Maximizing Patent Protection

BY JOHN D. MCCONAGHY

Many corporate counsel look upon the acquisition of patents as separate tasks. These tasks are individually pursued by engaging a specialist only when the need exists. Such an approach is adequate and cost effective in limited circumstances. It is more likely to lead to minimal rights. Corporate counsel can greatly enhance the protection acquired through effective management. Proficiency in patent law is not required.

Understanding certain basic principles, insisting on adherence to established procedures, and demanding ongoing attention from patent counsel, can net positive results, even from marginal inventions. A simple guide is presented here to suggest effective procedures supported by foundational principles for maximizing patent coverage. The fundamentals of patent prosecution are left to the specialist responding to counsel's direction.

START EARLY

#1 Acquire prospective ownership rights in areas pertinent to the company before inventions are made.

Ownership of patent rights is first vested in the inventor(s). Consultants, employees and other potential contributors not contractually obligated to assign or owing a fiduciary duty to the company are owners of any inventive subject matter they develop. When there are joint inventors, the ownership of each inventor is with full rights to make, use or sell products or processes of the subject invention and assign or license the subject invention itself. These rights are without obligation to share economic gains with coinventors or their assignees. By failing to obligate just one coinventor to assign patent rights, competing entities can potentially acquire rights to the benefits of the company's developments.

Aside from the obvious and potentially embarrassing difficulty in retrospective acquisition of patent rights on the company's own developments, the patent statutes distinguish between inventions which are not commonly owned when made. Where not commonly owned, the first invention may act as prior technology against the second invention, even if developed as part of the same corporate effort. The second invention may then be found unpatentable in light of the first and coverage lost. Prospective requirements to assign to a common entity avoid interference between inventions on the same development.

#2 Encourage early attention to inventive ideas.

Early in technical development a final product or process goal is frequently established. Diverse designs and approaches for achieving this final goal may be contemplated as well. Not all may prove viable, practical or of immediate commercial interest. Even so, they represent possible approaches which could end up as the successful embodiment of the competition. Capturing early designs and approaches can provide the substance for patent coverage on the final product or process goal and cover alternative designs and approaches to achieve that goal, thus keeping the competition further at bay.

DOCUMENT

#3 Establish policy for maintaining evidence of invention.

The United States, standing virtually alone in the world, applies a "first to invent" rule. Under this rule, the date of invention rather than the date of filing is determinative of inventorship priority. The first to invent wins. This approach also determines the applicability of similar technology to test patentability of the invention. Therefore, it is possible and potentially important to establish a date of invention before the patent application date.

Corporate counsel can greatly influence the protection acquired through effective management

The act of invention includes the separate elements of conception of an idea and its reduction to practice. Reduction to practice may be actual, i.e., the production of a working embodiment, or constructive, i.e., the filing of a patent application. To establish the date of conception as the effective invention date, diligent efforts to reduce or constructively reduce the idea to practice must also be shown. Thus, documentation of the date, substance and inventorship of conception in combination with documentation of either the diligent creation of a working prototype and the efforts leading thereto or the diligent filing of a patent application provides the earliest possible invention date in the United States.

An inventor's notebook documented on a regular basis, hard copies of drawings and descriptions appropriately dated and witnessed by others, an internal, independently administered docketing system and disclosure to a patent attorney with a system for docketing such submissions are ways to create dated evidence of conception. Assuming a difficult reduction to practice, an early filing can provide a constructive reduction without the need for actually making the device or performing the process. If actual reduction is pursued, evidence of the reduction and of the diligence in reaching the reduction must be preserved. Documented and witnessed testing, purchases of materials, fabricated parts, design efforts and the like establish these facts.

FILE

#4 Set goals for filing based on the nature of the product.

The application process typically is not completed within a year of filing; and if an appeal is necessary, three or more years is likely. With a great deal of technology, copying is not immediate and delay before issue is of no consequence. In fact, a delay may even be advantageous as will be discussed below. However, for some inventions, economic advantage is for the moment. Exercise devices, toys and technology driven sports equipment provide good examples of the latter type. Obviously, filing an application sooner will enhance the possibility of issuing a patent sooner to cover commercial efforts without longevity.

#5 Control public disclosure and sales introductions for preservation of foreign rights.

The United States provides a grace period of one year for the filing of a patent application after certain commercial or public activities involving the invention. Substantially the rest of the world requires the filing of an application before any public disclosure of the invention. Through an international convention, member countries recognize the date of filing in a priority country. Even so, they then test for public disclosure according to their own rules. Consequently, an early filing before disclosure of an invention in the U.S. may avoid any bar to foreign filings.

#6 Establish a policy of full application disclosure as a defense against others.

The early filing of a patent application establishes the teachings of the invention embodied in the application as prior technology against subsequent inventions. Once filed, an invention disclosure acts as prior technology against which the patentability of all inventions conceived of after the filing must be tested, even before being made public. A filing may be enhanced for use defensively against others under this principle by presenting teachings and suggestions of alternative uses, means to accomplish the same results and technological background.

#7 Establish a policy regarding foreign filing.

