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atents are an important class of Passet for any company. For a start- up company, its patent portfolio may be its most important asset. Despite their impor- tance, patents and the surrounding law may Patent law not be well understood by researchers and management. Therefore, they risk mak- ing decisions or taking actions that could fundamentals negatively impact their ability to pursue and obtain patent protection for their inventions. The best way for a company to avoid costly for innovators in mistakes at a critical juncture is to become better informed about the patent process and work closely with a patent attorney at all the ceramic and stages of an invention. Because of the significant changes wrought by the recent America Invents Act (AIA), it is more important than ever to take proactive, forward-looking measures to position inno- vations properly for the patent process. This article sets forth some fundamental principles regarding patents and the require- ments for obtaining patents, describes the types of patents relevant to the ceramic and glass industry, and briefly discusses By Steve Ritchey the significant changes in patent law from the AIA.

What is a patent? In general, a patent is a grant of some privilege, property, or authority made by a government to one or more persons. In the United States, Article I, Section 8, Clause 8 of the Constitution provides Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Part one of a two-part series presents the importance of respective Writings and Discoveries.” patents to companies and the requirements that must be met The patent and copyright clause of the Constitution was before patents are granted. evidently uncontroversial, because there is no record of debate on the topic by the framers of the Constitution. The first Patent Act was enacted in 1790. Thomas Jefferson, as the first Secretary of the Department of State, had the primary respon- sibility for administering the statute, including examination procedures. The present Patent Act was enacted in 1952 and has been amended numerous times over the decades, includ- ing the recent Leahy–Smith America Invents Act of 2011. As

28 www.ceramics.org | American Ceramic Society Bulletin, Vol. 93, No. 3 established in Title 35 of the United States Code, it provides that a patent grants to the owner, … the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or import- ing the invention into the United States, and if the invention is a process, of the right to exclude others from using, offering for sale or sell- ing throughout the United States, or importing into the United States, products made by that process … This excerpt from the law sets forth what may be the most misunderstood aspect of patent law. A patentee has the right only to exclude others from practicing the patented invention. A patentee does not have the right to practice the patented invention. The comic illustrates this concept.

Types of patents There are two types of patents that are relevant to the ceramics industry— the utility patent and the design patent. A utility patent may be directed to a new and useful process, , manufacture, or composition of matter. (Credit: Steve Ritchey; Thompson Coburn LLP.) Its term begins with the patent grant thermal shock of up to 450°C—which one or more aspects of the invention and ends 20 years from the earlier of was originally developed for the US bal- or may include other relevant informa- the application’s filing date or priority listic program—would be patent- tion, such as graphs of experimental date. Recent utility patents issued in the able along with the design of cookware data. The section often referred to as the ceramics field include a nanotube array made from the . “specification,” follows the drawings and -emitting diode,1 a -on-insu- The increasing importance of patents may include a background of the inven- lator wafer in which the upper portion may be seen in the fairly consistent tion, a brief summary of the invention, has a trapezoidal cross-section and the growth in the number of patents issued a brief description of the drawings, and lower portion has a curved outer periph- since the creation of the Federal Circuit a detailed description of the invention, eral edge,2 and a particular boroalumi- Court of Appeals in 1983 (Figure 1). which also may disclose experiments. nosilicate glass composition for making The Federal Circuit is the exclusive The patent ends with its most impor- dinner plates by a fusion draw process.3 court for patent appeals and was cre- tant aspect: the claims, which define In contrast, a design patent is directed ated, in large part, to develop more the scope of the invention and face the to a new ornamental design for an object uniform patent law jurisprudence than most scrutiny by the Patent Office and of manufacture and has a term of 14 what had developed among the various during patent infringement actions. As years from issuance. Examples could be regional circuit courts of appeals. noted by the Supreme Court in 1892, new designs for a or bathtub. “[t]he specification and claims of a pat- Utility and design patents are not Parts of a patent ent, particularly if the invention be at all mutually exclusive. Therefore, depend- A patent contains several parts. The complicated, constitute one of the most ing upon the circumstances, one may front page contains a wealth of infor- difficult legal instruments to draw with obtain both types of patent protection mation about the patent, as shown in accuracy.”4 As such, a precise use of lan- on a particular object of manufacture. Figure 2. guage and considerable skill is required For example, the composition of a white Immediately after the front page are to draft claims that define a patentable glass-ceramic capable of withstanding a the drawings, which may be images of invention over the prior art while still

