Preserving Your Patent Rights
Below are several articles to familiarize MIT inventors with
and answer the most common questions about the patent process.
Protecting Your Ability to Get a
Patent: What Counts as a Bar to Patenting
The Patent Process: Claiming
your invention
Controlling Patent Costs
Patent Application Checklist
Protecting Your Ability to Get a Patent: What Counts as a
Bar to Patenting
1. What are the rules if I want only a U.S. patent?
The U.S. patent law system is among the most
lenient in the world with regards to prior disclosure of your
invention. It allows you to publish your invention or offer
it for sale prior to filing a patent application, provided that
you file your patent application within one year of the publication
or offer for sale. If you wait longer than one year, your patent
rights are forfeited. The one-year period is a "grace period."
2. What if I also want patent coverage in Europe and other
countries?
Most countries are stricter than the U.S.
They require that a "priority patent application"
be filed before the first public written or oral disclosure.
3. Do I have to file in all the countries before I disclose
the invention publicly?
No. You only have to file a patent application
in one country before you make the public disclosure. You then
have another 12 months after that "priority filing"
to file in all the other countries (or regional territories)
in which you want patent protection. (Usually, the first filing
for Americans is in the U.S., but any of about 130 other countries
could do.)
4. What type of medium counts as a public disclosure that
bars a patent?
"Public disclosure" is not confined
to publications in books and technical journals. Poster sessions,
slides, lectures, seminars which are open to the public, letters,
even conversations can count as a bar to patentability--depending
on the country.
In particular:
- Any written or oral disclosure, even to a single person,
counts as a "public disclosure" in most countries--unless
the recipient agrees that the information was conveyed in
confidence. Disclosures to employees are not considered to
be "public disclosures."
- In the U.S., the "public disclosure" must be
a "publication"--that is, in writing. However, do
note that slides at meetings and poster sessions are "publications"--as
is private correspondence, advertisements, etc.
- An "offer for sale" counts as a bar to patenting
(after the one year "grace period") in the U.S.
Showing your product at a trade show may very well count as
such.
5. What content counts as public disclosure?
Simply announcing that you have made an invention
is not a "public disclosure" of the invention. In
order to act as a patent bar, the disclosure must be "enabling"--that
is, it must teach someone "of ordinary skill in the art"
how to actually duplicate the invention.
An offer for sale, even if it does not teach someone how to
make the invention, is a bar to patentability (after the grace
period) in the U.S., but is not a bar in Europe if it does not
"enable".
6. What if I want to discuss my invention with others, outside
my institution, before I have filed a patent application?
You should have the person (or company) sign
a confidentiality agreement, agreeing to keep your invention
in confidence, before you have the discussion.
7. Is there any forgiveness if I accidentally make a public
disclosure?
In the U.S., as stated above, you have a one
year grace period after the publication in which to file the
patent.
In Europe, a public disclosure is an absolute bar to patentability.
Japan gives a six month grace period for filing a patent if
the public disclosure was a presentation at a scientific meeting.
Check with a patent attorney before despairing or deciding
not to try for a patent. Your "public disclosure"
may not have been enabling, or there may be some residual valuable,
patentable information that you did not disclose.
The Patent Process: Claiming your invention
Introduction
A patent application cannot, and should not, be written without
your contribution as the inventor. The patent attorney needs
your assistance in understanding the essence of your invention
and in finding the words to describe it. The perfect patent
claims the essence of your invention, no more, and no less.
The purpose of this memo is to suggest ways in which you,
the inventor, can help the patent attorney find the words to
describe this essential idea. Following are a number of examples,
some purely imaginary and others that have arisen over the years
at MIT, that illustrate various patenting situations.
What are claims?
Claims in a patent can be understood as a written boundary
describing exactly what part of the practical arts the holder
of the patent has the right to forbid others from practicing
(see previous memo on the definition of a patent). A helpful
analogy might be to imagine the claims as a real estate map,
delineating proprietary rights; or as verbal Venn Diagrams.
After completing your literature search, you should have a
good idea of what you can't claim, because it has already been
published by others. How do you figure out what you can claim?
Example A
If you have a patent on a three legged chair, you have the right
to forbid others from making, using or selling all such chairs,
whether they have improvements, such as backrests or coats of
paint, or not.
Example B
If you have a patent on all anti-fuse structures which consist
of a sandwich of layers of metal, insulator, and metal, such
that a voltage through the two metal layers will break down
the insulator and create a permanent current path, then you
have the right to forbid others from making any such device,
regardless of the specific types of metal, or insulator, of
the specific thicknesses of layers called out in subsequent
improvement patents.
These subsequent patents may have extremely important practical
innovations in them, and it might be necessary to practice the
particular "recipe" they describe in order to mass
produce practical and robust anti-fuses, but the first case
would dominate, and a person would require a license from the
"broad," or, in legal terms, "dominant,"
patent holder in order to practice the practical improvements.
Happily, though, it works both ways, and the holder of the dominant
patent also needs a license from the holder of the "improvement"
patents in order to practice those improvements.
