As part of our ongoing series examining the ecosystem necessary to bring technology to market, David French, a senior Canadian patent attorney with 35 years of experience, now provides the fifth of his commentaries on the importance to a company of protecting its Intellectual Property.
I began this series by talking about the importance of having an IP Co-ordinator on the team and how this role fits into an organization. Then I addressed what it means to obtain meaningful patents. We identified the three principles that apply if the objective is to obtain meaningful patents:
1. Right invention
2. Right market circumstances
3. Right patenting opportunity
In my last post I addressed the concept of “right market circumstances.” This time I will address the concept of the “right patenting opportunity.”
For there to be a right patenting opportunity, your invention or innovation has to possess a novel, patentable feature. “Novel” means a feature that has never before been “available to the public.” You often hear that the feature must also be “inventive.” This is really just an extension of the novelty requirement: things which are not inventive, e.g. which are obvious, will also have been “available to the public.”
To proceed, you should do a search to find out what you can’t patent. Searching is never over unless you find a knock-out. If you do find your idea described somewhere, then patenting that feature is out of the question. But you can shift the focus of your attention to another feature, possibly an improvement, i.e. an embellishment on your original idea. You will never be able to patent what has been disclosed previously. But if you identify a modification that is new and inventive, a patent will still be possible. But keep in mind: will it be worth it? Meanwhile, we will consider requirements for obtaining a patent that is valid.
For a patent to be valid, the following requirements must be met:
- The invention has to work
- You have to describe how to make it work in your patent filing. This is called enablement.
- You must not make false promises or provide inoperative instructions. Minimize your promises.
- There must be a feature present that is both new and inventive, as referenced above.
- The key feature, the point of novelty, must be present in your definitions of your claimed monopoly rights. These definitions are called your claims. You draft the claims. They have to be done right. A bad claim is invalid.
It is the applicant’s obligation to define what you aspire to control. Claims that break any of the rules are invalid. Here’s what you should know about patent claims:
- Claims are a checklist for infringement. They are formatted in a single sentence.
- Multiple claims are allowed. This allows you to restate the things that you hope will be new in case you are wrong in one of your definitions.
- You cannot claim anything that doesn’t work. Claims that do this are invalid.
- Your claims cannot be unresolveably ambiguous or they will be invalid.
- You cannot claim anything that was previously available to the public.
- You have to disclose in the story of your invention material that will support each of your claims.
Exclusive rights under a patent are restricted to the scope of coverage of claims which are valid. Many patents have gone wrong because of failure to comply with the above requirements. Patent validity is essential to success.
These articles are all about obtaining meaningful patents. Patent claims are meaningful when they address a feature, a difference, which makes a difference to customers. Ideally, that feature has a have-to-have-it character or quality, i.e. there is no other way to do it, or the closest non-patented alternative is significantly less appealing to customers. These happy circumstances can, however, only arise when the prior art does not disclose your key feature. That is essential for your key feature to be patentable.
The value of a patent is the gap (in value) separating the controlled/patented feature from the closest non-patented equivalent. No loopholes should exist in the scope of exclusive territory defined by the claims. The next part of this series will address the issue of closing loopholes.
David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.
David French would like to form a discussion group in Ottawa, an Entrepreneurs Forum where people can discuss Intellectual Property issues relating to business startups. If you are interested in participating, please e-mail David.French@secondcounsel.com.