What an IP Co-ordinator should know: Closing patent loopholes

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As part of our series examining the ecosystem necessary to bring technology to market, David French, a senior Canadian patent attorney with 35 years of experience, now provides his next commentary on the importance to a company of protecting its Intellectual Property.

By David French

In the previous postings in this series I talked about the importance of having an IP Co-ordinator on the team and the three principles that apply if the objective is to obtain meaningful patents, This time, I will address how “loopholes” can seriously undermine the value of a patent.

Everybody has heard that patents can have loopholes. Often, the truth that a patent has loopholes is only appreciated when an attempt is made to enforce the patent against a competitor. When this occurs, the competitor, after consulting with a specialist, may be able to modify its product so that it does not fall within the scope of the claims of your patent. How does this unfortunate situation arise?

When a patent claim is being drafted the objective is to prevent competitors from marketing closely similar products that will compete with the patented invention. This is an exercise that requires the skills of a patent professional. Not all patent professionals have the same skill level, but they are all seriously committed to obtaining patents with claims that qualify as being valid and will also serve to block the marketing of similar products by a competitor. The problem is that it’s hard to anticipate what a competitor might do. This job should not be left to the patent professional alone.

Then there were the Wright brothers

The Wright brothers drafted their own original patent filing. When they encountered difficulty at the Patent Office, the examiner recommend that they engage a patent attorney. The attorney who took over their file restructured their claims to address what he saw to be the principal invention disclosed in the document that had already been filed. That feature was an arrangement by which the flexible wingtips of the Wright brothers’ airplane, whether an aircraft with one or two wings, could be bent or warped so as to cause the aircraft to either roll to the left or roll to the right. The Wright brothers had prepared a disclosure in which they depicted a biplane with cables connected to a yoke that embraced the hips of the pilot. The pilot, by shifting his hips sideways could force one wingtip to be bent up while the other wingtip would be bent down. This action would cause the aircraft to bank to the left or to the right. This was the famous aircraft control mechanism for which the Wright brothers obtained a patent.

The newly engaged patent attorney set out to prepare fresh claims with the disclosure that he was stuck with. He was careful to make sure that the patent claims did not stipulate that the aircraft had to have two wings, even though that is the format that was depicted in the disclosure. To have limited the patent claims to the case of aircraft with two wings would have left a major loophole: aircraft having only a single wing were already known and would eventually dominate the industry.

The patent attorney quite possibly perceived that the tips of the wings might be hinged rather than being flexible. But the story in the original disclosure couldn’t be changed. It only described wingtips that were flexible. And it is not permissible to claim something that hasn’t been disclosed. However, with some insight and brilliance, the attorney submitted claims that stipulated for:

“Means for simultaneously moving the lateral portions (of the wings) into different angular relations to the normal plane of the body of the aeroplane and to each other, so as to present to the atmosphere different angles of incidents.”

These submissions were accepted and the patent was granted.

Along came Glenn Curtiss and Henry Ford

When this claim was asserted in 1910 against Glenn Curtiss, (who was to become the father of American aviation by producing 10,000 aircraft before the end of the First World War), the court ruled generously in favor of the Wright brothers. Curtiss was, after an appeal in 1912, ordered to stop building aircraft that violated this claim. This was so even though the Curtiss aircraft did not rely on twisting or warping the tips of the wings. Instead, Curtis had installed independent air-defecting panels in the gap between the outer ends of the upper and lower wings which he rotated in opposite directions to achieve roll control.

The Wright brothers, thanks to the insight of their attorney, had been lucky. Such a result might not occur if the case were litigated today.

When everything seemed lost Curtiss sought-out Henry Ford who had once offered to help him if he were in difficulty. Ford’s lawyer read the patent claims very carefully and noted that they stipulated for the simultaneous activation of the wingtips in order to effect a roll. On his recommendation Curtiss modified his airplanes so that only one aileron was activated at a time. It didn’t work as well, but it still worked. The management at the Wright Corporation were justifiably outraged at this evasion but were told that a fresh legal action would be required to resolve whether this qualified as an infringement, if anything could be done at all. Meanwhile, Curtiss kept flying until the First World War began and then the government forced cross-licensing on everyone in the aviation industry.

And they still found a loophole

This is an example where, after a remarkable effort by the patent attorney, a loophole still existed in the language of the patent claims. How can such an outcome be prevented? The only way to close loopholes is to invest the effort at the time that a patent is being prepared to imagine all alternatives competitors might pursue in order to avoid a patent claim. In many cases, such an effort will identify loopholes. But since the patent application is still under preparation, these alternatives can be described in that document and claimed as well. That will close the specific loopholes.

Will it be possible to close all loopholes? Only the most brilliant inventor can foresee the future and probably no one will be more motivated to find a loophole than a competitor who is threatened with a shutdown order. But still, it’s worth the effort to study and understand the patent claims drafted by your patent professional in order to at least close-off those loopholes that can be readily discovered.

As we concluded in the prior posting, the value of a patent is the gap (in value) separating the controlled/patented feature from the closest non-patented equivalent. The more loopholes you are able to close the larger that gap will be. The next part of this series will address the reality of the “prior art wall.”

Photo: Old Pictures

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 is available to lead 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.

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