The Origin of Specis (or, nearly everything you wanted to know about patents, but couldn’t be bothered asking) 22.Sep.2021 © Tony McStea 1992-2021 22.Sep.2021 About the Author… (with apologies to Gilbert and Sullivan) When I was a lad, I served a term As patent tech. assistant in a big paint firm I wrote applications and I argued and tried Patent offices to show that grant was justified And this sort of thing so suited me That now I’m patent attorney in industry. Acknowledgement My grateful thanks to all of you out there who helped me with this revised version by offering comments, corrections, criticisms, suggestions and advice, some of which I ignored, which is why the booklet still exists. The responsibility for any errors (not to mention the mediocre drawings and terrible jokes (or is it mediocre jokes and terrible drawings?)) is entirely mine. The responsibility for any views or opinions expressed herein is also entirely mine. N.B. Most costs mentioned herein were correct (more or less) at June, 2015, but, because of the tendency of official fees to fluctuation (and exchange rates to go up and down like yo-yos), and the consequent work of constantly adjusting them, they have been left as they are and are there to be general guides only. 22.Sep.2021 Note: changes to US Law On 16 March 2013 (thus missing by one day the Blessing of St. Patrick on the entire enterprise), the Leahy-Smith “America invents” Act (AIA), the most significant change to US patent law in half a century, came fully into effect. The basics are now all in place, but much of the detailed workings are still unclear. In addition, much of the current US patent law and practice will remain valid for applications filed before 16 March 2013, and to at least 15 March 2034, by which time many of us will be past caring. As a result, the previous commentary will remain, with occasional comments (in blue, just like this) as an indication of things yet to come or just arrived. For anyone remotely interested, the major changes are outlined in Appendix M. However, I suspect that, to quote Francis Albert Sinatra, the best is yet to come… 22.Sep.2021 CONTENTS The Origin of Specis (text) SUBJECT PAGE Hors d’oeuvres – some misconceptions about patents Basic facts about patents 1 More detail about patents First things first… What is a patent? 15 What is an invention? 15 Patents as property 21 How much is a patent worth? 21 Inventors 21 What’s in it for the inventor? 24 A short history of patents 25 Before you even commence to begin to start to think about your own patent… Freedom to use/operate 26 Marquis of Queensberry Rules… Patent law for beginners 27 suitable subject matter? 27 novelty? 32 inventiveness? 33 industrial applicability/utility? 36 sufficiency? 37 enablement? 37 How to write a patent in six easy lessons… 39 How a patent description is constructed + example of description 39, 41- 52 More details about details… 53 Patent claims 53 What claims must (and mustn’t) say 54 Types and forms of claim 54 Abstract, drawings, gene sequences 56 Microbiological inventions 57 Before you start patenting… 57 The all-important freedom to operate 57 Initial considerations & strategy 58 Not patenting – publication & secret use 59 US trade secrets 61 Finding out what’s already out there – searching 61 So, how do you go about getting a patent? 63 Grace periods 63 Applying oneself to the job… 65 Priority application 65 Provisional applications 65 22.Sep.2021 How much info needed for first filing? 66 Examples 67 Filing by fax & e-mail 67 The wonderful world of deadlines 68 Commercialisation in the priority year – cautionary tales 68 The joy of filing in foreign parts… 69 Foreign filing, justification for 69 "Best mode" 69 claim numbers and extra claims fees 69 Convention priority 70 Right to priority 70 US priority practice; "first to file" v. "first to invent" 70 WTO priority 70 Non-Con filing 72 Patent term 72 Patenting in strange foreign parts and how to save money doing it 72 Patenting in lots of places all at once… 75 Supranational arrangements 75 The Patents Cooperation Treaty (PCT); details, pros and cons 75 The European Patent Convention; details, pros and cons 78 The EU Patent, finally coming to a patent office near you soon? 82 Other Regional Patent Offices 83 Patent Prosecution Highways 83 Publishing, prior to being damned… 85 Early publication (pre-examination) 85 US "submarine" patents 85 Legal consequences of publication & notification to possible infringers 86 Withdrawal to avoid publication 86 Damnation; Examination… 87 Examination/prosecution 87 Declaration of search results 87 Typical patent office objections 88 Third party intervention 88 US practice, refiling, RCEs and C-I-Ps 88 US interference proceedings 88 