American Ceramic Society Bulletin, Vol. 93, No. 3 | www.ceramics.org 29 Patent law fundamentals for innovators in the ceramic and glass industry

must disclose a use that ognized a prior art reference—an article is presently available to written by two Russian scientists—that benefit the public (i.e., disclosed a particular falling within it cannot prove useful the patent’s claimed ranges. Although at some future date the article did not disclose any corro- after future research). sion resistance properties, it barred the granting of a patent because Novelty resistance was an inherent property of The claimed inven- the alloy—regardless of whether the tion must be novel or Russian scientists knew that. new, which generally Moreover, a determination as to means it must not whether a particular reference consti- have been available tutes prior art can be complicated. As to the public before will be discussed in greater detail in the effective filing a future article, the AIA significantly date of the claimed changed the provisions for determining invention. Although whether a particular reference consti- there is a one-year tutes prior art to a patent application grace period for ear- filed on or after March 16, 2013. (Credit: Dennis Crouch, Aasociate professor, University of Missouri School Law, www.patentlyo.com, January 2, 2014.) lier disclosures made Figure 1. Utility patents granted per year. by the inventor and Obviousness some other exceptions, the Patent Act The invention must not be obvious embracing all the possible variations of defines prior art to a claimed inven- over the prior art.10 Unlike novelty, the fundamental concepts of the inven- tion as: the consideration of obviousness is tion so that the inventor/owner may • US and foreign patents, printed not limited to a single prior art refer- obtain the full measure of protection to publications, public uses, and sales ence. Instead, obviousness is judged which he or she is entitled. before the effective filing date of the from the point of view of a person of claimed invention; and ordinary skill in the art, who is deemed Requirements to obtain a patent • US patents and published US pat- to be aware of all the relevant prior To obtain a patent, several statu- ent applications having an effective art. Obviousness is the USPTO’s most tory requirements must be satisfied. As filing date before that of the claimed typical basis for the rejection of claims indicated above, the claims are of the invention.8 when examining a patent application. utmost importance. When the statute This is the “prior art” to which a It is relatively rare that all the claims refers to an “invention,” it means the claimed invention is compared for nov- of a patent are defeated on the basis invention as claimed or the claimed elty and obviousness (discussed below). of novelty—typically no single prior invention. A threshold requirement is The claimed invention is not novel or art reference exists that discloses all that the patent must be directed to pat- is “anticipated” if a single prior art ref- the elements of a claimed invention. entable subject matter.5 Patentable sub- erence discloses all the claimed aspects However, the Office often finds all the ject matter includes a process, machine, of the invention. claim elements in a combination of manufacture, or composition of matter, Whether a claim is novel is usually prior art references. but does not include “phenomena of a straightforward, objective determina- The determination of obvious- nature, though just discovered, mental tion—a single prior art reference either ness is largely subjective and requires processes, and abstract intellectual con- discloses all the aspects of a claim or it determining whether the differences cepts, as they are the basic tools of sci- does not. That said, there are complica- between the claimed invention and one entific and technological work.”6 Once tions, such as “inherent” anticipation, or a combination of prior art references the threshold patentable subject matter in which a particular claim element is is such that the claimed invention, as inquiry is addressed, one may turn to not expressly disclosed in a reference a whole, would have been obvious to a the four primary statutory requirements: but it is necessarily present if the teach- person of ordinary skill in the art at the utility, novelty, nonobviousness, and ings of the prior art reference are fol- time the invention was made. adequate disclosure. lowed. A federal circuit case from 1985, Although primarily a subjective Titanium , offers an example.9 The determination, objective evidence often Utility case involved a patent application for referred to as “secondary considerations” The invention must be useful or have a titanium alloy that contained various can support a finding of nonobviousness. utility.7 Satisfying the utility requirement ranges of nickel, , iron, Examples of secondary considerations is typically not an issue. The invention and titanium and was “characterized by include the invention’s commercial suc- need not work better than earlier tech- good corrosion resistance in hot brine cess, long-felt but unresolved needs, the nologies. Simply put, the application environments.” However, the court rec- failure of others, skepticism by experts,

