Well known patent attorney Hal Milton recently published a new article in John Marshall’s Review of Intellectual Property Law (RIPL) that argues for the presentation of a “new result” within every patent application. The majority of newly drafted patent applications do not follow Milton’s approach and instead seem to obscure the innovative elements of the claimed invention and fail to identify the problem being solved by the invention. Milton writes:
Fifty years of examining, drafting, and prosecuting patents, including the patent at issue in KSR International Co. v. Teleflex, Inc., coupled with the KSR opinion and the lessons therefrom, led the author herein to the objective standard of a new result. Inventors should be counseled that a new result should be sought out to justify the exclusive right of a patent.
Milton’s approach builds upon Paul Cole’s 2008 post-KSR article also published in RIPL. In that article, Cole reiterated that that evidence showing a new result is “necessary” under the European Patent Convention (EPC).
Milton’s approach also complements Ron Slusky’s approach to claim drafting that focuses a claim drafter’s attention first on the problem being solved by the invention. A major difference, however, is that Slusky does not explicitly advocate identifying the new result as part of the application itself.
Milton again:
In addition to identifying the new result or function to justify the exclusive right
of a patent, … that new result [should be] systematically recited throughout all sections of a patent application. Because a court may interpret a patent based upon the intrinsic patent alone, without regard to extrinsic evidence presented in advocacy outside the patent document, extreme care should be exercised in preparing the original patent application with consistency throughout. It is important to realize that patent offices, for the most part, grant patents based upon claims whereas the courts enforce patents based upon the entire patent.
Clearly there should be an obligation to describe the invention to the best ability of the applicant. Not sufficiently describing leads to an incomplete status.However recognizing the new individual componants of the application that produce subsiquent advancement from the origanal application need to be recognized for there contribution to the fully evolved finished product. I invented the term parent invention and subsiquent dependant sub invention. crediting needs to occur for each eliment when multiple parties are involved what is gained by publishing and even filing considering the potential of espionage leaking of information needs to be considered in crediting. The original parent conciever needs to be granted sufficient time to perfect the invention. The status of his financial circumstances indegency and associated inability to advance the project lack of R+D facilities need to be considered in this equation. It needs to be realized that in the absence of this mentality at the uspto will result in funding and development talent and competing business to refuse to deal and attempt to exclude the true conciever resulting in destroyed incintive to create and incentive to partnership behind the correct leader.
“And upon what do you base that opinion?”
I think Lizardtech is the on point case. If the claim has a limitation to the result, without specifying how the result is achieved, then there’s a potential 112 written description issue in that the full scope of the claim may not be described or enabled.
But if the Applicant’s disclosure contains the only known example for achieving the result, then how do you reject it during prosecution? I think you’d have to find a reference showing another way of doing it (even if the reference is NOT prior art), or “invent” another way of achieving the same result and submit an affidavit.
Otherwise, allow the claim and let the patent be invalidated when and if the Applicant tries to enforce it against a defendant who found another way of getting the same result.
Regarding your assertion that the invention must be new and useful, that doesn’t mean the invention must be advantageous. Nor does the new part have to result in some new utility, or even be useful on it’s own (see Diamond v. Diehr).
There are plenty of times that patents are sought and obtained rightfully when there isn’t a new result.
For example, sometimes an invention is a different way of accomplishing the same result, and the advantage is that the applicant invented around a competitor’s patent to achieve that result. Now they want to close that avenue and lock the door with a patent, so other competitors will have to find their own path through the developing thicket.
As another example, sometimes an invention is a gratuitously different way of accomplishing the same result, and the advantage is that the new device has to implement the invention in order to be compatible with others of the applicant’s products. Thus, a patent prevents competitors from making after-market, substitute products.
I’m sure I’ll think of more examples, but that’s a start.
What is it you think such Applicants should have to do?
