In my previous post I discussed the recent trend of the USPTO to consider everything obvious — well perhaps that’s not a completely fair assessment, but certainly the bar for obviousness rejections has been set much lower of late.

In that last post I discussed a number of conceptual categories of arguments that can be made to rebut this lowered bar, including particularly unexpected results as a basis for non-obviousness.  However, given the duty of candor to the USPTO that all applicants have, you can’t argue unexpected results unless you actually have such results; but at what point are results unexpected rather than, say, merely somewhat surprising?  That is, at what point can you fairly make a claim for real unexpectedness such as would (we hope) get the USPTO to accept the argument that the invention obtained is not obvious?

 A big part of the answer turns out to be that it’s become more and more important to include negative results as well as positive ones, in order to show that merely combining the various elements of the invention doesn’t inevitably lead to success; rather, things are unpredictable enough that — to some extent at least — the invention was something you stumbled onto.

A good hypothetical example is an unexpected result when mixing paint pigments.  Normally of course we’d expect that pigments of red, green and blue can be mixed to obtain a whole rainbow of colors, with each particular color quite predictable from the amount of red pigment, green pigment and blue pigment added.

Suppose, however, that in the course of mixing up different colors we discover one particular combination of red, green and blue produces a completely different and uniquely explosively fluorescent color from what we expect — say as a result of some unexpected interaction that occurs between the pigments only for this particular ratio of pigments.  Aha!  This explosively fluorescent color is an entirely unexpected result, a sweetspot that unexpectedly manifests out of an infinite number of possible pigment combinations.  It’s unexpected, so we argue that it can’t be obvious, and, if we’re lucky, we’ll get a patent out of that particular combination as a result.

If you’ve been paying attention, at this point you should have two questions, both of them very practical.  First, is that single combination of colors a saleable combination, that is, there’s some real value in the combination that we hope is patentable because it’s unexpected?  And, second, if that combination is indeed saleable and not just a freaky one-off, is there sufficient protective value in terms of copying that one single unique combination of pigments?  Or to put it differently, we’re talking about a claim of very very narrow scope, for example:

1. A composition of matter comprising 5% red pigment R, 37.2% green pigment G and 57.8% blue pigment B.

And we should really worry quite a bit when we see a claim this narrow, because it just reeks of a situation where the scope of protection is so limited that anyone can find a workaround with very little effort.

The Janus-Faced Dilemma

The answer to the above?  Well, there’s no simple answer, because there’s an inevitable tension between the limiting scope that unexpectedness imposes (out of all those possibilities, all of the combinations come out negative except just that unexpected one) and the greater likelihood of non-obviousness that that limited resultset provides.

But at the very least, showing negative results helps make the argument that the actual result is at least pretty unpredictable if not flat-out unexpected.  To make this point clearer, let’s consider the following hypothetical set of experiments we include in our patent application:

Experiment 1. 50% R was combined with 25% G and 25% B.  The color obtained was a normal color.

Experiment 2. 5% R was combined with 35% G and 60% B.  The color obtained was a normal color.

Experiment 3. 5% R was combined with 38% G and 57% B.  The color obtained was a normal color.

Experiment 4. 5% R was combined with 37.2% G and 57.8% B.  The color obtained was not normal, but instead was explosively fluorescent.

Experiment 5. 6% R was combined with 38% G and 56% B.  The color obtained was a normal color.

Consider how much more effectively this set of experiments shows the uniqueness of the 5/37.2/57.8 combination of Experiment 4 is than would a simple listing of Experiment 4 only.  Scientists aren’t used to reporting their failures; but the more failures  you report the more you can make clear how unpredictable your results ended up being when you actually obtained them.

Or let’s put it another way.  An Examiner sitting in an office at the USPTO (or other patent office) has no idea whether or not what you did was difficult; and, with the benefit of hindsight, it’s really tempting for that Examiner to say that your exciting result was just the product of routine and rote manipulations on your part.

Showing negative results is often a useful way of rebutting this tendency.  All those examples of negative results show how uncertain your progress was, and how unexpected the result you finally obtained.

