After over 32 years of practice, I’ve found that patent application drafting is more “art,” than science. One item I’ve particularly enjoyed is describing why the invention is significant or a “big deal.” I call this telling the “story of the invention.”
I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention. It can be quite helpful to effectively, but safely tell the “story” of the invention in a patent application.
The litigated cases are often full of interesting “invention stories” which became significant in reaching the conclusion that the invention was patentable. One great example is United States v. Adams, 383 U.S. 39 (1966) which is one of the few instances, at least in recent memory, where the United States Supreme Court affirmed the patentability of the claimed invention.
The Adams patent (U.S. 2,322,210) involved a storage stable “dry” battery comprising a magnesium anode and a cuprous chloride cathode which became operative when placed in a plain or salt water electrolyte, yet held a stable, consistent voltage. Less than a month after filing his patent, Adams brought his invention to the attention of the Army and Navy. In fact, demonstrations were arranged before experts of the United States Army Signal Corps. Interestingly, the Signal Corps scientists did not believe Adam’s battery was workable.
The plot thickened when the federal government contracted with other manufacturers to make this supposedly “unworkable” battery. When Adams sued the federal government in the Court of Claims to get compensated for this unlicensed use of his patented battery, the federal government argued it was unpatentable based on the following: (1) “wet batteries” comprising zinc anodes and silver chloride cathodes were old in the art; and (2) the prior art showed that magnesium could be substituted for zinc and cuprous chloride for silver chloride.
When the federal government couldn’t convince the Trial Commissioner of the Court of Claims that Adam’s battery was unpatentable, they then petitioned to the U.S. Supreme Court. As stated by the U.S. Supreme Court:
The Adams invention was the first practical, water-activated, constant potential battery which could be fabricated and stored indefinitely without any fluid in its cells. It was activated within 30 minutes merely by adding water. Once activated, the battery continued to deliver electricity at a voltage which remained essentially constant regardless of the rate at which current was withdrawn. Furthermore, its capacity for generating current was exceptionally large in comparison to its size and weight. The battery was also quite efficient in that substantially its full capacity could be obtained over a wide range of currents.
While acknowledging this prior art relied upon by the federal government, the Supreme Court found several flaws in its reasoning: (1) the Adams battery was “water-activated” which set it apart from the prior art; (2) as admitted by the federal government, the the Adams battery was “wholly unexpected” in providing “certain valuable operating advantages over other batteries” while those from which it was alleged to have been copied “were long ago discarded”; and (3) “at the time Adams perfected his invention noted experts [e.g., the Signal Corps scientists] expressed disbelief in it” even though [s]everal of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system.”
Legend also has it that when it came time to argue this case before the Supreme Court, Adam’s lawyer connected one of these “water-activated” batteries to a light bulb. And during this argument, as the light bulb began to “glow,” it caused a stir to ripple amongst the justices. The rest, shall we say, is history, as the Supreme Court (with one dissenting justice and one not taking part) concluded that Adam’s battery was, in fact, patentable.
So what does Adam’s battery have to do with drafting patent applications today? My response: the “story” behind Adam’s invention. Other inventions may not have “stories” as dramatic as Adam’s battery, but each invention should have some sort of “story” to tell that will be useful in arguing why that invention is patentable. Such stories have become even more important after the Supreme Court ruled recently in KSR International v. Teleflex that an invention can be unpatentable if “common sense” says it is. That means the “story” must tell why the claimed invention isn’t derivable by simply applying “common sense” or looking at the prior art. Like Adam’s battery, this story may tell you that: (1) the prior art doesn’t recognize the problem(s) solved by the invention; (2) the invention provides “unexpected” benefits or advantages relative to the prior art; and (3) the prior art would, in fact “teach away” from the invention.
So here are some “rules of thumb” for effectively, but safely telling the “story” of the invention in a patent application:
Location, location, location. This “story” about the invention needs to be told in the right place in the patent application. Previously, this “story” was told in the background section of the patent application. Unfortunately, the Federal Circuit has made it dangerous to do so any more in the background section. Any patent attorney or agent who has been confronted with an allegation of “admitted prior art” (APA) by a patent examiner based on what was said in the background section knows what I’m talking about. So the “story” about the invention should now be moved to the beginning the “detailed description” section of the patent application. In other words, the “story” doesn’t change, just its location in the patent application to avoid or minimize later allegations of APA.