Hard, what the Supreme Court seems to be doing is comparing the claimed invention with the prior art and noting the differences, and then making a judgment as to whether the degree of differences are sufficient in their view to support a patent, and if not by declaring the claimed invention to be within the skill in the art. This is their so-called “functional analysis” of Hotchkiss versus Greenwood, which they held in Graham versus John Deere to be the rule of law enacted by Congress in section 103.
Part of this analysis of course is the judgment as to whether the departure from the prior art deserves a patent. This is where it becomes critical to note just how the invention advanced the useful arts. If the Supreme Court is convinced that the invention did this, they will find the invention to be “nonobvious.”
I suspect that most courts are doing this as well in deciding whether the claim is obvious or nonobvious. Their conclusion that the invention is obvious or nonobvious is simply that, their conclusion, which is based upon their judgment as to whether the degree of differences between the claimed invention and the prior art are sufficient to deserve a patent.
Ned,
I am having a difficult time trying to reconcile your postion on Anderson when you make such statements as “but had everything to do with the fact that the combination did not, even arguably, do anything new.” and yet, you refuse to accept what The Golden Rule posts below (which, as I read it is only pointing out a “correct standard” of what “advancement” means, and is not as you seem to indicate meant to capture all rules as to making something patentable.
Further, Anderson fully accords with what The Golden Rule indicates, as the elements as claimed did not pass the statutory requirements – and yet you seem to claim that patents need more than to meet the statutory requirements above, that your position is that there are extra-statutory requirements (as captured in the exchange with the legendary Judge Rich).
Even given all the quotes you have presented, I do not find your position compelling. All the quotes you have presented can just as equally suppport the view that it is the statutory requirements – and only the statutory requirements – that must be met for patentability.
Unless you are saying that the statutory requirements are themselves unconstitutional, I fail to see just how you can take the position that there is something more that must be met for an invention to be patentable.
Hey ‘tard,
Since when do examiners allow broad claims to a result?
Just in case some of you don’t believe what a joke its become.
link to freepatentsonline.com
This is all very nice, new result, etc, but this is simply not what’s actually going on. What’s going on is patents look more like spaghetti that’s thrown on the wall to see what sticks. It’s being played like a game of chance, like many other things people once upon a time took seriously and responsibly, but no more. Examples? The stock market. Federal and state budgets. Elective surgery. The list goes on. It’s all become a shell game.
Golden, what is it that the Supreme Court has held cannot be ignored?
You would have us believe that anything “new” is patentable.
But, I suggest to you, Golden, that that is not the test. Not even close.
Mindless, check the quotes below from Graham that were relied upon once more in Anderson’s Black Rock.
If the specification does not describe even one advantage over the art, one new function not hitherto performed, one thing that advances the useful arts, I suggest to you politely that the result will be what we see in Anderson’s Black Rock.
Advancement, then, be a funny thing – it not be the same as “better,” as in, an incremental improvement in one thing, but rather, Advancement be that which adds to the warehouse of knowledge through its own uniqueness. For surely just as mankind is made better by the addition of each individual and there is no call for each individual to be “better” than the one before, so as to the call for the promotion of the Progress of… useful Arts.
You are free to ignore the incorrect standards all you want.
Hard citer of hearsay,
From Anderson’s Black Rock itself:
“A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here.”
…
“We conclude that, while the combination of old elements performed a useful function, [Footnote 4] it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination
Page 396 U. S. 63
was not an invention by the obvious-nonobvious standard. Use of the radiant-heat burner in this important field marked a successful venture. But, as noted, more than that is needed for invention.”
You will note that 103 was merely a rote incantation. The case had little or nothing to do with the statute, but had everything to do with the fact that the combination did not, even arguably, do anything new.
Note, the case quoted extensively from Graham, the same excerpts I quoted below, that require and advance in the useful arts as an essential criteria for patentability.