Acceptance/allowance 89 Divisional applications 90 Grant, and afterwards… 91 Grant and effect of grant 91 Marking 92 Unpleasant things that can happen after grant 92 Opposition 92 Revocation 93 Re-examination and reissue 93 File availability and file inspection; “file wrapper” estoppel 94 Some odd (and not so odd) kinds of patents… 95 Petty patents and utility models 95 Revalidation or confirmation patent 95 Patent of importation 95 Patent of addition 95 Registration in dependent territory 95 Selection patents 96 The myth of “application patents” 97 Working, renewal, extension, restoration 98 22.Sep.2021 Working 98 Renewal and extension of term; SPCs for pharmaceuticals 98 Restoration of patents 99 Here come de Judge…infringement and freedom to operate 100 Exact copying not required 100 Difficulty of interpretation 100 "doctrine of equivalents" 100 What happens when someone infringes your patent? 100 Relief obtainable 102 Contributory infringement 102 Experimental use and infringement; “springboarding”, pharmaceuticals & clinical trials 103 Is repair infringement? 103 What if someone else patents something I’ve known for years? 103 Patents with very broad scope 104 When such a patent covers what you’re already doing 104 Applications of very broad scope 105 Offensive patenting and defences against it 105 When you can use someone else’s patented technology 105 Working an invention abroad and importing 106 Exhaustion of rights and parallel importation 107 Patent information and how to get it (should you be so misguided as to desire it) 108 Historical background 108 Does anyone really want it? 109 Is it useful? 110 How do I search for something? 111 Key word searching 111 Classification searching 112 Sources Abstracts services 114 Bibliographic/legal status databases 116 Full-text online 116 Index 113-117 Appendixes Appendix A - Some apparently everlasting US patents (example of old US patent term) Appendix B – examples of International Patent Classification and USPTO classification Appendix C – The Venetian Patent Statute of 1474 Appendix D – How to tell an invention from a non-invention (sort of) Appendix E – Typical stages in patenting in various patent offices Appendix F – Supra-national arrangements – PCT, EPC and Community Patent (RIP) Appendix G – PCT Contracting States Appendix H – Examples of letters patent Appendix I – Philip Grubb’s rhyming patent Appendix J – Funny patent drawing and Arthur Pedrick’s cat flap/nuclear bomb patent Appendix K- Deadlines; what they are and what happens when you miss them Appendix L - An amateur’s guide to IP valuation Appendix M - An amateur’s guide to the AIA. Appendix N – The proposed European Unitary Patent and Unified Patents Court 22.Sep.2021 Appendix O - The case against patents (and how (possibly) to improve them). Alphabetical Glossary of Patent Terms 22.Sep.2021 Hors d’oeuvres Mything in action…some common misconceptions about patents These will arise later in the text, but let’s kill them off right now: 1. Having a patent gives you the right to practise your invention No. A patent is a negative right – it allows you to prevent someone else from working the invention. This often amounts to the same thing – but not always. Your patent may fall completely within the scope of an earlier patent. 2. Having a patent gives you freedom to operate. No. Your patent could fall within the scope of a broader, earlier patent, and working it may constitute an infringement of that earlier patent. 3. You can sue infringers when you have a patent application. No. For a start, “infringement” by definition is working within the scope of a granted patent. So, until there is a granted patent, there can be no infringement. Indeed, there may never be any infringement - if you have claimed A-Z originally, and someone starts making and selling G, if your patent is finally limited to H-R, you can do nothing about it. 4. You can sue for infringement the owner of a later patent that falls within yours No. A third party merely having a patent whose scope falls within yours is not infringement. The third party has to make and sell to infringe. 5. If you have a patent covering a variety of uses, someone filing a patent on a use not mentioned is outside the patent, and can even patent it and stop you. No, except in particular circumstances. The so-called “application patent” (getting a patent on an unmentioned but obvious use) is roughly as real as Bigfoot and the Loch Ness Monster. For example, if a patent covers “oral care products” and fails to mention toothpaste, it is not possible for someone else to patent toothpaste, and any attempt to market toothpaste will infringe. The only way to get a patent on an unmentioned use is by means of a “selection patent” (see p.96).