Raising Healthy Patents

• Publication year: 2014
• Author: Joshua C. Harrison

Raising Healthy Patents

Joshua C. Harrison

Barcelo, Harrison & Walker LLP

We patent attorneys speak of patent "families," with "parent" cases and "child" cases.¹ Taking the analogy further might be instructive, and even somewhat motivating. As an experienced patent attorney with kids in college, I volunteer.

CONCEPTION & VIABILITY

A healthy child and a healthy patent both begin with a complete conception.² Neither can be exactly like any that came before,³ and neither can survive prolonged neglect.⁴ Just as the egg denies thousands of suitors, the best patent investments follow a rigorous pre-approval screening. Viability depends upon more than differentiation from all available prior art, but also upon other factors such as economic value, discoverability, rate of obsolescence, enforceability in the jurisdiction of most likely infringement, etc.

Abstinence might be safer for new patent attorneys who consider a pre-filing prior art search to be optional; such attorneys are every bit as practically mistaken as they are legally correct.⁵ Thorough learning of both the invention and the prior art, indeed careful comparison of the two, is an indispensible first step to practically evaluating the true patentable scope of the invention—which may be quite a bit narrower and less valuable than the patentable scope initially assumed by the client or inventors. It is also through this evaluation process that the practitioner may discover, like the discovery of twins via ultrasound, that what the client had considered to be a single invention should actually be the subject of two or more patent applications.⁶ For example, the broader linking concept may already be in the prior art.

GESTATION

Before birth, a baby develops in the womb according to a genetic blueprint. Likewise, before filing, a patent application must be developed—but according to what blueprint? I suggest drafting the claims first. The best patent attorneys carefully draft the claims to capture as much of the invention as possible, while avoiding the prior art identified in a pre-filing search.

What does "avoiding" the prior art mean? The law answers that question. For example, in the United States, your claims avoid the prior art only if they do so under 35 U.S.C. § 102 and 35 U.S.C. § 103. Too many new attorneys focus, when drafting claims, only on the boundaries of what the inventor considers to be the invention. However, quality claims of appropriate scope cannot be drafted unless the patent attorney is also focused on the prior art, the statutory provisions of 35 U.S.C. § 102 and 35 U.S.C. § 103, and the various rules, judicial precedent and USPTO interpretations that apply and inform those statutory provisions. The resulting claims therefore typically should deviate somewhat in scope from the boundaries of the inventor's original description.⁷

The human gestation analogy can only be taken so far. Whereas pregnancy is often trumpeted as good news and is best not accelerated, the opposite is true of the patent drafting process—now more than ever. The AIA⁸ has changed the United States from being the last "first-to-invent" jurisdiction to another "first-to-file" jurisdiction. Hence, reasonable steps should be taken to keep the invention secret at least until filing, and possibly until publication depending on business considerations. Delays in patent preparation not only subject the patent application to more recent prior art, but also to the risk of independent later conceptions being filed first. Hence, patent prosecution may be more analogous to a cat pregnancy⁹ that must be kept secret.

Many experienced practitioners consider a pre-filing prior art search to be practically indispensible, not only to the threshold question of viability, but also to the procedure of drafting claims of appropriate scope. If you claim too little, your client obtains narrower and weaker rights than otherwise obtainable.¹⁰ If you claim too much, you may find out about it from the examiner, after which narrowing claim amendments may reduce your client's enforceable scope by forfeiture of equivalents.¹¹ Or, worse, you may not find out about it from the examiner, in which case your client's claims may be ultimately vulnerable to an invalidity attack when asserted, by way of post-grant review,¹² inter-parte review,¹³ or reexamination.¹⁴ Disclosure to the USPTO of the relevant prior art identified in the search (via a timely filed information disclosure statement) not only satisfies an ethical duty,¹⁵ but ultimately leads to a patent that is less vulnerable to invalidity attack.

[Page 14]

Of course, the pre-filing prior art search referred to herein is a search for prior art that may affect patentability or validity. The claims being drafted should distinguish all of the disclosure of each prior art reference identified in such a pre-filing search, whether or not such disclosure is claimed by that prior art reference. Often the client cannot afford for a patent attorney to undertake a thoroughly exhaustive patentability prior art search and review, which may cost as much as the patent preparation itself. A more efficient option may be for the inventor (who is presumably skilled in the art) to wholly or partially perform the patentability prior art search herself, or to hire a searching service. Still, because there is no such thing as a perfectly inclusive prior art search, it is important for the patent practitioner's representation agreement to include appropriate disclaimers.¹⁶

By contrast, a search for issued and enforceable patent claims that might be asserted against your own client's products or services is a so-called "clearance" or "right-to-use" prior art search. Such a search should generally be conducted by the attorney rather than the client, and will generally have different search terms and not reach back temporally as far as a prior art search for patentability or validity¹⁷ Nevertheless, there is a chance that one or more patent claims discovered in patentability prior art search may be applicable to your client's own products or services. Although some attorneys consider that to be a risk or misfortune, often it is instead a beneficial opportunity for your client to formulate a strategy to enhance or ensure design freedom in advance of an actual infringement dispute.

Once all the independent and dependent claims are drafted, well considered, and revised as necessary, the claims can be used as a genetic blueprint to develop the rest of the patent application (i.e., the specification and the drawings). It's best to not stray far from that blueprint, because—as patent litigators know—a patent specification can say too little or too much. If too little description, a claim might be argued to lack written description or enablement support under 35 U.S.C. § 112(a). If too much description, extraneous admissions may be available to a future accused infringer to support a claim construction that is unfavorable to your client. So there is a right amount of description, and it generally does not include the kitchen sink (except in class 004, subclass 619).¹⁸

A non-arbitrary way to confidently select what description is necessary to support...