As noted above, the U.S. has a first to invent rule for invention priority. The rest of the world, with minor exception, follows a first to file rule instead. This creates a race to the patent office in other countries. The U.S. filing date is applicable under the convention mentioned above to acquire an early effective foreign filing date. Consequently, filing early in the U.S. gives a constructive early foreign filing date (translate as invention date) under the convention.

#8 Encourage early filings for establishing filing priority.

Finally, an early filing provides avoidance of proof burdens. Proof of diligent reduction is avoided as constructive reduction is legally established. The critical nature of establishing conception is mitigated if an application is filed shortly thereafter. In interference practice, where two conflicting inventions are tested to determine invention priority, certain presumptions attach by being the first to file. Most critical of these is that the filing date is the invention date if an earlier date cannot be established.

COMMUNICATE AND REVIEW

#9 Establish a policy of regular review of each application and of the overall development project.

A common tendency regarding patent applications is to see the task as accomplished when the application is filed and a patent specialist is empowered to prosecute the application to issue. It is a mistake to treat a patent application as an independent task deserving no further input once filed. During a development project designs change, emphasis shifts, insights are acquired and new inventions are made. It is possible to expand and redirect the claims in a patent application and/or file new applications. There is no reason to leave a patent effort on one track while development has switched to another. This ability to amend claim scope and add applications can be greatly diminished upon certain events, e.g., when applications issue as patents. Deliberate movement toward issue, including the conversion to or initial filing of provisional applications, can preserve needed flexibility.

Among possible considerations for regular review is the scope of the applied claims. A patent disclosure is fixed but the claims which define the scope of protection to be afforded the patent are not. A design component considered critical at first may later be removed from the design. Claims should be added to an application which focus on other features of the design and do not recite the no longer critical component. In addition, a new application may be called for to disclose and claim the new solution. Regular review is needed to insure that the patent position sought conforms to ongoing development.

#10 Establish procedures at milestones in the application process.

As hinted at above, certain events in the application process are critical in limiting the flexibility initially afforded an application. The patent specialist can provide warnings of such events and options to consider. Corporate counsel should insist on such ongoing attention to maintain claim scope flexibility in addition to ongoing project review to maintain proper claim scope. Examples of such dates follow.

It is a mistake to treat a patent application as an independent task deserving no further input once filed.

To obtain the U.S. application filing date for foreign applications, foreign filings must be made within one year of that date (six months for design patents and trademarks) in countries or with organizations under the international convention mentioned above. In circumstances where public disclosure of the invention has been made after the U.S. filing, the ability to file will be lost if not accomplished under the convention. Timely review of the need to file foreigns is essential. As foreign protection is quite expensive, amending the original application to include what has been developed since the original filing should be considered. This can avoid the need for additional foreign applications later.

Allowance of a patent application is another milestone provoking review. The issuance of a patent application can fix what is disclosed in the resulting patent as invalidating prior technology against inventions made after the filing of the application, even in the same development project by the same company (35 U.S.C. 102(e)). Upon allowance, before issue, a review of the project is essential to insure that the patent should issue at all. Later developments which could be barred may be of far greater importance. A solution before issue is possible through the combination of applications. After issue, there is no fix. An issuing patent will also act as a publication of the invention. Further consideration of foreign filings should also be undertaken.

When foreigns are filed, publication of the foreign application typically occurs eighteen months after the priority filing. Such a publication acts to bar other foreign filings, discloses potentially sensitive materials and starts the one year date for impacting further U.S. filings. Foreign publications should be deliberately considered.

#11 Provide for external input.

In addition to patent application events and development direction, external considerations and events are advantageously monitored. As discussed above, claim scope can be directed during the patent process. Knowledge of the market and specifically of competition can be used to direct claim scope offensively, moving coverage toward competing positions arguably using concepts of the invention. Such considerations may become more and more valuable as time goes on. Through the filing of continuing applications, relying on early first filing dates, flexibility to amend claim scope can be maintained for some time. Input of competitive market information is essential to such strategies.

The foregoing considerations and strategies also pertain under the circumstance that others have led the way in development of a competitive product or process and have themselves acquired significant patent rights. Valuable patent rights granted to a second developer can become a mechanism for forced sharing of mutually blocking or mutually advantageous patent positions, giving a latecomer a bargaining position to prevent frustration of an entire project. Again, input of this information to the patent effort is advantageous to find available areas for development and patent coverage.

Impending or past dates of public disclosure, offers for sale and other commercial activities need consideration in the application process. Such events resulting in bars and disclosures of prior technologies affecting possible patent protection are important to filing strategies, required disclosures to the Patent and Trademark Office and claim scope.

From the foregoing it can be seen that the unique aspects of U.S. patent law afford substantial flexibility and extended coverage if proper preparation is undertaken, appropriate filing strategies are used and ongoing attention is paid to claim scope. Continued interaction between corporate counsel and the patent specialist is vital to adjust protection, to cover changes in development and to meet competition. Filing an application and allowing it to progress to issue without further cooperative planning can significantly detract from the potential coverage available.


John D. McConaghy is a partner at Los Angeles office Lyon & Lyon LLC and can be contacted at Telephone: (213) 489-1600.