Supreme Court on the requirement for an “advance”
Graham v. John Deere
“At the outset it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress “To promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” Art. I, 8, cl. 8. 1 The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the “useful arts.” It was written against the backdrop of the practices – eventually curtailed by the Statute of Monopolies – of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp. 30-35 (London, 1946). The Congress in the [383 U.S. 1, 6] exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must “promote the Progress of . . . useful Arts.” This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity “requires reference to a standard written into the Constitution.” A. & P. Tea Co. v. Supermarket Corp., supra, at 154 (concurring opinion).”
…
“Congress quickly responded to the bidding of the Constitution by enacting the Patent Act of 1790…. [The board] could issue a patent …if the board found that “the invention or discovery [was] sufficiently useful and important . . . .” 1 Stat. 110.”
…
“Jefferson’s philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson (Aug. 1813)… The patent monopoly… was a reward, an inducement, to bring forth new knowledge. …Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly. Jefferson did not believe in granting patents for small details, obvious improvements, or frivolous devices. His writings evidence his insistence upon a high level of patentability.”
…
“…Apparently Congress agreed with Jefferson and the board that the courts should develop additional conditions for patentability. Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act.”
…
“…The Hotchkiss formulation, however, lies not in any label, but in its functional approach to questions of patentability. In practice, Hotchkiss has required a comparison between the subject matter of the patent, or patent application, and the background skill of the calling. It has been from this comparison that patentability was in each case determined.”
…
“Section 103,… An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent….”
…
“It also seems apparent that Congress intended by the last sentence of 103 to abolish the test it believed this Court announced in the controversial phrase “flash of creative genius,” used in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941). 7″
…
“We believe that this legislative history, as well as other sources, 9 shows that the revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.
V.
Approached in this light, the 103 additional condition, when followed realistically, will permit a more practical test of patentability. The emphasis on nonobviousness is one of inquiry, not quality, and, as such, comports with the constitutional strictures….”
How are we to read this? That an invention that does even claim to advance the useful arts be patentable?
Repeating the above, in the words of the Court, “Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must “promote the Progress of . . . useful Arts.” This is the standard expressed in the Constitution and it may not be ignored.
From Wikipedia,
Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969), is a 1969 decision of the United States Supreme Court on the legal standard governing the obviousness of claimed inventions. It stands for the proposition that, when old elements are combined in a way such that they do not interact in a novel, unobvious way, then the resulting combination is obvious and therefore unpatentable.
Ned,
We will agree that you would never make it to the Supreme Court with your arguments.
I would wager on that 3L to beat you in court.
Know, we will agree that “advance” is not in the statute in so many words. It is there nevertheless as an implicit requirement.
It used to be part and parcel of the requirement for “invention.” I see it in Hotchkiss v. Greenwood. However, I do not see it in the Graham e-dicta we now know as the Graham factors.
I would suggest to you that “advance” remains part of the Supreme Court case law, but identifying the notion in the statutes is hard. Clearly Judge Rich, who wrote Section 103 with his colleagues, was not in favor of factoring in the notion. But with the very first case interpreting 103, the Supremes harkened back to Hotchkiss and its prior case law consistent therewith.
So much for Rich.
So the advice here to describe the advance in the specification is a very good one.
“But I’m always looking to improve my performance.”
As long as “performance” is defined in a certain way.
Evidently, being persuasive on blogs is not part of that definition.
Conflate requirements much?
Judge Rich, “differences” between the claimed invention and the prior art?
You know, in litigation, we like to tell a story of the invention. We like to describe the prior art, its failings and its problems, and what the inventor did to solve those problems. That is something we do.
Now is it statutory?
No.
But it is required.
Otherwise we are going to lose.
I think, respectfully, they are going to tear you a new one and later hold your patent invalid. See the discussion above about Anderson’s Black Rock.
“what do you think the Justices are going to say to you?”
Does this application meet the statutory requirements?
Are you thinking that they would ask more than that? On what basis of law? Would your recital of 35 U.S.C. 102 help the Supreme Court understand the law? Do you think quoting some Judge Rich to them might help?
“Advance” is in the eye of the beholder. “Advance” can merely mean – here’s another way of doing it.