Talk about the “problem(s)” solved by the invention and/or the benefits/advantages provided. Our friends in Europe know what I’m talking about here. If you want to make effective arguments for why the invention is patentable after KSR International, it’s almost imperative to point out the unrecognized “problems” solved by the invention and/or the significant benefits and/or advantages provided by it. That doesn’t mean you can’t make a case for patentability without these items. But it’s going to be much more difficult in the post-KSR International world to do so without a “story.” You also need to be careful in making direct comparisons of the “superiority” of the invention to specific prior art. If it turns out that the patent examiner doesn’t consider this specific prior art to be the most relevant to the invention, you may be stuck later with a comparison that becomes an “admission” (even APA), and worse yet, a basis for a potential “inequitable conduct” charge if it is alleged in litigation that what was said is more than just “puffery.”
Whenever possible use unique words to describe the invention. An inventor is legally entitled to be their own lexicographer, so use this advantage in the patent application. That means a “unique” invention should be described in a unique manner, including using unique words or phrases when possible for any terms used (or potentially used) to describe the invention. That also means providing a significant definition section (like in a contract) to define these unique or “coined” terms broadly, intermediately, and narrowly (you can do all three in the definition if you write it correctly). I call this technique “dictating the playing field.” Put differently, do you want to dictate the patent application’s “playing field,” or would you rather the patent examiner (or worse yet litigation opponent) dictate that “playing field?” In fact, because many patent examiners do their searching for prior art by using “word searches” (and not by using the Manual of Patent Classification as many of us did in the “old days” and still do on-line), these examiners may find themselves rudely “jolted” into thinking about the invention (and the prior art) in a new way that makes allowance of the patent application more appealing.
Spend some time thinking through the “story” to be told. In the past, it used to be standard practice, especially in the mechanical arts, to spend significant time drafting the claim set first, and then spending the remaining time afterwards drafting the specification. I’m going to suggest that you should reverse that order and emphasis. After putting together what you think the independent claims initially look like, you should then focus your energy on the “story” you will tell about the invention, including what terms you need to define to make that “story” work. Drafting an extensive claim set, but without putting together a “story” to tell about why the invention defined by that claim set is a “big deal” is likely to lead to significant patent prosecution frustration and failure.
So try to be the next Adam’s invention which tells a “story” for why the invention is a “big deal,” and you may be pleasantly surprised at how much easier patent prosecution becomes.
For more on US v. Adams see Wikipedia.
© 2010 Eric W. Guttag
Join the Discussion
7 comments so far.
AJApril 6, 2010 11:47 am
I am a budding application drafter at a law firm with only a few applications under my belt. As a former Examiner, I belive the story enhances the application for two reasons, first it helps frame the state of the art and introduces biases.
Framing the state of the art helps the examiner understand the invention by introcuding what problems are being solved so they can know what and where to search. In turn this will result in compact prosecution.
Introducing biases early on may alter the way the Examiner reads the patent and thus how the claims are interpreted. A properly storied detailed description may result in the Examiner reading the claims more narrowly than stated. This may inadvertently cause the Examiner to disregard relevant art just because it is not in the general realm of present claims.
EGMarch 5, 2010 04:52 pm
Sorry, I meant to say in the second sentence “at least not generally alleged”.
EGMarch 5, 2010 12:33 pm
I’m the one who suggested that telling the “story” later might be “new matter” (not Gene) which I now admit is a bit of an oversimplification. But I can tell you that if the benefits/advantages that form the basis for the Rule 132 are at least generally alleged in the patent spec, you’re likely to get a strong objection to the Rule 132 from the Examiner. You can’t simply wait (with any margin of safety) and hope that you can bring up these “unspoken” benefits/advantages later.
In telling the “story” my assumption also is the anticipated A in view B rejection (because you did your prior art search homework) is the toughtest one you expect to face. The new C in view D rejeciton you mention that the Examiners sometimes dreams up is usually much easier to flatten, compared to the A in view of B that was anticipated.
Anyway AC thanks for this and your other comments on this blog.
American CowboyMarch 5, 2010 10:05 am
Gene, many cases have several “stories” and the one that helps you overcome the rejection of A v B may not help much if the rejection is C v D. So, maybe it would make sense to wait and see what the examiner says in the first action and then tell the story in a 132 declaration and/or attorney remarks.
I disagree with your contention that doing so would be considered new matter. As long as you are not adding a previously undisclosed element to a claim, it is not new matter to tell the background of the development of the claim. That said, I do agree that examiners tend to give a bit more weight to a “story” told in the spec than later enunciated in prosecution. I think that is wrong of them, but a reality.
