Expert Commentary

Everything You

In this article, Sanford Warren looks at the front end of the process of applying for and acquiring an issued U.S. patent.


Intellectual Property
June 2002

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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