There, evidently, is a proper way of asking that question.
“What say you, is this notion completely gone from a determination of “invention?””
You tell me – can that quote be found in the current law? Compare to 35 U.S.C. 102 and 103.
IANAE,
“if the patent specification provides no explanation…”
This is a slightly different issue.
But, assume the specification provides no explanation as in Anderson’s Black Rock, and you are standing there before the Supreme Court, and you have no explanation as to how the claimed invention advances the useful arts, what do you think the Justices are going to say to you?
“Yeah the ‘new uses’ usually involve putting method steps in an apparatus claim, which I usually 101.”
Huh? 101?
“And I also follow the MPEP regarding ignoring process limitations in an apparatus claim. I forget the section off hand or I’d provide it.”
Lulz.
should the patent be patentable at all.
Of course it should, if it meets the statutory criteria.
The only thing that’s constitutionally required to try to advance the useful arts is the patent system as a whole. If a few patents squeak through that are novel and inventive but don’t advance the useful arts, that’s no big deal.
In any event, who can say which of two alternative methods will be cheaper or better by the time the patent expires, with all the advances in technology that will take place by then? I see no reason to deny a patent for an inferior alternative, if there’s nothing against it in the statute.
Yeah the “new uses” usually involve putting method steps in an apparatus claim, which I usually 101. And I also follow the MPEP regarding ignoring process limitations in an apparatus claim. I forget the section off hand or I’d provide it.
How about the constitutional purpose?
If a patent specification provides no explanation on how it advances the useful arts, should the patent be patentable at all. Shouldn’t it just be thrown into the ashcan and not even examined?
Paul, design around? A different way to skin a cat that is no better, and perhaps even worse, than the patented way?
Question, should one be able to patent an invention that demonstrably does not advance the useful arts?
Asked in this way, the answer is self-explanatory.
Claim drafting is not really the issue. The problem is that the specification does not do enough “bragging.”
Check this from the 1790 Act:
“if they shall deem the invention or discovery sufficiently useful and important, to cause letters-patent to be made out in the name of the United States”
What say you, is this notion completely gone from a determination of “invention?”
I agree, but apparently new uses for old machines, etc., are now being claimed as new machines, etc., to get around difficulties imposed by various laws in Europe and in the US.
I think these claims are non statutory as they seemingly violate Section 100.
Actually, it is an old requirement as it was the initial touchstone for determining whether there was “invention.”
From the Patent Act of 1790:
“…if they shall deem the invention or discovery sufficiently useful and important, to cause letters-patent to be made out in the name of the United States….”
Regardless of how you try to avoid it, the notion remains.
Changing the hook size is not the invention. The invention is discovering a new use for an old hook.
That in the US is claimable as a process.
The question on the table is whether it is also claimable as a new machine, manufacture or composition.
I think Kappos needs to get this issue to the Feds ASAP just in case the issue has never been decided by the Supreme Court, the CCPA or the Feds.
D.C.,
Don’t sweat the editing mixup (this is a blog after all).
I would rather wrestle with the meat of what you say anyway.
Two things that interest me:
1) Yes, I started out by talking about what the inventor is entitled to. 35 USC 102 comes to mind: “A person shall be entitled to a patent unless” – that’s a pretty broad statement of entitlement. And last I checked – the Office does not write patent applications. Which leads to the second point…
2) “claims and disclosure are all part of a grand bargain.” Yes, but that’s not the point. Claims set the legal boundary for enforcing a patent right. “Set[ting] that price unilaterally” is exactly what my part of the process is about. I do unilaterally write the claims. Yes – there is a give and take with the examiner about what is allowable (given the examiner’s job of making sure that what I (unilaterally) write meets the law), but my portion is indeed quite unilateral.
NEITHER of these involve my “duty” for “better” promoting innovation (per se) as my previous post indicates. It simply is not incumbent on me to seek a “better” promotion, and it is not incumbent on the Office to force me to make a “better” promotion.
