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 it can be an expensive disaster. Some examples of expensive disasters will be described later.
THE PATENT MONOPOLY
Patent infringement is an activity, which is performed in relation to a product or process within the scope of a claim of the patent (the claim defines the patented invention), and prohibited by the law of patent infringement. For example, selling, manufacturing or importing a patented product without the consent of the patent owner is an infringement. So is use of a patented process.
Hence, the patent draftsman must have at the forefront of his mind not just the technology which constitutes the invention, but also the law of infringement, so that he can ensure, as far as possible, through the language of the specification and claims, that the patent will monopolise all of the relevant commercial activities by which money can be made from the invention.
Crucially, he must produce claims which 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. For example, if the invention is an improved electrical plug and socket he should provide separate claims to the plug and the socket (assuming both are novel) because these items are traditionally sold separately: a single claim to the plug and socket combination would be of limited value.
Here are some real examples of patents that went wrong:
A windsurfer is made up of two main components: the surfboard, which is provided with a universal joint or part of one, and the rig (mast, control bar and sail) which connects to the surfboard by the universal joint. In UK, the patent only contained claims to the combination of surfboard and rig. In Germany the patent only contained claims to the rig.
The Windsurfer Company licensed people both to make the complete device and to make replacement surfboards because the surfboards apparently frequently break. They collected large amounts of royalties on the replacement surfboards until at some point somebody complained to the EU authorities that this was an anti-competitive trade practice because the boards by themselves were not patented. The complaint was upheld. The Windsurfer Company were fined by the EU and had to drop their royalty claim on replacement surfboards.
An expensive disaster because of the mismatch between the way the patent was drafted, the law of infringement and the licensing activities.
In the RDS radio system, a coded signal transmitted when the station is about to broadcast a traffic report causes car radios to switch to that station even if tuned to a different one. The transmitters are novel because they have to produce the signal. The receivers are novel because they have to respond to it. Obviously, massively more receivers would be sold than transmitters. But the German patent only claimed ?A transmission system comprising . . . . . . .?
When the German patent owner sued someone for importing and selling RDS receivers, the German court rejected the case because the patent did not contain a claim directed to the receiver. An expensive disaster. Simply because no claims to the receiver were included in the patent specification.
Making CDs involves producing a ?master? (like a mould) and then stamping out multitudes of CDs from the master. Pioneer, the large Japanese company, had a UK patent for an improvement in the way the master was produced. It contained only a claim to a method of producing the master. It could have but did not include a further claim to a method of making CDs from a master made by the improved method. (Under the law of infringement, claims to a method of producing a product protect the product produced directly by that process but not indirect products.)
Someone began importing CDs which had been made abroad from masters made by the improved method. Pioneer sued for infringement and argued that the CD was the direct product of the patented process of making the master. The court held that the CDs were the indirect product of the patented process and struck the case out.
Another expensive disaster.
Haliburton, the large US oil equipment company, had two patents for designing oil drilling bits by computer. They were both revoked by the court because the description of the implementation of the inventions did not meet the requirements of the patent law. The description appeared in fact to be made up of notes made by the inventors themselves. The judge said: ?As a description of how an undoubtedly complex model works, this is useless.?
Not only did Haliburton fail in their infringement action and thereby lose markets and damages (and their patents) but they had to pay the defendant?s legal costs which undoubtedly were extremely large. Investment, at the beginning, in a properly drafted patent specification would have avoided this expensive disaster.
AVOIDING EXPENSIVE DISASTERS
The above are a few examples of patents whose value was significantly less than it could and should have been. Or in some cases zero.
In order to avoid this kind of problem 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 involves forward and lateral thinking, technical knowledge, commercial knowledge and legal knowledge. 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 of how to implement the invention (which is required to provide legal ?basis? for the claims).
Hence, investment at the outset in the above described 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.
BERESFORD & Co
Chartered Patent Attorneys
European Patent Attorneys
Intellectual Property Litigators
16 High Holborn
London WC1V 6BX
Beresford & Co
UK Patent Prosecution Firm of the Year 2008
Added the 31 August 2009 in category Innovation UK Vol5-1