Take the “animal ear protectors” of US4,233,942, which I’ve reproduced in the graphic at the top of this post.  If it turned out that tubes slightly shorter were so uncomfortable to the animal it chewed them off, and that tubes slightly longer caused it to howl for hours, but that there was no real correlation until you tried just exactly the length shown, and then the animal loved them and wouldn’t take them off, not even for a squeaky toy — well, writing down all those failures would make the success stand out more as unexpected, and therefore (we hope) non-obvious.

At least that’s the theory.

- Groucho: Now, here is a little peninsula, and, eh, here is a viaduct leading over to the mainland.
– Chico: Why a duck?
– Groucho: I’m alright, how are you? I say, here is a little peninsula, and here is a viaduct leading over to the mainland.
– Chico: Alright, why a duck?
– Groucho: (pause) I’m not playing “Ask Me Another,” I say that’s a viaduct.
– Chico: Alright! Why a duck? Why that…why a duck? Why a no chicken?

Indeed, why a duck? In the case of this post, to illustrate a point that’s been kicking around in my (febrile) mind about obviousness as it now tends to be applied by the USPTO. Let’s roll up our sleeves and start, shall we?

“So A Duck Gets Stuck To A Jet Engine …”

In the panel above we have the mysterious equation of Duck + Jet Engine = ? What can this mean? Is it some mystic cypher? Is it a Zen koan? A gnostic conundrum?  No, of course not, it stands for our new invention. Thus, Duck + Jet Engine = …

And there we go, our invention, to whit, a jet-powered duck. Patentable right, and really pretty clever, less time in transit, a lot more challenging a target for hunters. Admittedly it isn’t cheap, but then neither are genetically engineered dogs (or children), and it’s a lot more interesting that the standard-model duck after all …

Not so fast, says the patent office. After all, ducks are well-known aren’t they? And jet engines, we’re all familiar with them? So the combination of a duck and a jet engine, it’s just putting together two well-known things, nothing exciting about that; in fact, not only is it not exciting, it’s obvious, in the technical (patenting) sense of the word. And so, instead of getting glory from admiring hunters whose skills are now being challenged in a whole new way and, to boot, the grant of a patent from the USPTO, we get a 35 USC § 103 obviousness rejection instead.

At this point, you probably think I’m kidding right? Well, yes, I am, but only sort of. There’s certainly a standard doctrine that says that once you’ve got a set of pigments, say, that you know for a couple of combinations make a couple of colors, it’s obvious to make other colors by different combinations of the same pigments. And there are lots of similar situations where obviousness is pretty … well, obvious, for example when you use chemical A in one case and you’re told that it’s pretty obvious to do what you did when you used very-closely-related chemical B instead. But however common ducks and jet engines are, they’re not like pigments or related chemicals, and it doesn’t seem very plausible that the combination would be the least bit obvious.

But these days, I’m not so sure that the USPTO would agree. A number of years ago, for example, I worked on a case where the unique combination of two well-known cancer drugs was rejected by the USPTO as being obvious — but keep in mind that these drugs are very close to being lethal even when used singly, so just throwing together any old bunch of them isn’t necessarily a very obvious thing to do … especially if what you’re aiming to do is to cure someone with the combination rather than kill her. And I also worked on a case of an invention that produced a microscopically thin membrane with holes in it — a process that required several million dollars worth of machines usually used to make computer chips. Pshaw, said the USPTO, it’s just the same as any other membrane with holes in it; in fact, it’s not even any different from a window screen, which, after all, has a solid bit with openings going through.

Consider the logic there. How much is a window screen like a membrane that in the case I’m discussing is about 10,000 times thinner than a human hair? If I took one of the planets in the solar system, squashed it flat and blew holes in the squashed piece using nuclear weapons, would that be obvious because it’s really just like a screen on a window, solid bits, holes and all?

I admit I’m glossing it over slightly — if you’re a patent person, for example, you might be yelling “obvious to try isn’t obvious!” or other things like that. But honestly I’m not convinced that I’m especially off base in what I’m saying; in fact, I really do suspect that my jet-powered duck would be rejected for obviousness just because ducks and jets are well-known.  And, the patent office would probably add, we’ve all seen the combination of birds with jet engines,¹ so how is the powering of a Duck by a jet engine not obvious given these facts?

 Which leaves the question, why is the USPTO being this way? And what can you do to try to counter these kind of arguments?