Whoops – editing mixup: “Patent claims are the price paid by society for invention disclosures, in the form of the privilege of levying a burdensome tax. Inventors and their counsel don’t get to set that price unilaterally.”
LNBSL writes: … what am I being paid to achieve – the answer is: the best patent rights for my client. My job is not to promote innovation (per se) …
Hmm – you started out talking about what an inventor is (supposedly) entitled to. But this raises the question: What type of exclusionary rights would best serve the constitutional purpose of the patent system. There’s a bit more to that question than a single-minded focus on making clients happy.
————–
LNBSL writes: the claims do serve a different purpose.
I don’t think so; the claims and the disclosure are all part of a grand bargain. Patent claims are the price paid by society for the privilege of levying a burdensome tax. Inventors and their counsel don’t get to set that price unilaterally.
Malcolm,
If you were an actual practicioner you would recognize that the term “broadest possible coverage” includes the notion of all appropriate cost/risk tradeoffs factored in, including claim defenses (as well as licensing and other considerations).
Do I really have to explain the craft to you in such detail?
“Malcolm,
If you were an actual practicioner you would recognize that the term “broadest possible coverage” includes the notion of all appropriate cost/risk tradeoffs factored in, including defensible claims (as well as licensing and other considerations).
Do I really have to explain the craft to you in such detail?
“And “coverage” of what exactly?”
Get a clue, and you won’t have to ask such questions.
“The sixty-four dollar question, again, is which of these views will better promote innovation.”
The better sixty-four thousand dollar question, for the first time, is what am I being paid to achive – the answer is: the best patent rights for my client.
My job is not to promote innovation (per se) – that will be inherent in the application as a whole – the claims do serve a different purpose.
“You can waste a lot of money trying to obtain the “broadest possible coverage”. And “coverage” of what exactly?”
Of course they can MM, but to them it isn’t “wasted” if that money is going in their pockets.
“And that’s a problem, why, exactly?”
Did I say it was a problem? I said that it was why you would include it ya tard.
Bah,
Who can be bothered with the actual law?
“If the claim is unnobvious, there is no need to put the “result” in the claim…
Voila! Instant patent. This has happened to me.”
Since we know – per Malcolm, that he is perfect in his (ahem) prosecution skills, we know that Malcolm would never improperly do something for which there is no need.
What then to make of his admission that “This has happened to me.” ? It has happened to him during his examiner days…?
How is that BPAI position treating you, Malcolm? How are all (zero) of your clients?
Features of size and proportions matter and find their way into the description and claims. However, for the purposes of this blog it is appropriate only to point out general directions, not to go into over-much detail.
An ISO container hook is bigger than a fish hook. In Europe we would regard that as implicit as we tend to use common sense (the Supremes like that concept too, I recall). However, a prudent draftsman has ranges of dimensions, weights, proportions and materials in the specification for incorporation into the claim if need be. I had had believed that it was not necessary to S P E L L this out, but apparently it is.
Thanks for the confirmation. I’m impressed that you know.
Yes, I’m paid to be persuasive. I get there in the end. But I’m always looking to improve my performance.
But to throw in a test question, what if the only [but valuable] utility of the invention being claimed is that it is an unobvious new process to make an identical prior product with identical prior results, and the only [but valuable] advantage is that this new process avoids the claims of a prior patent?
I think the issue is moot then. If the claim is unnobvious, there is no need to put the “result” in the claim.
The perceived need to put the “result” in the claim arises when the claim otherwise appears obvious. You can argue that to the Examiner that the result of the method (or even a property of the composition) is unexpected. The Examiner may say “But the result isn’t recited in the claim.” So then you recite the result. Voila! Instant patent. This has happened to me.
If the claim appears obvious AND you lack any unexpected results, then you are essentially scrxwed.
I confirm your corollary.
Maybe you just need to be a little more persuasive with your US counterparts. It is your job to be persuasive, is it not?
