 to $4,450. It
is clear that adoption of the Bush proposal will essentially deny access
to the U.S. patent system by small entities with potentially valuable
inventions and destroy the small businesses of the practitioners who
serve them (like me).

The proposed fee increase, which is scheduled to become effective on
October 1, 2002 (just two months from now), must be approved by
Congress. If you do not believe that the U.S. patent system should be
available only to wealthy individuals and large corporations, I urge you
to express your opinion to your Senators and Congressman. You can
obtain their e-mail addresses at:
http://www.senate.gov/contacting/index.cfm and
http://www.house.gov/writerep/

II. U.S. SUPREME COURT OVERTURNS FEDERAL CIRCUIT FESTO DECISION

In what has been described as one of the most important patent law
decisions in decades, the U.S. Supreme Court in May, 2002, threw out the
ruling of the U.S. Court of Appeals for the Federal Circuit in the Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case. The Federal Circuit
ruling had denied application of the "doctrine of equivalents" in patent
infringement suits seeking to enforce patent claims that had been
amended for a reason related to patentability during the patent
prosecution process. Under this ruling, the scope of amended patent
claims was to be limited to the structure or steps literally described
in the claim, thus significantly reducing the scope of the claims and
the economic value of over a million issued U.S. patents.

In its Festo decision, the Supreme Court decided that the presumption
that a patent holder has given up the right to prevent copyists from
making insubstantial changes to their products as a way to avoid patent
infringement can be overcome under certain situations. From now on, the
doctrine of equivalents can relied upon if the patent holder can show
that (1) the equivalent was unforeseeable at the time of the
application, (2) the rationale underlying the amendment bears no more
than a tangential relation to the equivalent in question, or (3) there
is some other reason why the patentee could not reasonably have been
expected to have described the equivalent in his/her patent application.

While all the implications of the decision are unclear at this point, it
does provide some guidance in the preparation of future patent
applications. Importantly, the Festo decision encourages inventors to
include a larger number of claims in their applications with the goal of
having at least some claims survive the prosecution process in an
unamended state. Another thing that is clear is that inventors should
describe in their patent applications alternative ways to make their
inventions that are "foreseeable" (to a person having ordinary skill in
the art) at the time the application is filed. It is also clear that
any variation of the invention described in the application that the
inventor wants to protect must be claimed. So, it is now more important
that ever that the inventor teach not only the best structures or steps
but also their equivalents to his or her patent practitioner. The
patent practitioner, in turn, must take care to draft claims covering
all the embodiments the inventor wants to protect. Ironically, it
appears that just when it is becoming prudent for patent applications to
contain more claims, the USPTO wants to make that approach too expensive
for most inventors to adopt.

III. SAY WHAT? TEACHING YOUR INVENTION TO OTHERS

The greatest technical challenge, bar none, that inventors face is
teaching their inventions to others. Disclosing an invention, getting
it down on paper, is a vitally important step in the patenting process,
but it is one that eludes many very bright inventors. Inventors see
relationships in our world that others do not, but sometimes they have
difficulty in explaining how those relationships exist. They are
intuitive souls who often "are sure" that their inventions will solve
the technical problems they address before they have thought through
exactly how to make their inventions.

Often, with complex inventions, it is not practical or economically
feasible to "just build one," that is, to construct and test a working
model or prototype. These inventions must be built "on paper" before
they can be patented. In a patent application, an invention must be
described in sufficient detail and with sufficient specificity that a
person having "ordinary skill in the art of the invention" (an ordinary
practitioner of the art, not a novice or an expert) is able (enabled)
"to make" and "to use" the invention based solely on the teachings of
the invention disclosure and his (assumed exhaustive) knowledge of the
field. Developing such a description can also render a novelty search
much more valuable than a search of a vague, general concept of an
invention. This article suggests some approaches to meeting this
challenge.

One valuable technique is to "divide and conquer." With this approach,
the formidable problem of disclosing an invention is divided into
smaller, more manageable tasks. In the Inventor’s Guide portion of my
website, I provide a listing of the elements of an invention disclosure
and teach the inventor how to prepare each element, with explanations
and examples.

Another technique is to diagram the invention. For example, hardware
inventions are often a novel combination of conventional elements.
Block diagrams can be used by inventors to crystallize the concept of an
invention and to work out the details of how to make one. With a block
diagram, blocks that represent the conventional structural elements of a
device or system are connected by lines that illustrate the
relationships among the blocks. All inventions are made of "earth, fire
and water" or some other existing elements and showing how the elements
are related can enable an ordinary practitioner of the art to make and
use the invention.

