In my previous post, Catching Whales, I set out the bittersweet story of a small startup kingdom that overcame starvation by enlarging its criteria for what counts as food. Or to paraphrase the moral I presented in that post, while it’s all very nice to aim for the top of the foodchain when dining, remember that even off-putting cuttlefish can make a meal.
And what does all of that have to do with patents, which are, after all, both my bread and butter as an Intellectual Property (IP) attorney and — unlike fishing — the actual subject of my posts on this website? Short answer: the allegory is illustrative of a critical mistake that’s as common to searching for patents as it is to searching for fish in the sea: you catch only what you set out to catch, so if you cast a net that’s designed only for what you think you want to see, you’ll get that and only that … or nothing at all. And under these circumstances what you’re not likely to get is a good sampling of what’s actually in the water, which is, after all, what you ought be looking at. Or, better yet, eating, metaphorically speaking at least.
It’s an essential point for patent searching, one that should pop into mind any time someone says “I know it’s a unique technology because I searched the patent databases and found nothing on point!” But before I pursue this further, I need to stop for a minute and discuss what the patent seas are, and why people ought be interested in trolling them. And what turns up when they do. So, let’s start with some granularity — in this case the nitty-gritty of nomenclature.
A patent is a legal document that’s issued by a government patent office such as the United States Patent and Trademark Office (USPTO),1 the Canadian Intellectual Property Office (CIPO),2 etc. The hallmark of a patent is that it grants no positive right to make or use the invention it describes; instead, it grants a negative right, specifically the negative right to exclude others from making or using the described invention in the country where the patent has issued, for a limited time period.3
So why do people want to patent things, especially when all a patent gets you is a negative right, in a limited geographical region for a limited period of time? Three basic reasons: glory (being a patent holder); duty (institutional requirements or incentives); and, commerce (i.e., money). I have nothing against either glory or duty, but my practice is based on the third premise: that a patent is something that you worry about because you’re doing something that involves commerce, and you either want a patent in order to make money or you want to legally circumvent someone else’s patent(s) for that same reason of lucre.
How then does having a patent help you make money? I can think of at least three rationales. First, patents — whether granted or even just applied for — show that you’re serious about what you’re working on, and seriousness in business ups your bona fides for doing deals. Second, patents — again, whether granted or just applied for — help to demonstrate to potential competitors and, for fundraising, money partners, that you have something proprietary, which is to say something that’s actually protectable and can’t just be duplicated elsewhere in record time with little cost and no consequences. Finally, a granted patent is a legally enforceable roadblock4 to someone else making and using the patented invention, a situation that can have enormous commercial value if the roadblock is a significant one.5
By the same three tokens, the patent game also often involves legally circumventing the patents of others, which, if they can’t be circumvented, can act to block your own commercial progress. So any consideration of patents must necessarily consider both your own ability to get patents — patentability — and the possible existence of the patent(s) of others that may affect your ability to practice a technology — freedom-to-operate. Let’s take a minute for a brief digression on each of these concepts.
Patentability is a simple enough concept: it’s the ability to get a patent for a particular technology given the applicable legal requirements for obtaining a patent in the country or countries in which you’re seeking patent protection. If you’re likely to meet all those requirements, you’re likely to be able to get a patent; if not, not.6
A complete discussion of all the legal requirements for obtaining a patent — whether in the USA alone or in the Rest-of-World (ROW) — is decidedly beyond the scope of this post, since there are many requirements, and they can differ between countries. There are three basic requirements that are ubiquitous however, and I’ll discuss them as they’re defined in the USA: statutory subject matter; novelty; and, non-obviousness. Again, please keep in mind that this is a brief synopsis of the subject, and not in any way a definitive discussion — i.e., do not rely upon anything presented in forming any conclusions and, instead, seek the opinion of a legal professional.
Statutory Subject Matter
You can’t get a patent for things that aren’t patentable, in the fundamental sense of being outside the patent framework. In the USA, abstract ideas, laws of nature and natural phenomenon are not patentable,7 with particular cases such as DNA sequences, living organisms and business method patents creating particular controversy.8
If the invention is within statutory bounds, one of the key factors affecting its patentability (but again, not the only factor) is its novelty. For the USA, for example, 35 USC § 1029 defines novelty as including the absence of any single reference which, within its four corners, contains every element of the invention for which patenting is sought.10 For our simple purposes here, the thing to keep in mind is that, if there is a reference out there that 1) discloses every aspect of your invention and 2) became public within a certain relevant time period,11 then the invention is not patentable because it is not-novel in light of this reference.
In the USA, 35 USC § 10312 defines the requirement that an invention be non-obvious; again, keep in mind that even if non-obvious an invention must still satisfy all the other requirements for patentability (including, but not limited to, statutory subject matter and novelty) in order to be patentable.
What exactly is “obviousness,” in this case as defined by United States law and the court cases interpreting that law? Again, a complete discussion of this term is well beyond the scope of this post; however, one commonly accepted way of beginning to think about obviousness is that obviousness occurs when a number of references (or other sources of information, including information commonly known) could have been combined at the appropriate time to obtain all of the aspects of the invention. Thus for example an invention for a particular paint color might be deemed obvious in light of the known existence of primary paint colors and the knowledge that, when combined in the appropriate amounts, these primary colors can form a paint of the color of the invention.
