Tuesday, May 19, 2009

No Two Patents Are The Same (Part 2)

Example 2

Say a researcher has been conducting research on palm oil. Yet similar results can be obtained using other vegetable oils, say corn oil, coconut oil, canola oil etc. Unless there is support for the use of the other vegetable oils, it is very likely the patent examiner will object to a set of broad claims covering all vegetable oils. Therefore to claim full benefit of the invention, the researcher may have to repeat the research on other vegetable oils.

Similar analytical approach must be adopted in all other fields of technology. Unless such a detailed analysis is undertaken in drafting patent specification and claims, the effort and expenses in obtaining a patent may be wasted. The patent draftsman must have substantial knowledge in the field of technology to pose the right questions or issues to the researcher / or inventor. For example, if the invention is in the filed of chemistry, then naturally the patent draftsman must have at least a degree in Chemistry. If the invention is in the field of electronics, then the draftsman must have at least a degree in Electronics. That is why it is common to find patent draftsman with double degree in a scientific field and in law, in industrialised countries.

In addition to conducting an analysis of the various parameters and set members, it is also prudent to carry out a search what published information on the claimed features of the invention is “out there”. Typically, at least a detailed search on patent database and indexed non-patent literature should be conducted. This exercise will incur additional costs. But costs expended will have the same potential costs during the patent examination stage. A strong patent application which has considered almost all prior art technology will be difficult to invalidate for lack of novelty or inventiveness. Thus one would be confident that a granted patent cannot be easily invalidated. A comprehensive search report also enables the patentee to negotiate higher royalty or licensing fees, or assignment values.

Many say getting a patent is the easiest. To defend a patent when attacked for validity or have a patent with broad claims to prevent others taking advantage of the inventive concept are challenging tasks even for an experienced patent draftsman. No two patents are the same – can aim for a simple “paper patent” or a patent with real value. Researchers and inventors need to know the objective of obtaining patent.

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
E-mail: ipr@kass.com.my
Website: www.kass.com.my
© 2009 All rights reserved

Any feedback on this article is welcomed and appreciated.
Comments: ipr@kass.com.my

(Apart from the issues discussed, there are other issues to be considered in the drafting of a good patent specification).

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