Patents: are they a blessing or a curse? (part 1)

The patent system is intended to encourage invention and innovation and should benefit the LED industry, provided that the need for litigation can be alleviated by licensing and avoiding infringement. Part 1 of 3.

In this first in a 3-part series of articles, Alice Martin and John Wappel of Barnes & Thornburg, LLP address some of the key issues that arise when companies become involved with the patent system.

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When patent disputes occur, such as in the LED industry recently, questions arise whether patenting helps or hurts individual businesses and the industry as a whole. In order to form educated answers on issues involving patents and patent litigation, an understanding of the mechanics of obtaining and enforcing patents is helpful.

What is a patent?

Patents are one form of protection for intellectual property that includes compositions of matter (e.g. products such as chemicals), methods (e.g. how to produce a lighting effect, business methods), apparatus (e.g. lights, winches), and computer software.

United States patents are documents issued by the U.S. government granting exclusive rights to inventors in their inventions. Patents have three basic parts:
(1) the specification, which describes what the invention is, and how to make and use it;
(2) the drawings, if required, which depict one or more embodiments, or variations, of the invention; and
(3) the claims, which set the boundaries of what is protected, i.e. define the “claimed invention.”

This latter distinction is important because some undue concern is generated surrounding the misconception that the items described in the specification are "covered" by the patent. However, it is the claims that determine what subject matter is protected. Unless subject matter is covered in the claims of an issued patent, it is not protected by the patent. While the specification is there to support and explain the claims, the exclusive rights in the invention are defined by the claims. Parts of the specification not appearing as claimed elements cannot be enforced.

Claims are generally written in two ways: independent form and dependent form. An independent claim is just that, it stands on its own and defines a complete invention having a discrete set of elements.

Dependent claims refer to a previous claim, either an independent claim or another dependent claim, and are a short-hand way of adding additional elements. The elements covered in a dependent claim include the elements listed in that claim plus the elements in the claim from which the dependent claim refers.

What is a patentable invention?

Claims are patentable if they delineate an invention that is novel, useful and non-obvious based on the claim elements considered as a whole. To satisfy the novelty criterion, there must be no public disclosure, publication, presentation, use, sale or offer to sell, by the inventor or others, of the invention as delineated in the elements of the claims. (There are some exceptions and grace periods).

A claim is novel if there is no “prior art” that discloses the invention. (“Prior art” includes publications, patents and so forth that precede an invention.) Even one novel element in a claim should satisfy the novelty requirement. Most inventions are combinations of existing elements (bolts, screws, gears, etc.) arranged in a novel way.

Improvements to an existing product, method or apparatus may be patentable even over existing patents. A simple example is a patented pencil having the elements of (a) a graphite core and (b) a protective sheath positioned about the graphite core. A patentable improvement could be adding element (c) an eraser, to one end of the pencil assuming that no one had done that before. Although the new pencil/eraser combination is patentable, it would still infringe the first patent that required only a graphite core and a protective sheath, because the new pencil/eraser combination has each of the claimed elements of the first patent.

In such cases, there is incentive to cross-license. For instance, using the pencil example, the inventor of the improved pencil having an eraser, would have an incentive to seek a license from the owner of the prior art patent so the inventor could market his new pencil. The owner of the prior art patent, seeing the improvement and the likelihood that his customers will want the improved pencil, would have an incentive to seek a license from the inventor on the patented improvement so he can continue in the pencil market.

Some other patentability requirements include “enablement” -- the specification must teach how to practice the invention “without undue experimentation” -- and “written description” proving the inventor “possessed” the invention.

To satisfy the enablement and written description requirements, a patent must contain a complete description of the invention and how to make and use it. When writing a patent application one should include ways to make and use the invention in every conceivable variation in the elements of the invention, including the way the inventor believes is best.

In Part 2, next week:

- Can a combination of well-known technologies be patented?
- How can there be a series of patents going back in time to a small number of parent (original) patents?

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