30 www.ceramics.org | American Ceramic Society Bulletin, Vol. 93, No.3 Patent First name inventor number

Title Issue date

Inventors

Patent owner

References Modifications to considered by term of the patent the examiner

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Examiner Filing date and related applications Law firm

Publication information Abstract of information

Technology classification of invention

Figure 2. Front page of a patent application. praise by others, teaching away by oth- pivot point stays fixed, thereby satisfying nonmoving part of the pedal support ers (e.g., a prior art reference that claims the first claim element. structure to avoid motion in the sensor an aspect of your invention would be, According to the Court, the question wires, which causes wire-chafing. for example, undesirable, ineffective, “was whether a pedal designer of ordi- In view of the teachings about the counterproductive, or impossible), recog- nary skill, facing the wide range of needs sensor location and the fixed pivot nition of a problem, and copying of the created by developments in the field of point design of the primary references, invention by competitors. endeavor, would have seen a benefit to the Court concluded that “[t]he most In 2007, the US Supreme Court’s upgrading [the primary prior art design] obvious nonmoving point on the struc- KSR v. Teleflex decision significantly with a sensor.” The answer, of course, ture from which a sensor can easily changed how the USPTO and the was yes. At the relevant time, the mar- detect the pedal’s position is a pivot courts analyze the question of obvious- ketplace had created strong incentive point.” Therefore, all three of the claim ness.11 In particular, the Court rejected to convert mechanical pedals to those limitations were found to be obvious the rigid analysis that had developed in using electronic sensors. Therefore, start- in view of the prior art. As a result, the lower courts since its seminal Graham v. ing with the primary reference design, claim was deemed invalid. John Deere decision in 1966 in favor of the question for a pedal designer “was a flexible inquiry.12 The KSR decision where to attach the sensor. The conse- Adequate disclosure is important from a legal point of view, quent legal question, then, is whether Lastly, the patent application must and it provides a good illustration of an a pedal designer of ordinary skill start- satisfy three distinct but related require- obviousness analysis involving the com- ing with [the primary reference design] ments: written description; enablement; bination of multiple prior art references. would have found it obvious to put the and best mode.13 These three require- In KSR, the claim was to a position- sensor on a fixed pivot point.” ments are the minimum level of disclo- adjustable pedal having three Turning to the other prior art refer- sure. A patent may, and often does, have elements: the pedal assembly has a fixed ences, the Court determined a second disclosure that surpasses the statutory pivot point; an electronic pedal-position reference taught the benefit of put- minimum. Failing to comply with these sensor is on the pedal assembly itself; ting the sensor on the pedal assembly requirements will render the affected and the sensor is attached to the fixed instead of the engine (i.e., the second claims invalid. The AIA removed inva- pivot point. The primary prior art refer- claim limitation). A third reference lidity as the consequence of failing to ence disclosed a support structure for an taught that the sensor should not be disclose best mode. Importantly, ade- adjustable pedal assembly in which one on the pedal’s footpad but instead on a quate disclosure requirements are evalu-