Inventions can almost always be thought of as processes, as sequences of
steps that accomplish some useful result. Moreover, processes are
sometimes easier to explain than static physical structures. Process
inventions include "process of making" and "process of using"
inventions. Sometimes, it is helpful to conceptualize "how to make" an
invention as the process by which it is made or assembled. A useful
technique is to pick a place to start (an initial element, maybe at the
bottom or base of the invention or something the entire invention is
attached to) and then to explain the process by which the invention is
assembled from constitutive parts, its elements — "the knee bone is
attached to the thigh bone, the thigh bone is attached the hip bone."

A typical "process of using" invention is made up of the individual
steps that, together, describe how the function of the invention is
accomplished. With software inventions, it is often helpful to envision
the different ways a user can interact with the software. For each "use
scenario," one can conceptualize the "flow" of discrete instructions
that the software would give to the computer, typically after a user
initiates the execution of a part of the program. This "flow" is
documented in one or a series of flowcharts in which each
interim-result-producing instruction or set of instructions is a
numbered step in the process. The numbers (called "reference numerals")
are used in the accompanying description to identify each step. Using a
gerund (a verb form ending in "ing") to name each step (e.g., "sorting
step 114") can clarify the primary function of each step. Software
programs like Visio are helpful in preparing both block diagrams and
flow charts. Performing a key word search for patents containing the
terms "block diagram" and "flow chart" at the USPTO website
(http://patft.uspto.gov/netahtml/search-bool.html) will produce many
examples of the use of these techniques and illustrate the level of
detail required (essentially a schematic design) in an invention
disclosure.

A trap that it is easy for inventors to fall into is to want to conceal
some aspect of their invention. Whether the concealment is the result
of an unconscious urge not to "let go of my baby" or a conscious
decision to deny knowledge to competitors, it can still hamper effective
invention disclosure. An inventor must accept the fact that he must
"make a pact with the Devil" to obtain a U.S. patent. He must describe
"how to make" and "how to use" at least the "best mode" of this
invention (the best way to practice his invention) in order to obtain a
valid patent. Anything less than the best mode of an invention can be
concealed, but at the risk that someone else will independently invent
it and earn the right to patent it (i.e., earn inventorship) over the
true first inventor. Of course, if an inventor really does not know
"how to make" and "how to use" an aspect of his invention, that aspect
of his invention is not completed and he has not really "invented" it —
he just wishes it were possible.

If disclosing the best mode is not difficult enough, it is also the case
that less advantageous embodiments should be disclosed. I advise my
clients that (especially in the light of the Festo decision) it is
prudent to disclose and claim any embodiment that they would be angry to
see on sale at http://www.amazon.com or their local Wal-Mart and not be able to
allege infringed their patents. Only if a variation of the invention is
so impractical as to not pose a credible competitive threat should it be
left out of the disclosure. If some of the claims in your application
are written using "means-plus-function" language (e.g., "means for
performing a function X" as allowed by Sect. 112, par. 6), then the
specification must disclose all the alternative structures you want the
court to use in the application of the "insubstantial differences" test
when you sue an alleged infringer. This is the case because the Court
of Appeals for the Federal Circuit has stated "the test for determining
equivalency under Sect. 112, par. 6 is whether the differences between
the structure in the accused device and any disclosed in the
specification are insubstantial" and "an accused device satisfies a
means-plus-function element literally if it performs the identical
function recited in the claim, and incorporates the structure disclosed
in the specification or an equivalent thereof." Actually including
claims that read on the alternative embodiments is important because
another recent Federal Circuit decision has made it clear that
"disclosed but unclaimed subject matter is dedicated to the public."

I hope that practicing the above techniques will make it a little easier
for you prepare your invention disclosure. Because of the challenge
imposed by invention disclosure rules, I advise my clients that
patenting an invention always takes much more of their time than mine.
Taking on the challenge step by step is the way to beat it.

IV. LINKS

An HTML version of this newsletter containing links to reference
documents is accessible via the "Newsletters" link on the WebPatent.com
website. If you have any questions about patents or U.S. Government
funding for technology research and development, please contact us. If
you wish to be removed from this mailing list, please Reply to this
message with "remove" in the subject line.

Aloha,

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku’ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
[email protected]
http://www.webpatent.com