EGMarch 5, 2010 08:51 am
I think you’re overreacting to what I said and what the Federal Circuit has said. In particular, your statement to “Let the shadows of meaning be cast during litigation.” I interpret that to mean “let the claim terms be defined during litigation.” That is a recipe for disaster. For at least the past 10 years, I’ve reviewed close to all of the Federal Circuit cases, and the one issue that usually kills the patentee (both on infringement and validity issues) is a key claim term(s) that is ambiguous and undefined in the patent specification. The Phillips case has made reliance on “extrinsic” evidence (e.g., dictionaries) to define claim terms a very risky proposition.
If you choose the applicant’s right to be the “lexicographer” the Federal Circuit will honor that, and you’re opponent will regret trying to say otherwise. Also, the one time I can guarantee you the patent examiner reads the patent spec is when they say a claim term is indefinite under 35 USC 112 and I point them directly how I’ve defined that supposedly “indefinite” claim term in the patent spec. If they don’t, they will regret not doing so as Federal Circuit law is clear that, when the applicant chooses to be the “lexicographer,” the applicant’s definition controls, no matter what the patent examiner thinks the claim term means. Defining your claim terms in the spec is also one way to reign the “broadest reasonable interpretation” doctrine.
I’m also not “ignoring the legal environment in which they [patents] now reside.” Notice that I said put the “story” in the detailed description, not the background section. My background sections now are extremely general and bland and try not to point to where the I’m going with why the claimed invention is a “big deal”; I leave that to the beginning of the detailed description section where the patent examiner will be very rudely awakened by me if he refers to what I say as APA. I also now cite minimally, if any, reference disclosures as background; what I cite is primarily “incorporation by reference’ material to support and enable the claimed invention.
Frankly, not telling the “story” about the invention does an even greater disservice to clients by removing our greatest weapons for countering the “common sense” nonsense and “obvious to try” marlarkey rejections we now get from the USPTO (which may hopefully be ameliorated by the current Kappos regime) post-KSR International. These arguments include modifications which “change the principle operation” of one or more of the references relied upon, and more significantly “teaching away” arguments. If you don’t say anything about why the claimed invention achieves benefits/advantages that the references don’t recognize, you’ll be left “high and dry” trying to make those arguments later as they likely be considered “new matter” that you can’t rely upon. Also, while the TSM test has become disfavored post-KSR International, it is still alive and viable (contrary to popular, but misguided belief), and if you don’t have a “story” about the invention, you’ll be hard-pressed to make an argument based on TSM.
Again, I hear you and I’m not saying the patent prosecution world now is anything other than more dfficult post-KSR International. But concerns about what might happen in litigation shrink to insignficance if you can’t get the patent application allowed because you’ve got no “story” to tell about the invention to convince the patent examiner to allow it. (As AC correctly said, the litigators need to assess how whatever “baggage” will affect the infringement suit as they have far more time than we patent prosecutors are generally allowed to write that patent application “tome.’) In fact, without some “story” about why the claimed invention is a “wow” (even if it’s a modest “wow”) will make the claimed invention come across as “artifically defined” and the patent examiners will often pick up on that.
That’s my 2 cents to you for what it’s worth. But thanks for the debate, there are always two sides to the “story.”
OldTimerMarch 4, 2010 07:49 pm
I have to respectfully disagree with your thesis. In fact, I think this does a real disservice to your clients.
Your suggestions made sense 15-20 years ago. But in the intervening time period the federal circuit has taken a hyper-technical approach to patent construction which could best be summarized as “anything you say can and will be held against you in a court of law.” Make a statement in the background and you’re stuck with admitted prior art. Reference a field of use in the summary or even the abstract and your claims may be limited. Disclose something not in the claims and you’ve dedicated it to the public. And just to top things off the court has become blatantly anti-patent in the past few years. On and on and on.
Without question, patents with a story are more interesting and fun to read, but you can’t ignore the legal environment in which they reside. In this legal environment the best thing you can do for your clients is to draft the claims, make a full and complete disclosure of the claimed subject matter in the specification, then shut your pie hole. Let the shadows of meaning be cast during litigation.
It would be a different matter if telling a story enhanced the likelihood of allowance, but it doesn’t. Hell, it’s hard enough to get examiners to read the damn claims. They are never going to read the specification.
American CowboyMarch 4, 2010 02:06 pm
Prosecutors get a lot of flak for putting stuff in the spec or prosecution history that later causes problems when the patent is litigated. I think the flak should go to the litigator who litigated knowing that stuff was there. If it was a show-stopper why did you file the complaint? If it was not, howcome you didn’t get around it?
The litigators have the last clear chance and should be the ones held responsible if this stuff goes bad.