What can't be claimed?
You can't claim what others have already published, either
in patent or scientific article form, or a design for an object
which has been available for sale (hence the importance of a
literature search). You also can't claim what you have absolutely
no idea how to make. You can't claim anti-gravity paint, or
perpetual motion machines for example.
Can I only patent something that I have actually built?
No, you don't have to have built it. The patent office says
that you have to do at least a "constructive reduction
to practice". A patent application constitutes a "constructive
reduction to practice" provided that, in the application,
you show that by the generally accepted laws of nature, your
invention should work in theory, even if you have not yet built
it. Incidentally, idea patents alone (no experimental reduction
to practice) tend not to be very commercially valuable, and
in general, our office discourages them. Preferably, you, the
inventor, have done an experiment to demonstrate feasibility.
Commercial Uses of Patents
First, recall that the right to forbid others from practicing
something can attract investment to forward-looking commercial
ideas (such as superconducting wire), which might not otherwise
have been attracted. This is so because investors are more willing
to put large sums of money into uncertain ventures if they know
that, should they in fact succeed in working out all the technical
bugs, they will have some period of time during which they will
have a monopoly, and can keep their competitors from copying
their design.
Therefore, sophisticated investors and potential licensees
will calibrate as accurately as they can the position of your
invention relative to the prior art. Does it dominate most of
the inventions in the field, or are there some basic patents
which dominate your invention?
Investors and licensees, like good engineers, also search
for alternate ways to accomplish what your invention accomplishes.
How is your invention better, not just different from the prior
art? Please contrast and compare your invention with the prior
art for your attorney, who will use this material for the section
of the patent entitled "background of the invention".
Finally, investors and potential licensees may try to imagine
methods for "engineering" around your invention. Can
they practice your invention without, technically, infringing
the claims of the patent?
Therefore, in order to increase the commercial value of their
patents, MIT inventors need to help us identify the prior art,
explain the relevance of this art to their patent attorneys,
and explain the essence of their invention to the attorneys
so that it is virtually impossible to engineer around their
invention without infringing the claims.
Specific Hints for Inventors on How to Broaden Claims
- Is anything in the patent unnecessarily specific?
Example A
A particular material (like GaAs) is called out, where such
a material is unnecessary. Could the invention be practiced
just as well with any III-V material, with any direct bandgap
semiconductor? Is it an electronic invention, where the
optoelectronic properties are irrelevant? Alternately, if
it is an invention that specifically requires the presence
of arsenic, then maybe it has to be written to any III-V
compound containing arsenic.
Example B
A particular dimension is called out. Does the layer really
have to be 100nm thick? Is that an essential feature of
the invention? Could it be between a range of values, say
75nm-150nm? Does it have to be an integral multiple of 100nm?
Does it have to be an integral multiple of a wavelength
of light times the refractive index of the layer in question?
Is the actual dimension actually irrelevant?
Example C
A particular means is given for creating something, but
the means that is used is irrelevant.
- Do you specifically need an MBE machine to make the
multi-quantum well laser that is at the heart of the invention?
Could it be done with MOCVD, by LPE? If it really doesn't
matter, don't specify the means at all, at least not in
the broadest claims.
- Do you specifically need to make a certain structure
by etching (subtractive means), or could it just as well
have been built up by deposition (additive means)? If
it doesn't matter, don't specify.
Example D
A particular property is specified, but it is unnecessarily,
or incorrectly specific.
- "Hydroscopic" replaced by the broader "electrostatically
repulsive".
- "Transparent", replaced by the more correct
and also flexible "Transparent to the lasing wavelength".
- By focusing on specific examples, have you neglected to
express the true essential idea? By going through the check-list
of the previous examples, you hope to have arrived at the
most abstract, algorithmic, yet still correct formulation
of your invention.
Example A
The essence of the invention was an electronic energy level
filter for selecting beams of electrons within a narrow
energy bandwidth. It was important to specify the energy
structure of the materials used to make the filter, and
the algorithm used to specify how many layers of what types
of material were needed to produce the desired filtering
effect. Calling out specific materials and specific layer
thicknesses would have been unnecessarily limiting.
Example B
The essence of the invention is a means for independently
engineering both the gain profile and the numerical aperture
of a lasing medium by distributing a gain medium in a (non-lasing,
and transparent to the lasing wavelength) medium of preselected
refractive index. Calling our particular wavelengths and
particular numerical apertures would have been unnecessarily
limiting.
Help the Attorneys Write Good Dependent Claims Too
In the dependent claims, it is completely appropriate
to call out the specific material, dimensions, designs, and
tools you used to reduce your invention to practice. Good dependent
claims make the patent easier to understand, easier to enforce,
and easier to license.
Summary
- Limit the scope of your patent by thorough and determined
literature searches. Anticipate the references that savvy
investors and potential licensees will probably find, thus
saving time and money.
- Broaden the scope of your patent by testing your ability
to formulate the most general, yet still correct algorithm
which explains the essence of your idea.