If you know your bible, you’ll know the “there’s nothing new under the sun” quote from Ecclesiastes, and, given that level of erudition, you’re undoubtedly wondering what the reasonable limits of the obviousness requirement are. After all, in the “nothing new under the sun” sense all combinations are obvious; the only question, then, is to what extent the USPTO (for example) hews to Ecclesiastes?
Well, ask a metaphysical question, get a metaphysical answer — in the USA in the form of a 2007 U.S. Supreme Court decision casting new (metaphysical) light on this requirement, KSR International Co. v. Teleflex Inc.13 (KSR). Again a detailed discussion is beyond the scope of this post, but in brief the KSR case dealt with the question of when it’s appropriate to fairly find that references could reasonably have been combined to make an invention obvious. Or, alternatively, when such a finding is merely post hoc, that is, based only on the after-the-fact impermissible hindsight recognition of the rationale of a combination of references, rather than on a recognition in the appropriate time-frame of the invention itself.
I’ll leave the detailed discussion to the statements of the U.S. Supreme Court itself,14 but I recommend the USPTO’s own gloss15 on various rationales under which it’s reasonable to combine references without it being impermissible hindsight to do so. For our purposes perhaps the most important outcome of the KSR case has been to seemingly shift the form of rejections made by the USPTO16 from novelty rejections under 35 USC § 102 to many more obviousness rejections under 35 USC § 103. If you’re a cynic, you’ll see this as the inevitable result of the KSR case having opened the door to the (more metaphysical) obviousness-type rejections; but whatever the reasons, since this is a brief discussion of patentability, it’s at least worth noting that obviousness-type rejections seem to be much more common now than they used to be.
I’ve just discussed patentability, which is the process surrounding getting a patent — and again, let me emphasize that my discussion has been emphatically USA-centric. Freedom-to-operate (FTO) is not patentability — it’s probably better to think of FTO as either the handmaiden of patentability17 or, if you prefer, its evil twin.18 There’s habitually a great deal of confusion about the difference between patentability and FTO, particularly when the patentee discovers that having a patent does not give her the right to ignore (infringe) other people’s patents, and that the thousands of dollars (or more) she’s spent to get that patent were wasted because she can’t produce her invention without running afoul of the patent (or patents) of others.
FTO is a complex subject, and it’s far beyond what I’m able to discuss here. There are at least two basic points to keep in mind: whether or not you get a patent you still have to worry about whether you’re running afoul (infringing) the patent or patents of others; and, it’s critical that you seek the opinion of legal counsel regarding issues of patent infringement.
Patentability, FTO and Searching The Patent Seas
Time to put it all together. I’ve talked about patentability — the process of meeting all the legal requirements for a patent application and getting an issued patent as a result — and also briefly touched on FTO — the necessity of determining whether there are patents out there that affect your own ability to practice your invention (i.e., your “freedom to operate”). What should be obvious is that for both processes, there’s a critical need to surveil the patent seas — for “prior art”19 published and issued patents that might affect the novelty and obviousness of an application (patentability), and for published or issued patents that might affect your FTO.20
Which brings us full circle to the Catching Whales allegory, and the importance of net design in searching, whether for fish or for prior art or FTO-related patent applications or issued patents. As I said at the outset of this post, if you cast a net that’s designed only for what you think you want to see, you’ll get that and only that, and you’ll very likely miss what’s actually in the water, i.e., the prior art or FTO-related documents you actually need to know about. I’ll discuss this more in my next post.
- See www.uspto.gov [↩]
- See www.cipo.ic.gc.ca [↩]
- There are many good discussions of patent basics; see, for example the USTPO website at www.uspto.gov/patents/index.jsp [↩]
- Certain legal rights can also accrue for published patent applications, although this topic is beyond the scope of this post. See, e.g., 35 U.S.C. 154(d) at www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_154.htm [↩]
- And, conversely, worthless if there are easy workarounds. [↩]
- Note that “likely” is the operative word, since patentability is never certain until the patent or patents actually issue; thus patentability is in some sense one of the many types of augury. I would say that it’s a more straightforward art than, say, tasseomancy, and certainly a more pleasant art than anthropomancy (see, e.g., the classic description of this form of prognostication in Roger Zelazney’s “Creatures of Light and Darkness”), but frankly the constant changes in patent law sometimes make me wonder if that statement is altogether true. [↩]
- See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/2100_2106.htm [↩]
- Although these topics are quite fascinating, I do not discuss them here. [↩]
- See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_102.htm#usc35s102 [↩]
- Again, this is a thumbnail sketch of the novelty requirement, and should not be relied on in reaching any legal conclusions. [↩]
- Set by statute, with the specifics of timing often differing in different parts of the world. Please consult a patent professional in this regard, as some or all patent rights can be lost by failing to correctly consider the legally mandated timing. [↩]
- See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm#usc35s103 [↩]
- 550 U.S. __, 82 USPQ2d 1385 [↩]
- See www.supremecourt.gov/opinions/06pdf/04-1350.pdf [↩]
- See, e.g., /www.uspto.gov/news/pr/2007/07-43.jsp [↩]
- Again, this post is focused on law in the USA rather than the ROW. [↩]
- Which has relatively nice Rhinemaiden-like connotations, a sort of Brünnhilde-in-patent-garb visual effect. [↩]
- An anti-Kirk connotation, as it were. [↩]
- Note that this term “prior art” strictly refers to any relevant prior documents, including published literature, advertising brochures, handouts, etc., as well as patent documents. [↩]
- Published patents can have certain latent rights that affect FTO; see note 4 above. [↩]