Why Obviousness Rejections Are Now Common

Although I don’t like a lot of the logic the USPTO uses to come up with obviousness rejections, I admit that I see the basic problems stimulating the move to more of these rejections, which is basically that a lot of patents — particularly software patents — have been issuing based on some pretty predictable combinations of already-existing elements.

Take, for example, a user interface comprising a dropdown box for a first selection combined with a radio check box for a second selection.  A purely invented example, but the kind of thing you see all the time in software patent applications, a combination of a set of pretty stock elements to make an overall invention.  How patentable is this really?  Was it so incredibly innovative to combine a dropdown box with a radio check box, so much so as to deserve about 20 years of exclusivity?

I think the answer to the above is clearly not; the problem is that there’s no easily defined dividing line between the mere combination of known elements and the entirely non-obvious combination of these elements, especially in a world where there are so many known things that can be combined, at least in theory.  And although I admit that the US Supreme Court and the US Patent Office have developed various intellectual constructs for determining the cutoff, I remain to be convinced that, when it comes right down to it, any of that prevents the (non-obvious) baby from being thrown out with the (obvious) bathwater.²

Some Thoughts on How to Argue Against Obviousness Rejections

Given the above, the question becomes how to argue against these sorts of obviousness rejections.  At first you might think that it’s just a matter of pointing out the non-obviousness of the exact configuration of elements, in this case, the exact configuration of duck + jet.  So you could argue that there are many ways of combining a duck with a jet engine, for example the two below:  

And, your argument would continue, given the superabundance of such potential configurations, the particular combination obtained that successfully produces a jet-powered duck is entirely non-obvious.

To which our hypothetical Examiner would probably reply “yes, but even given a large number of potential configurations, it would be well within the capacity of one of ordinary skill of duck arranging to obtain the claimed configuration by mere routine experimentation.”  And, therefore, the combination is still obvious.

Hmmmm. what to do?  One of the best strategies these days seems to be to make clear the unexpectedness of the combination, assuming of course that such unexpectedness exists.  You can see how the logic works: in an art like software, the combination of well-known and simple elements like a dropbox and a radio click button will always produce the same predictable results.  On the other hand, even in some areas of software (the more complicated the better) and certainly in the chemical and biological arts there are a lot of situations where no amount of routine experimentation reveals the working combination(s); rather, it’s a matter of trial and error, of unexpectedness.

Here’s an only slightly absurd example of the above.  Consider the following claims:

1. A bird-propulsion system comprising a bird and a jet engine, where the jet engine provides propulsion to the bird.

2. The bird-propulsion system of claim 1, where the bird and the jet engine are mechanically linked by a linking means.

3. The bird-propulsion system of claim 2, where the rear-end of the bird is joined to the proximal end of the linking means, and the front tip of the jet engine is joined to the distal end of the linking means.

4. The bird-propulsion system of claim 3, where the bird is genetically engineered to have graphene-based bones capable of handling the forces imposed on these bones by the propulsive forces generated by the jet engine.

5. The bird-propulsion system of claim 4 additionally comprising fire-retardant feathers.

6. The bird-propulsion system of claim 5, where the fire-retardant feathers are selected from the group consisting of fire-retardant coated feathers and feathers genetically engineered to be fire retardant.

7. The bird-propulsion system of claim 6, where the feathers are genetically engineered to be fire retardant.

8. The bird-propulsion system of claim 7, where the genetic engineering comprises overexpressing ____.

Okay, take a breath!  Now, claims 1–3 are increasingly narrowed claims, where we hope that the specific configurational limitation of claim 3 will be enough to overcome an obviousness rejection.  Of course given general knowledge of how ducks fly and jet engines run, it’s going to be pretty hard to argue that this particular configuration is non-obvious.  So we also have more clever innovations that also happen to be complex — and complexity always makes for a good argument for non-obviousness, especially because complex systems tend to offer up unpredictable results.

The first of these innovations is that the duck³ is genetically engineered to have graphene-containing bones; graphene is the new wonder material, it confers incredible strength, so incorporating it into bones should robustify enough to go … supersonic!

