Implementing Patent Strategies and the Application Process through Patent Engineering

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 59-79

59

In the previous chapter we discussed the elements that go into formulat-

ing a patent strategy and the consequences of not doing so. In this chapter

we will describe in more detail how to execute that strategy and how to

determine which inventions are worth patenting and which ones are not.

We will also discuss alternative avenues that can be pursued if material

does not warrant the expense of obtaining patent coverage , but for which it

is still important to keep competitors from obtaining patents that prevent

your company from commercializing your technology or undermine the

value of your patent portfolio .

Patent Application Process

In order to receive a patent , the inventors —assisted by legal counsel — le

a patent application in a patent o ce . U.S . inventors generally  le in the

4

Implementing Patent Strategies

and the Application Process

through Patent Engineering

60 Patent Engineering

U.S . Patent and Trademark O ce (USPTO ). As discussed in Chapters 2

and 3, the application describes the problem solved by the invention and

how the invention solves the problem , and it must clearly describe those

aspects of the invention for which the inventor is seeking exclusive rights .

 ese descriptions, known as “claims ”, de ne the exact property the patent

holder will own. While the application contents are vitally important—

what you can claim is limited to what you have described or shown in the

application —the title, the abstract, the background and the descriptions

and everything else other than the claims exist solely to give the claims

needed context and support, either by de ning the problem solved or by

specifying how the problem has been solved.  e speci cation may set the

stage, but it is the claims that describe the invention that determine the

patent’s value.

Claims

Each claim consists of a sentence that de nes the technical speci cs of the

new technical solution . Claims are broken up into one of two categories:

independent , which stand on their own, and dependent , which contain

speci cs that relate back to a previous claim. Claims are numbered start-

ing from one. Independent claims set forth the minimal core of the inven-

tion . For example, the  rst claim of antilock brake patent U.S. 3,930,688*

describes the invention as:

1. A digital machine method for augmenting braking control of

a braked wheeled vehicle employing  uid pressure operated

wheel brakes, comprising the step of selectively modulating the

 uid pressure applied to the valve of at least one braked wheel

so as to cause the braking control to track the knee of the road

torque and wheel velocity versus time envelope.

 is claim is an independent claim because it totally describes the essen-

tial parts of a particular invention . A person who produces a device that

“selectively modulat[es] the  uid pressure ” in the way listed in the claim

without the patent owner ’s express permission “infringes ” (is an “infringer ”

of) that claim, and the patent containing that claim.  e patent owner can

sue an infringer to stop them from using the technology or to recover money

the patent owner might have made in the absence of the infringement .

* issued in 1976 to Rockwell International Corporation.