Everything You Don't Know Can and Will
Be Held Against You
June 2002
In this article, Sanford Warren looks at the
front end of the process of applying for and acquiring an issued U.S. patent.
by Sanford
E. Warren Jr. and Kenneth T. Emanuelson
Winstead Sechrest
& Minick
In the prior article, we looked at a few types
of potential obstacles that may stand between you and an issued U.S. patent.
In general, you can't patent ideas that were already known before your invention,
and you can't patent ideas that have been in the public knowledge for more than
a year, even if you were the first to come up with them. In this article, we're
going to look at the front end of the process of applying for and acquiring
an issued U. S. patent.
To File or Not To File
So, you've developed the world's first superconducting widget-as far as you
know. In your working knowledge of the state of the art in superconductology
and in widgetivity, you are not aware of anyone who has successfully combined
the two. Should you file a patent on it? Anyone who's consulted an attorney
already knows the answer you'll get from me, "It depends."
The decision as to whether or not to file a patent involves two separate
inquiries. The first inquiry relates to whether or not you are likely to ultimately
acquire a patent. The second inquiry relates to whether or not such a patent,
if acquired, would be a valuable asset to you. The first inquiry requires a
primarily legal analysis, while the second is generally a business decision-or
perhaps a personal one. As far as I know, a large number of patents in your
personal portfolio will not, by itself, make you wittier, smarter, or better
looking. Then again, ownership of even one highly valued patent might cause
people to treat you like you are.
Is Your Invention Truly Unique?
The legal portion of the analysis requires a detailed look at the state of
the art as it existed at the time of your invention. In reality, of course,
it's impossible for any one person to have possession of all the knowledge in
the world in one technology. There's always the potential that your invention
is already out there somewhere. Unfortunately, there's no way to completely
eliminate this risk. There are, however, a few approaches to minimizing it.
The risk that your invention is already out there can certainly be minimized
by a search of the known sources of published knowledge. The more searching
you do, the lower the risk that you will later find out that someone else has
already done it. Given infinite resources and infinite time, thousands of patent
attorneys billing hundreds of thousands of hours could probably reduce the risk
to a level well nigh to zero. Then again, no person I've ever known has confessed
to having either infinite resources or infinite time. Accordingly, something
less than the "infinite search" is generally in order.
The closest thing to the "infinite search" might arise in the theoretical
circumstance where a highly educated, multilingual, independently wealthy inventor
has kept his invention under the darkest veil of secrecy and is confident that
no one else is working anywhere close to his field. In this circumstance, the
inventor would have the luxury of taking his time, painstakingly digesting every
related reference, traveling the world, even translating references from the
original Sanskrit and Aramaic where necessary, until he is thoroughly satisfied
that his invention is new.
Like the Easter Bunny and the guy who woke up in the Vegas hotel room missing
two kidneys, this inventor probably doesn't exist. In the real world, most of
us have bills to pay, and jobs to work. Given all the time and money in the
world, very few of us would spend it traveling to Siberia to translate doctoral
theses on superconductivity. Further, there's absolutely no way to be certain
that none of the 6 billion people in the world is working in your same field,
no matter how obscure your field may be. Accordingly, you could never have all
the time in the world to complete your search.
In the real world, there is no Easter Bunny (sorry), that guy probably still
has his kidneys, and there are only limited resources and time to search the
world for prior references. Therefore, it makes a lot more sense to conduct
a limited search focused on likely sources of anticipating references and accept
the risk that someone, somewhere, has done it before.
Actually, there are different risk levels. The highest risk level is the
risk that someone has done it before somewhere. You figured it out, so it's
possible that you weren't the first. But the fact that someone did it somewhere
is only a concern if there is some evidence that it was done. A patent examiner
may find such evidence during the course of a patent search on your invention,
but issued patents contain only a portion of the documents published in a given
area of technology, so it's possible that even a thorough patent examiner may
not become aware of such prior activity during prosecution.
Should your patent ever end up in a lawsuit, a team of attorneys and technical
experts will take up wherever the patent examiner left off, spending weeks searching
patents and technical databases for additional references in the hopes of showing
your invention wasn't new and that your patent was invalid. Given the additional
level of effort and the benefit of the patent examiner's work, it's not inconceivable
that the attorneys will find additional references. Short of hiring your own
army of attorneys prior to drafting your patent, there is no way to eliminate
the risk that they will.