But perhaps our Examiner will say that the use of graphene is obvious, since this is a known material of known superlative strength.  So claims 5–8 add in fire retardant feathers; and our hope is that, by the time we get down to claim 8’s genetically engineered feathers — where the overexpressed protein was a completely unexpected result — by this time there’s so much unobvious stuff going on that the Examiner will allow something.

If I were inclined towards temperate behavior, I’d cut my losses and conclude at this point.  But given that this is a soliloquy on ducks, I feel duty bound to add the following reference from popular culture⁴ which, upon rereading in light of the above discussion, ends up no more nonsensical than some of what’s going on in obviousness rejections these days.

BEDEMIR:  Quiet, quiet.  Quiet!  There are ways of
          telling whether she is a witch.
CROWD:    Are there?  What are they?
BEDEMIR:  Tell me, what do you do with witches?
VILLAGER #2:  Burn!
CROWD:    Burn, burn them up!
BEDEMIR:  And what do you burn apart from witches?
VILLAGER #1:  More witches!
VILLAGER #2:  Wood!
BEDEMIR:  So, why do witches burn?
          [pause]
VILLAGER #3:  B--... 'cause they're made of wood...?
BEDEMIR:  Good!
CROWD:    Oh yeah, yeah...
BEDEMIR:  So, how do we tell whether she
          is made of wood?
VILLAGER #1:  Build a bridge out of her.
BEDEMIR:  Aah, but can you not also build bridges
          out of stone?
VILLAGER #2:  Oh, yeah.
BEDEMIR:  Does wood sink in water?
VILLAGER #1:  No, no.
VILLAGER #2:  It floats!  It floats!
VILLAGER #1:  Throw her into the pond!
CROWD:    The pond!
BEDEMIR:  What also floats in water?
VILLAGER #1:  Bread!
VILLAGER #2:  Apples!
VILLAGER #3:  Very small rocks!
VILLAGER #1:  Cider!
VILLAGER #2:  Great gravy!
VILLAGER #1:  Cherries!
VILLAGER #2:  Mud!
VILLAGER #3:  Churches -- churches!
VILLAGER #2:  Lead -- lead!
ARTHUR:   A duck.
CROWD:    Oooh.
BEDEMIR:  Exactly!  So, logically...,
VILLAGER #1:  If... she.. weighs the same as a
          duck, she's made of wood.
BEDEMIR:  And therefore--?
VILLAGER #1:  A witch!
CROWD:    A witch!
BEDEMIR:  We shall use my larger scales!
         [yelling]
BEDEMIR:  Right, remove the supports!
         [whop]
         [creak]
CROWD:   A witch!  A witch!
WITCH:  It's a fair cop.

1. Admittedly usually in the somewhat bloodier context of Aves frappe.
2. This is especially true in light of the fact that it’s very easy to make an obviousness rejection, much easier than making a novelty rejection, where a single reference must contain all the elements of the invention.  Given this fact, why wouldn’t a time-strapped Examiner make more and more rejections based on obviousness rather than lack of novelty?
3. Actually bird; I’ve made these claims generally applicable to any kind of bird, not just ducks.  Not sure how well this will work for hummingbirds, but given the willful suspension of disbelief required to accept a duck + a jet engine, a hummingbird + a jet engine isn’t really that much more of a stretch, is it?
4. Monty Python, to be precise.  If you don’t know Monty Python you probably ought not be reading my posts, as the bases for much of my logic may be rather opaque.

In order to proceed further, we have to step back for a moment and revisit our exploration of patents; specifically, we need to look in more detail at what a patent actually is.

And I don’t mean that in any philosophical sense; for this exploration is about  understanding a patent in the same sense that you want to understand a fish that you’re about to eat: what are its parts; which of those parts taste good; and, of course, can we infer from all this intimate ichthyological information how to find other good fish to eat, so we’re not stuck eating bottomfeeders ad infinitum?

All The Parts

At the most fundamental level a patent consists of two parts: the claims; and, everything else.  This dichotomy is easily understood, in that the part of the patent that has direct legal effect is the claims, which define the scope of patent protection; all else is used in interpreting the claims.

The claims of the patent are found at the end; I once heard an amusing story told by an academic researcher who was told to review a number of patents relating to her work before meeting with a number of very rich investors, and how she dutifully spent all night trying to read several hundred pages of patent jargon only to discover that, when they said “read the patents,” what they actually meant was “read the claims” — which are of course at the end of any patent document.  So when reading a patent, the meaty part — the claims — is at the end.