Greatly obliged Interesting. I really appreciate that. Now if you could just confirm also the corollary, that US claims are less than optimal for Europe, that would greatly assist my daily struggles, to ease my instructing US attorneys out of their love affair with the claims they themselves have drafted, and are ordering me to file at the EPO.
Ken Brooks
you can claim a new use (result) for an existing apparatus.
No you can’t, Ken, at least not in the US. The terms “use” and “result” are not synonyms. Not even close. You are being unclear or you are simply dead wrong. Take your pick.
EWIZ It is the attorney’s job to help the applicant envision and obtain the broadest possible coverage
Actually, it’s the attorney’s job to obtain the broadest claims desired by the applicant after the applicant has been informed of the cost and risks of trying to obtain those claims, at the same time ensuring that at least some of the claims are defensible in court.
You can waste a lot of money trying to obtain the “broadest possible coverage”. And “coverage” of what exactly?
“Interesting is whether claims drafted in Europe, and good for Europe, are any good at all within the USA.”
Not really that interesting. Claims good for Europe are worthless in the U.S.
Pifflesnort. “New use of a known process.” 35 U.S.C. 100(b).
Ken Brooks writes: The reason many patents don’t identify the invention is due to the fact that many, many law firm see patent prosecutors as loss leaders. As a result, they don’t afford the prosecutor sufficient time to understand and carefully craft a patent applicaiton.
I see two contributing problems here:
1. We all know about clients who are budget-sensitive, especially for inventions of uncertain or even speculative business value. Ditto for law firms that (not unreasonably) want their patent drafters to justify their salaries by billing at goal rate for goal hours. Those are brute economic facts, about which we can do little, ISTM.
2. Patent drafters don’t always get to spend as much time on the claims as we’d like. Often this is because we have to spend too much of the budget on ‘bespoke’ disclosure-writing, viz.,
(i) figuring out what needs to be said about the technology — which is a particular problem when we’re not already deeply familiar with the technology in question — and then,
(ii) editing that information into a written form suitable for filing.
A root problem in #2, I think, is that we don’t have a suitable standard ‘language’ for quickly describing inventions, a language in which inventors and patent drafters can concisely say what needs to be said. Mathematicians and physicists use equations, not prose; physicians and lawyers use their own concise jargons; but inventors and patent drafters don’t have anything comparable.
After some years of experimenting, I’ve had a fair amount of success working with inventors with a collaborative approach that involves:
A) diagramming and cataloging the resource flows involved in doing something useful, utilizing techniques adapted from software development (specifically, a variation on Yourdon-DeMarco diagramming), coupled with,
B) together with the inventor, in real time, drafting a strong set of ‘starter’ claims.
This process typically produces an inventor-scrutinized disclosure document, with claims, that in many cases can be filed the same day as a provisional application.
I posted a write-up of this approach back in January at link to ontechnologylaw.com. I’d be interested in any feedback the folks here might have.
Lovely Paul. First, it answers all those who suppose that absent an enhancement of performance, your position at the EPO is hopeless or, in other words, that “technical effect” is NOT synonymous with “performance enhancement”. Second, it cites an English example.
I’m not even sure if this article and discussion are about “result” in connection with statutory “utility” or un-ambiguous claim limitations or both. But to throw in a test question, what if the only [but valuable] utility of the invention being claimed is that it is an unobvious new process to make an identical prior product with identical prior results, and the only [but valuable] advantage is that this new process avoids the claims of a prior patent? What does “result” have to do with that?
P.S. Add my usual complaint that when we have important real world patent law issues hotly pending in Congress, why doesn’t patent law academia write more about those issues, rather than making more pie in the sky proposals for changes in patent law for which there is not a shred of Congressional interest?
Provision of further alternatives is a viable technical problem under the EPC, and interestingly in the UK courts in Nokia v IPCom where Floyd J. said: “It is entirely possible that invention lies in achieving the same functionality in a different way.”