Determining the Nature of the Search
Given the limited-by-necessity nature of a patent search, many clients will
request a cursory search, or will forego a search entirely, relying on the expertise
of their own technical experts. For clients with relatively experienced internal
technical staff, this approach makes sense. Invention disclosures are reviewed
internally, and only those inventions thought to be patentable are passed on
to the attorneys.
For individual, as opposed to corporate, inventors, some form of reasonably
thorough patent search often makes sense. A patent application on even a very
simple invention can cost upward of $4,000 in attorney time to draft. A complex
invention will cost upward of $10,000. This doesn't even take into account the
inventor's time pulling together drawings and technical details, answering an
attorney's questions and reviewing the application for accuracy.
Given the level of time and expense, it's perfectly reasonable to spend a
few hundred dollars at the outset performing a search. For more complex inventions,
the likelihood of finding the exact same device is generally lower, but a patent
search is often performed to ascertain the scope of the claims available. In
general, a patent search will range in expense between $200 and $1,000, depending
on the thoroughness of the search required.
Don't Judge a Patent by Its Title
So, you read the above and you decided to go forward with a search. Now you
have a stack of patents on three superconducting devices: a superconducting
thingamajig, a superconducting whatsit, a superconducting gadget. You also have
a stack of patents on two widgets: a semiconductive widget and a pseudoconductive
widget. Your heart skips a beat as you reach the last patent in the stack and
realize there's not a single patent titled "superconductive widget"! You're
gonna make millions! You're gonna date supermodels! You'll be on the cover of Time, Newsweek, and Rolling Stone! The world is yours, right?
Well, not so fast.
The fact is, although the titles of the patents are illustrative of the inventions
covered, the contents of the patents themselves determine what is and is not
covered by the patents. There is a rule in the patent business that the "inventor
can be his own lexicographer." In English, that means that, within reason, a
word in a patent can mean what the drafter of the patent defines it to mean.
In other words, although there may be no patent in your stack titled "superconducting
widget," that doesn't mean that your invention isn't in there somewhere. To
the inventor of the "superconducting whatsit," a "whatsit," and a "gadget" may
be the same thing. Similarly, to the inventor of the "pseudoconductive gadget,"
pseudoconductivity may encompass superconductivity, so that his patent may teach
the world how to make a superconductive widget regardless of its title.
The point here is that a thorough and meaningful search of the prior technology
requires that the references uncovered be reviewed in detail so that the contents
of the references are fully considered in the course of the search. There is
simply no substitute for a thorough review. Once the references have been reviewed
and the most relevant disclosures identified, they have to be compared to the
invention in question. For an invention to be "anticipated" by a prior reference,
every element of the invention must be shown in a single reference. If two or
more references are required to assemble all the elements of the invention,
it may be found "obvious," but it can't be found "anticipated."
Even where an invention, broadly understood, may at first glance appear anticipated,
or at least obvious, a second look will often identify distinctions that weren't
"obvious" at first. A process may be performed in a slightly different way,
or a machine built just a little differently, than the way it's shown in the
"killer reference." Sometimes these distinctions yield unexpected improvements.
Even where a broad concept has already been taken, patentability, like the devil,
is often in the details.
Conclusion
As always, this is a "back of the napkin" treatment of a treatise worth of
subject matter, but I have hopefully given you a bit of insight into the options
and trade-offs inherent in any investigation of patentability. While there's
always risk, the risk can be minimized through a properly planned and executed
search of the available art.
Ken Emanuelson is an associate with the intellectual property section of Gardere & Wynne, LLP.
His clients range in size from small startups to established Fortune 500 companies,
in various areas of technology, from online commerce to aerospace. His regular
practice includes client counseling in all areas of intellectual property law,
patent and trademark drafting and prosecution, litigation, licensing negotiation,
and infringement analysis. In his prior career as an engineer, Mr. Emanuelson
worked for Texas Instruments and Ford Motor Company. His engineering experience
included work in semiconductor processing, factory automation, microwave communications,
aerospace materials, automotive technology, and superconductive ceramics. Mr.
Emanuelson is a graduate of the University of Texas School of Law, where his
course of study focused primarily on patent, trademark, and copyright law. He
also holds a BS degree in mechanical engineering from the University of Arkansas.
He can be reached by email at .
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