A perfect patent
Keith Beresford, Senior Partner of Beresford & Co, explains how to avoid the pitfalls of a poorly presented patent
A patent, or more accurately a patent specification, is a legal document. Like others, such as contracts, its structure and language determine its effect and therefore its value. Given a commercially valuable invention, a patent carefully drafted to meet the requirements of both the patent law and the commercial environment in which the invention will be exploited, can be of immense value. Incorrectly drafted, however, it can be an expensive disaster.
What Does a Patent Do?
In the EU, the answer is to be found in the national patent laws of the individual states. These have been harmonised to the provisions of a treaty called ?The Community Patent Convention?, which dates from 1975. In the UK, Section 60 (1) of the patents act 1977 is the relevant one.
It says the following commercial activities in the UK are direct infringements if carried out without the agreement of the patent owner:
(a) If the patented invention is a product, making, using, selling, offering to sell or importing the product, or keeping the product.
(b) If the patented invention is a process, using the process or offering it for use plus (and of great importance) if the patented process is for making a product, importing the direct product of the process, selling it, it for sale, or keeping it, even if the product of the patented process itself is not at all novel.
There are some supplementary provisions in Section 60(2) which specify activities that constitute ?indirect? infringement. Indirect infringement arises if someone, without the agreement of the patent owner, supplies or offers to supply (in the UK) to someone in the UK an item for use in putting the invention into practice in the UK when the supplier knows (or it is obvious) that the item is intended for this purpose. The item does not have to be novel in and of itself.
And so a patent gives the owner the right to prevent, through legal action in the courts if necessary, competitors from performing the above activities, or to collect royalties on those activities through a licensing arrangement.
Defining the Patent
This is done in the patent specification. And in the case of many inventions, the patent drafter can choose whether to define the invention as a product or a process or both. The value of the patent is directly dependent on the interaction between the way the patent specification is drafted and the law of infringement. And without knowledge of the law of infringement, it is impossible to ensure that the patent specification is drafted to achieve the full value of the invention.
A patent specification can be divided into three main parts:
(1) An introduction that outlines the field of the invention, the current state-of-the-art, the problem it aims to solve and an indication of the way in which the invention solves it.
(2) A detailed description to explain how to implement the invention.
(3) One or more definitions (called ?claims?) that define, by their language, the product (or apparatus) or process which is to be protected by the patent.
The detailed description has two functions. First, it has to give enough technical information to a person of ordinary skill in the relevant field to develop, without further inventive activity, a product or process in accordance with the invention.
Second, it has to ?support? or ?justify? the claims. The language of the ?claims? is crucial. If a claim is too broad, so that it reads on to previously known products or processes, the claim will be invalid. If it is too narrow, so that its language fails to cover important versions or variants of the invention, infringement can be easily circumvented. A very careful analysis is therefore necessary to determine the appropriate level of generality of the claim in order to maximise the scope of the patent while, so far as possible, avoiding invalidity through claiming over-broadly.
Getting maximum value
Patent infringement and royalty-generating activities are activities that are:
- performed by a person or corporate body
- performed within the country of the patent
- performed in relation to a product or process within the scope of a claim
- prohibited by the law of infringement of the country of the patent.
It follows that wise and experienced patent drafters have at the forefront of their minds not just the technology that constitutes the invention, but also the commercial environment in which it would be exploited and the law of infringement, so that they can produce a patent specification that gives the maximum monopoly, the maximum opportunity to royalty collection and therefore maximum value. Crucially, they must produce claims that define products or processes in relation to which infringing activities can be performed and whose language is broad enough to protect all of the modifications and variations on the invention which are commercially important. They must also produce a detailed description that supports or justifies their claims.
Avoiding Expensive Disasters
In order to avoid patent problems, the first step is to carry out a rigorous analysis of the invention as a piece of technology, and determine how the technology can be commercialised, in particular what novel products could be made and sold (and what processes could be performed) based upon that technology. Basically ?how will money be made out of this invention?? And then ?what claims are needed in the patent in order to protect these moneymaking activities??
This analysis exercise is not easy. It is best done by interaction and face-to-face discussion between the inventors, the business people who will be responsible for exploitation of the technology, and a patent attorney, all of whom will make their contributions to this exercise. Following this, the patent attorney will be able to prepare a patent specification containing claims to each important novel process and/or novel product in which the technology would be implemented, and the required detailed description and introduction.
As noted at the beginning, a patent specification is a legal document even though its contents are technical. It cannot be drafted effectively by anyone not trained in patent law and with the requisite technical knowledge and understanding of the invention. In general, inventors cannot hope to adequately draft even the detailed description because this has to meet the legal requirement of providing support for the claims, and it is almost impossible to draft adequate claims without the requisite legal knowledge and training. Special care is necessary in preparation of the description because errors and omissions cannot normally be rectified later.
Hence, investment at the outset in the abovedescribed analysis and a professionally drafted fully detailed specification is what is needed. It will not only avoid expensive disasters, but will actually be cheaper in the long run because properly drafted specifications are easier to prosecute through the patent offices of the world and to litigate in the courts if that should become necessary.
For more information, contact:
Beresford & Co
Tel: +44 (0)20 7831 2290