However, EPO case law makes it clear that it is harder for an examiner to object based on a mosaic of references if what is being obtained is an improved result rather thansimply an alternative result.
Do you think it might help, to have some sort of qualifying examination in claim drafting competence, like we do in Europe, before you can call yourself a patent attorney? Is not competence in claim drafting the minimum? It does not matter how good you are at other things: if you can’t secure client’s position at the outset, you are not good enough to call yourself a patent attorney.
Interesting is whether claims drafted in Europe, and good for Europe, are any good at all within the USA. But that’s another issue entirely.
Unfortunately, most new inventions are solving old problems…
I forgot to mention. The reason many patents don’t identify the invention is due to the fact that many, many law firm see patent prosecutors as loss leaders. As a result, they don’t afford the prosecutor sufficient time to understand and carefully craft a patent applicaiton. It is a simple fact of life. I have worked on several patent applicaitons written by others that are an incredible demonstration of engineering knowledge. However, the author could identify an invention if it bit him in the bum. Just because you understand technology does not mean you can understand innovation. Similarly, and many times in my career, I have had to explain to engineers that while you might have an excellent engineering solution to a problem that does not necessarily arise to invention. In short, many people simply fail to grasp the concept of invention.
Paul, I was always unhappy with fish hook/crane hook example, thinking BRI, that in some technical fields a “crane” might be for a very small load indeed and that toy cranes have very small hooks.
More revealing for me is a debate about one claim that begins: “Football comprising…..” versus another claim that begins “Ball for playing football…..”. Even if you have only a tennis ball, you can still have a game of football. Whether something is a “Football…” however, depends whether it meets the Rules of the relevant sporting governing body.
Malcolm you can claim a new use (result) for an existing apparatus.
“trailing stream of incoherent thought.”
A sign of the laziness that infects those that want “the easy.” The thought is clear – take your time in reading and do not confuse your inability to understand a concept with the statement of that concept.
Paul, I had in mind all that EPO jurisprudence on “mere alternative”. Do you categorize such subject matter as with a technical effect, or without one? That was what prompted me to use the word “trivial”. Perhaps you can explain it to readers with more lucidity than I can muster.
LNBSL writes: An inventor is entitled to his invention – and everything stated and unstated (inherent) to that invention.
Your POV isn’t unreasonable per se, but neither is the opposite argument: You told us how to solve problem X, but you said nothing about solving problem Y, so your power to exclude and/or to tax others shouldn’t extend to the latter. The sixty-four dollar question, again, is which of these views will better promote innovation.
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LNBSL writes: To needlessly limit the reward, to rob the applicant of the inherent benefits is never a good thing. (Emphasis edited.)
This assertion brings to mind something I often tell my students: All categorical statements are bad, including this one.
“isn’t essentially the same as the flash of genius standard but with a different name”
Flash of Genius was explicitly written out by the Legislature in 1952.
Proponents have been trying to squeeze it back in ever since.
Paul Cole. I would like to ask you a question… If a fish hook and a crane hook both differ. Are you saying that they both are different enough to be patented.. Hey GORDIE AND DICK.. I TOLD YOU DICK!
Indeed I do, which is why I cited it.
And I am not sure that the EPO is that concerned about the size of the technical effect (erfindungshoche), simply that there is one.
The end of that last paragraph is a trailing stream of incoherent thought.
But ignoring that and addressing the statement that the flash of genius mindset “drenches the paper”, explain how 103 in this post-KSR era isn’t essentially the same as the flash of genius standard but with a different name. Tinkering and small incremental changes over the prior art doesn’t get you past the graham combinative rationales.
Paul Cole probably likes the fit between the Rosenberg conjecture and the EPO’s Problem and Solution Approach.
Rosenberg equates patentable matter with “A difference that makes a difference”.
The EPO finds novelty over D1 when there is “a difference” (in EPO parlance a “characterizing technical feature”). Turning then to obviousness, it looks for the difference (any “technical effect”) which that characterizing feature makes, relative to D1. If the technical effect is trivial, the claimed matter is more likely to be obvious.
