Monday, April 6, 2009

No Two Patents Are The Same

“The research has been completed. These are the results. I want you to obtain a patent for me” – a typical instruction we receive from a research institution or a university. “I have made a proto-type of my invention. I want you to file a patent application for this product” – another typical instruction from an inventor from the industry. How to handle such type of instructions? There are two options available to a patent draftsman – either to draft a patent description and claims based solely on the information provided, OR to treat the information provided as just a working solution of a bigger concept of the invention.

Before we look at which option to adopt, one has to understand the function of a patent. Without knowing the specific reason of the university or the company to obtain a patent, it is not possible to draft a patent specification that meets the objectives of the university / company. The main reason to obtain a patent is to obtain exclusive rights to the invention, so that no one can exploit the claimed invention. Another reason is to licence or assign the invention to a third party for monetary or other valuable consideration.

A patent application will face serious critical examination from patent examiners and is likely to face oppositions from third parties, often competitors. After grant of a patent, if the product or process covered by the patent is successful in the market, the patent will likely be attacked for invalidity for any number of reasons by competitors. Alternatively a competitor may adopt the teachings of the patent and yet argue that it is not infringing the patent.

Therefore if a patent application is to survive objections by the patent examiner and/or a patent is to survive an attack on the validity, or if the patent is to cover a broader scope of patent claims that are attractive to a potential licence or investor, then proper care and attention must be paid at the drafting stage of the patent application. Failure to observe these basic rules may result in no patent or a worthless “paper patent”.

A researcher in a university or an inventor in the industry often sets out to solve a technical problem which is usually narrowly defined. The inventor is said to have a “tunnel vision”. Let’s look at some examples.
Example 1

Say in a novel chemical process, the following ingredients and parameters are used by the researcher.

H2 S04 – 2M  
 NaOH – 1M
 Temperature – 27°C
 Pressure – 1 atm  
 Catalyst – Mg

A patent claim can be drafted to cover the above ingredients and parameters. But the granted patent will be extremely narrow and it is very easy not to infringe the patent and yet follow the teachings of the patent. To obtain a patent with broad scope of claims all the ingredients and parameters must be challenged.

 Why H² S04? Can other acids such HNO3, HCL etc can be used?
 Why NaOH? Can other alkali be used?
 Why 2M H2 S04? Any other concentration? 
  Why 27°C? Can other temperature give acceptable results? Similarly pressure and nature of catalyst must be challenged.

Remember many processes are not discrete, yes/no process but are continuous process.

It is a fundamental principle of Patent Law; all claims must have support in the body of the patent description. It is not generally possible to have a broad claim if there is no support for the claim in the description. Therefore if the researcher wants to obtain a patent with broad scope of claims, then he may have to do further research to find support for the claims.

Example of a narrow claim: A process to make product X by the addition of A to a solution of B where the operating temperature is between 27°C.
Example of a broad claim: A process to make product X by the addition of A to a solution of B where the operating temperature is between 24°C - 30°C  

Of course, it may be possible to obtain a patent with narrow set of claims claiming the exact parameters shown in Example 1. But a third party can easily use the technology and yet not infringe if he just changes any of the claimed ingredients or operates outside the quantified parameters!

Would a potential licensee or investor be interested in such a narrow patent? (In a crowded or matured field of technology, there is no choice but to accept narrow set of claims to overcome objections on novelty and/or obviousness).

To be continued...

Article by P. Kandiah (B.Sc (Hons)) (LLB (Hons))
Member of Chartered Institute of Patent Attorneys U.K (CIPA)

Distinguished fellow of MABIC
KASS International Sdn Bhd
 © 2009 All rights reserved

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