- Clarify your patent by giving specific examples to the
attorney for the dependent claims.
- Do all this, and you will have the clearest, most commercial
valuable patents possible.
Controlling Patent Costs
by Kirk Teska
The following article on "Controlling Patent Costs"
was written by Kirk Teska. Kirk is adjunct law professor at
Suffolk University Law School, and is the managing partner of
Iandiorio Teska & Coleman, an intellectual property law firm
in Waltham, Massachusetts.
Reining in Patent Costs: Communicating with Your Patent Attorney
Be clear and complete. The less legwork you leave
for your attorney, the lower the fee to your company.
If you hold a patent for something that everybody wants, you
can make a fortune. And when you’re rich and your patent expires,
society in general can benefit from what you invented.
Of course, life doesn’t often work like that. The inventions
covered by some patents have no takers. They can be overshadowed
by something that is perceived to be better or is more widely
advertised. So there’s a risk involved in applying for a patent,
because, as savvy readers know, patents are expensive.
According a 2007 survey, the average cost for a utility patent
application in the United States is around $12,000. By the time
the patent is granted, the total cost could easily exceed $20,000.
There is really no such thing as a poor man’s patent. In the
United States, there is a provisional patent application, which
may cost a fraction of a regular utility patent application,
but that’s a false economy.
Indeed, it’s an extra expense: whatever the provisional application
costs, it’s an added cost, since a provisional does no good
unless a utility patent application is prepared and filed within
a year of the provisional.
But there are ways to lower the cost a patent attorney charges
for drafting an application by reducing billable hours. In my
experience, the more information that I do not have to chase
down and the more concretely the invention is described, the
less time that I will need to draft a given patent application.
As for basic patent application drafting information, provide
any information that the attorney will need in order to set
the deadline for filing the application. Has the invention been
described in a published paper or embodied in a product sold
or offered for sale? Are any of these events planned in the
near future? If so, tell the attorney.
List the names, residential addresses, and citizenship of all
the likely inventors. List and provide a copy of all relevant
prior papers and patents you know about that are related to
the invention. Many companies use “invention disclosure” forms
for these purposes.
Also, manage your patent program. You can bet a patent attorney
will charge a lot more for a patent application that must be
filed in one week versus a patent application that does not
have to be filed until next month.
How about if the inventors write a rough draft patent application
to be later polished by the patent attorney? It rarely helps
me to start with such a rough draft of a patent application
written by an engineer.
Patent attorneys think in terms of problem/solution statements.
If you invented the basic paper clip, I might describe its advantages
like this: the problem with staples, which punch holes in the
attached pages and which are difficult to quickly remove, is
solved by a bent wire which keeps the pages together via a spring
force action. Engineers, in contrast, typically begin by describing
dimensions, tensile strengths, materials, and the like.
The more concretely the true invention is described, the better,
since inventions rarely have anything to do with dimensions,
tensile strength, materials, resistance and capacitance values,
or other details.
Do include with the invention disclosure form drawings of the
invention from a highly conceptual level (in a product or system,
where does the invention lie?) and then down to the nitty gritty
details. Study the patents of others to learn what goes into
them and how they are formatted.
Armed with the basic information and a concrete description
of the invention, the patent attorney is ready to meet with
one or more of the actual inventors. To ensure that you receive
a quality first draft of the patent application, make sure that
the patent attorney completely understands the true invention
and its value proposition, that you understand what the patent
application will cover, and that your understandings are the
same as the patent attorney’s.
Any disconnect between you and the patent attorney will only
lead to rewrites which increase the cost. One worst case scenario
is when you think the invention is X and the patent attorney
procures you a patent covering invention Y. The probability
of a disconnect is increased when the face to face meeting is
forgone.
After the first draft of the application is received, have
everyone review one copy. If the attorney has to incorporate
changes from three different inventors and one project manager
via four separate versions of the application lying on her desk,
that will take extra time and result in a higher cost. The goal
is to edit a first draft, incorporate the inventor’s comments,
and file the edited application with the Patent Office. As you
become more and more patent savvy, you will enable the patent
attorney to work faster and eliminate multiple drafts of an
application.
So, why not just do most of the work for the attorney and write
a rough draft of the application yourself? Because patent attorneys
write patent claims first. The rest of the patent application
is based on the claims for a variety of legal reasons. So, drafting
a patent application without writing the claims first just doesn’t
make sense and results in the attorney having to rewrite your
initial write-up anyway.
That being said, you can draft short descriptions of why the
invention is advantageous and what you know about prior versions
of the same thing as well as the problems associated with them.
If the patent attorney then asks you to describe in writing
a specific alloy, drive train, circuit, or the characteristics
of a device, do comply so that the attorney can cut and paste
your write-up into his.
Finally, if the patent attorney is willing, ask for a discount
for multiple applications and/or fixed cost applications. The
overall cost may not be that much lower, but at least you will
know the cost ahead of time and can budget your patenting efforts
accordingly.
Patent Application Checklist