American Ceramic Society Bulletin, Vol. 93, No. 3 | www.ceramics.org 31 Patent law fundamentals for innovators in the ceramic and glass industry ated as of the effective filing date of the Wands factors for evaluating whether experimentation needed to practice an invention is undue application, even if the issue does not Wands factor Analysis come up until much later when a patent Quantity of the experimentation The less experimentation, the better. Considered in terms of time, effort, cost, etc., is the subject of litigation. The written in view of activities typical in the particular field. Thus, the fact that experimenta- description and enablement require- tion may be complex does not necessarily make it undue, if the art typically ments tend to be issues for patents of engages in such experimentation. chemical and biotech inventions and Amount of direction or guidance present The more guidance, the better. are usually not of concern for patents of Presence or absence of working examples Working examples are not required but very helpful. Even prophetic examples can mechanical and electrical inventions. be helpful. Nature of the invention As complication increases, more disclosure is needed. Written description State of the prior art Applications to inventions in well-developed fields typically require less disclosure. The written description requirement Relative skill of those in the art The more the inventor’s skill level is above that of others in the art (in terms of promotes the progress of the useful arts and/or years of experience), the more disclosure that is needed. by ensuring the patentee adequately Predictability/unpredictability of the art The chemical and biotech arts are generally considered to be more unpredictable, describes the invention in the patent whereas the mechanical and electrical arts are considered to be more predictable. specification in exchange for the right Fields can become more predictable as they develop. to exclude others from practicing the Breadth of the claims As claim scope increases, more disclosure is needed. invention for the duration of the patent’s The concept of undue experimentation with respect to enablement was set forth by the Supreme term. To satisfy the written description Court in 191615 but it was the Federal Circuit’s 1988 In re Wands decision that first articulated what requirement, a patent specification must is to be considered when evaluating whether experimentation needed to practice the invention was describe the claimed invention in suf- undue and, thus, the disclosure was not enabling.16 ficient detail that a person of ordinary enablement requirement is distinct from tual property. Regardless of patent type, skill in the art can reasonably conclude the written description requirement certain requirements must be met before that the inventor “possessed” the claimed and goes beyond merely explaining how a patent is granted, or which may be a invention. Such possession is shown to make and use the invention. For basis for invalidating a patent in court. by describing the invention with all of example, an applicant could show posses- My next article will provide a detailed its elements using descriptive means, sion of a claimed chemical compound by analysis of the AIA as it applies to the including words, figures, diagrams, and disclosing the chemical structure itself, ceramic and glass industry, including formulas. For example, when considering but the structure may not convey the best practices for working within it. a patent for a compound, the USPTO necessary information to allow a person may look for a description incorporating of ordinary skill in the art to make the About the author chemical structures, physical and chemi- chemical compound. Steve Ritchey is a patent and intel- cal properties, and functional character- lectual property attorney at Thompson istics coupled with a known or disclosed Best mode Coburn LLP, St. Louis, Mo. He earned correlation between the function and Disclosing what the inventor his BS in ceramic at Iowa structure, or some combination of such believes to be the best way to practice State University. Ritchey earned his characteristics. As noted by the Federal the invention at the time the applica- law degree from Saint Louis University Circuit, “[c]ompliance with the written tion is filed satisfies the best mode School of Law. Contact: sritchey@ description requirement is essentially a requirement. In general, this require- thompsoncoburn.com or 314-552-6000. fact-based inquiry that will ‘necessar- ment is not an issue, but it must be ily vary depending on the nature of the kept in mind if an inventor improves References invention claimed.’”14 the invention while the patent applica- 1A. Kastalsky, “Nanotube array light-emitting diodes,” US Pat. No. 8,610,125, Dec. 17, 2013. tion is being prepared, after the first 2G.D. Zhang and R.R. Vandamme, “ and solar Enablement application is filed, or when filing wafers,” US Pat. No. 8,310,031, Nov. 13, 2012. 3A. Tanabe, “Semiconductor device and method The enablement requirement is satis- subsequent related patent applications. thereof,” US Pat. No. 8,598,055, Aug. 13, 2013. fied with a specification that discloses Although your attorney will likely ask 4Topliff v. Topliff, 145 US 156 171 (1892). sufficient information to allow a person you if there have been developments 535 U.S.C. §101 of ordinary skill in the art to make and 6Mayo v. Prometheus, 132 S.Ct. 1289, 1293 (2012). in the since you prepared 735 U.S.C. §101 use (or “practice”) the invention without the invention disclosure or the earlier 835 U.S.C. §102 undue experimentation (see Wands fac- application was filed, it is always best to 9Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985). tors for evaluating whether experimenta- be aware of this potential problem and 1035 U.S.C. §103 tion needed to practice an invention is keep your attorney apprised of signifi- 11KSR Int’l Co. v. Teleflex Inc., 550 US 398 (2007). undue). As with the written description cant developments. 12Graham v. John Deere Co., 383 US 1 (1966). requirement, the enablement require- 1335 U.S.C. §112(a) 14Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 963 (Fed. ment is part of the bargain of promoting Your most important asset Cir. 2002). science and the useful arts in exchange Patents protect one of the most impor- 15Mineral Separation v. Hyde, 242 US 261 (1916). 16In re Wands, 858 F.2d 731 (Fed. Cir. 1988). n for a limited monopoly. However, the tant assets a company has—its intellec-

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