Happy Bloomsday, everyone!
I’ve been following the same practice for years now. That, and making the Summary a regurgitation of the claims. This makes the Background and Summary completely useless from attempting to determine the problem and invention in easy to understand terms.
I do the same as you — put everything in the Detailed Description, with lots of hedging language.
Paul those differences don’t appear in Ned’s hypothetical hook claim and “cargo” is not defined in the claim as an ISO shipping container. This situation reminds me of a carton from the 50’s I saw with a kid walking down the street with the fish still the hook. That fish is cargo and was latched and lifted from the water in one easy motion (ignoring 112 issue of what constitutes an “easy motion”).
I don’t think there is a problem with result/use limitations, but the standard is whether those limitations actually narrow the claim because the prior art can’t reach that result or be used in that fashion. However, this only gets you over a 102 analysis. A hook that is the same except for size and material is likely vulnerable to a 103 argument.
TO the contrary, it is very clear that this is a bad thing.
An inventor is entitled to his invention – and everything stated and unstated (inherent) to that invention.
To needlessly limit the reward, to rob the applicant of the inherent benefits is never a good thing. Just as someone later cannot claim invnetion to an inherent characteristic – the one responsible for that same characteristic should be the rewarded for it.
I am struck by how many times the article uses the term “picture claim.”
Then I am struck by the comment by Paul, attributed to an examiner related to not wanting a lengthy argument, but rather a concise statement.
And while it is true that some art areas lend themselves to such easy application write-ups, those same write-ups tend to be extremely limited in scope and life. No doubt, a good first step in the strategy of drafting, such picture claims are only a first step. It is the attorney’s job to help the applicant envision and obtain the broadest possible coverage – patents have a life into the future and need to be written beyond the simple picture claim mentality.
Then we have the quote of “It’s not the difference but the difference the difference makes that is important.”
This raise questions (and points out unstated assumptions). Important? Important to whom? Important how?
The mindset of “Flash of Genius” resides in the subjective answers to these questions. The unstated bias of “Well, we just cannot be handing out patents to just any invention” drenches the paper here. The sense of elitism is rife. It seems that what is lost is the actual words used by Justices (the conditional “may”) when discussing combination patents. We have moved from a “may” by obvious to a “must be” obvious mindset – or at least the author would have us move so. What is lost in this transition are those (worhty of patent) inventions that have as their invention the combining of the pieces, rather than the pieces themselves. We have here the full embrace of hindsight obviousness testing, and we risk penalizing the inventiveness of choosing the right pieces to combine, even if the pieces do not have a synergistic effect.
Sure, this is an easier path – but it is not the correct path.
Judith writes: My concern is that if I say “I’m solving problem X.” but my claims apply to problem Y, the courts will say that’s outside the defined scope of the invention.
It’s not clear that this is categorically a Bad Thing. Suppose a spec fails to propose applying the solution to problem Y as well: Quaere whether the inventor’s reward for disclosure should extend to the undisclosed problem Y, and which answer is more likely to promote more innovation.
Ned: Do you think you could lift an ISO shipping container (40 tons or so) with a fish hook?
A fish hook is simply not the same as a crane hook – the scale matters.
They are different products made by different people probably of different mateials and shipped through different channels of trade to different end users.
Peter Rosenberg (now unfortunately no longer with us) was a US patent examiner who wrote several treatises on patent law, now no longer published under his name.
He memorably wrote: “It’s not the difference but the difference the difference makes that is important.” That sums everything in a nutshell.
He also said that examiners do not want lengthy arguments but instead just a concise statement as to why the application is grantable over the prior art.
Ned: it pays to look at the patent in Andersons Black Rock: the claim ended up as something that was never represented as inventive in the application as filed.
“the examiner might let you go with a very broad claim
And that’s a problem, why, exactly?
another good point, Judith
“worth protecting” is a new statutory requirement?