Patents: are they a blessing or a curse? (part 2)

Part 2 of 3. Can a combination of well-known technologies be patented, and how can there be a series of patents going back in time to a small number of parent (original) patents?

In this second 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. View Part 1 of this article.

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Can a combination of well-known technologies be patented?

Yes, if the patent office does not decide that the combination is “obvious” (U.S.) or “lacks an inventive step” (non-U.S.) and rejects claims to the combination. This hurdle is almost always raised against patent applications, but can be overcome in debates with the examiner during prosecution of the patent application (“patent prosecution” refers to dialogues with the examiner to get a patent issued).

Before concluding that something obvious has been patented, examine the claims allowed to issue as a patent. The title, abstract and description in the specification may convey the impression of an unreasonably broad, obvious patent, but the actual claims, which define the boundaries of the patent protection, may be very limited, that is, very “narrow,” and include a non-obvious element or combination.

To overcome an obviousness rejection, an applicant for a patent must show that there was no teaching, motivation or suggestion known to those in the technical field (“those of skill in the art”) to combine the technologies, and/or that even if there was such teaching, motivation or suggestion to combine the technologies, the combination would not equal all the elements in the claims of the patent application. For example, just because paints, canvas and brushes were known, the Mona Lisa was not obvious.

Another way to overcome an obviousness rejection is to show the combination constituting the invention yields “surprising and unexpected results.” If putting a device A that creates a fog together with device B that produces a pink light results in a blue beam - this is an unexpected result. Paper and adhesives may each be known, but a combination of paper with an adhesive border on one side that sticks to, but readily peels off, to what the paper is affixed, may not be obvious because an adhesive with such a function was not known in the art.

In hindsight, many inventions may seem “obvious,” but the courts have rejected “impermissible hindsight,” developed by knowledge of the patent application, as support for patent claim rejections. It is easy to think -- oh anyone could have made that combination. However, the examiner must use legal criteria to make that call. To find out how a patent escaped or overcame obvious rejections, it is necessary to examine the “prosecution history” (“file history”) which relates the debate between the examiner and the applicant to obtain a patent, from the filing of the patent application in a patent office, to the patent issuing.

Reviewing the prosecution history may shed light on how an obviousness rejection (which is almost always made during patent prosecution) was overcome by applicant’s arguments. Other important information obtained from the prosecution history includes: (a) the meaning of claim terms (claim interpretation and limitations) which is based on literal meaning in view of explanations in the specification and comments in the prosecution history; and (b) what “prior art” was considered before the patent issued, that was not found by the examiner to destroy novelty or make the invention obvious. There are procedures (re-examination”) for the public to bring “prior art” to the examiner’s attention. Prosecution histories are always reviewed if there is litigation. Also, the public has access to the U.S. Patent Office records at http://portal.uspto.gov/external/portal/pair after a patent application is published (18 months after its priority date) or issues as a patent.

For foreign (PCT) patent applications the International Search Report listing prior art, and the International Patentability Report, are published and available to the public about 18 months after the PCT application is filed. Sometimes the U.S. or PCT publications are mistaken for actual patents. The publications provide notice to the public and may be used as prior art against future applications, but these publications do not confer any rights to exclude others from practicing the invention. Although patents and patent application publications have a similar appearance, one must look on the first page to determine if the document is a patent or merely a published application.

How can there be a series of patents going back in time to a small number of parent (original) patents?

The first application(s) filed on an invention establish a “priority date” for what is disclosed in the application. In the U.S., a priority date may be established from a provisional application (which is not examined but holds that date for 1 year), a utility application, or a design application.

Routinely the examiner might decide there is more than one invention and divide claims into “restriction groups.” This forces applicants to elect one group and file “divisional” applications if they want to obtain patents on the other groups of claims.

Applicants may also file continuations of the parent (original) or other co-pending application to prosecute claims not originally filed. To do this, there must be support for the claim elements in the specification of the previous patent application. For example, if the patent examiner has issued a final rejection of the claims in an application, the inventor may want to file a continuation application narrowing the claims by adding additional disclosed elements in combination.

Another way to extend a chain (or “tree”) of patents is to file a “continuation-in-part” (CIP) application. This application adds new material to the original specification, and usually incorporates the new material into claims. Going back to our pencil example, assume the same person invented the pencil and the pencil/eraser combination discussed above. While the first application for the pencil was pending, the inventor thought of adding an eraser to one end of the pencil. Because the inventor did not include an eraser in his original patent application, he cannot claim an eraser. Therefore, the inventor would file a CIP application with the new disclosure of the eraser, and draft claims covering the pencil/eraser combination.

In a CIP, the old material should get the priority date of the originally filed case, and the new material should get as priority the date the CIP was filed. In practice, priority issues are more complex. Also, where in the past, priorities usually became an issue only at litigation, recently examiners have been aggressive in challenging priority dates based on alleged lack of support.

In order to avoid issuing multiple patents on the same invention by different inventors, the patent office initiates a procedure called an “interference (US)” or “opposition (foreign countries)” which is a form of litigation. Priority dates and proof of dates of invention are very important in this outcome. Only one patent for one claimed invention will survive this procedure.

The further back in time a priority date extends, the more “prior art” can be cut off (excluded), because it is not “prior,” and the more likely a patentee or applicant is to prevail in a contest where others claim the same invention. However, a big disadvantage of creating a patent tree is that patent terms are 20 years from the priority date. Therefore, the further back in time the priority date, the shorter the patent term i.e. the period during which others may be excluded from making, using or selling the patented product or method.

In Part 3, next week:

- What does a patent do for the patentee?
- How to tell what a patent excludes others from doing
- Litigation - offensive and defensive
- Are patents a blessing or a curse?

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