So what do claims look like?  Here’s a cooked-up example:

1. A fish comprising: a head; one or more gills; a body; one or more fins; and, a tail.

What this claim means is that we have a thing — in this case a fish — which has at least five elements: 1) a “head” (whatever that is); 2) at least one “gill” (whatever that is); 3) a “body” (whatever that is); 4) at least one “fin” (whatever that is); and, 5) a “tail” (whatever that is).  In general the fact that the thing is called a “fish” doesn’t mean much of anything, this “preamble” part of the claim (that is, the part before the colon) is usually just a placeholder for the actual definition that follows, although in some unusual cases the preamble gets rolled into the definition of the claim.¹

On the other hand, the use of the word “comprising” is very important — a claim using this word is considered an “open” claim, since “comprising” means “the following list of elements, but there could be more elements than are just in the list.”  So “A thing comprising elements 1, 2 and 3″ could be a thing of just those three elements, or a thing of more than those three elements — that is, an open set.  However, a claim like “A thing consisting of elements 1, 2 and 3″ can only refer to a thing with just those three elements — this use of the major words “consisting of” results  in what’s called a “closed” claim.²

Fine, preamble, open versus closed.  Got it?  Now on to the delineated elements themselves — in the example claim there are five elements, head, gill, body, fin, tail.  These elements are self-evident, right?  We all know what a fish’s head, gill, body, fin and tail look like?

Well not necessarily.  Blind cave fish may not have eyes, for example, so should “head” automatically mean a head with eyes, without eyes, or both?  All the specifically fishy bits are generally clear — gills, fins, tail — but those fishy bits are very different in different fishes,³ so what does the claim mean when it uses each of these terms?

And don’t even get me started on “body.”  Clearly the claim is referring to some sort of structural member, but is it just a lump that the head, gills, fins and tail go into, sort of like the potato in Mr. Potato Head?  Or does the body do other things?  And even if it’s a Mr. Potato Head type of body, what’s the spatial arrangement in which the head, gills, fins and tail go into it?

I could go on (and, obviously, on), but the above is probably enough to give you more of a taste than you wanted of what it’s like to be a patent agent or attorney.  And also — I hope — a sense of how the elements of any particular claim work.  Specifically, they are words or combinations of words, that usually have some sort of common meaning, but that can be slippery enough in that meaning that there’s room for doubt in interpretation — something that should be avoided at all costs in a patent (unless of course you explicitly want to leave wiggle room, which is a strategy that I won’t discuss now).

The way of clarifying the words is by means of the “specification,” which is everything in the patent that isn’t the claims, and which commonly includes the text and drawings (although drawings aren’t required in a patent document).  So for example let’s say that we had the following:

1. A fish comprising: a head; one or more gills; a body; one or more fins; and, a tail.

… “Body,” as used herein, refers to the portion of the fish that is intermediate between the head at the proximal end and the tail at the opposite distal end, and that serves a number of purposes, including acting as the point of attachment/integration of the gill(s) and fin(s).  Fish bodies may be rounded or flat (e.g., for the flat-fishes such as the flounder), they may be covered with scales of various types and compositions, mucous, etc.  Examples of various bodies explicitly contemplated in the present invention are provided in figures 1–42 …

where the second paragraph is taken from the text of the patent.  Now you can see how the “everything else” portion of the patent — in this case the text and drawings — help with the interpretation of the claims.

The Good Bits

So how does this rather long explication of a patent’s two fundamental components — 1) the claim or claims, and 2) everything else — help us understand what’s particularly important about a patent, what part(s) ought be carefully scrutinized and what part(s) can be safely glossed over?

Part of the answer is that it depends upon why you’re looking at the patent in the first place.  If you’re looking at it as a way of determining possible infringement, you start with the claim(s).  If you’re trying to get a capsule summary of what the patent protects, once again the claims are the usual place to start.

If, on the other hand, you’re trying to get a broader sense of what kind of protection is being granted for a particular technology area, and what the state of the art is in that area,⁴ then you’ll probably find less value in the claim(s) — which are, after all, in some sense a separate summary language of what’s in the document as a whole — and more value in a review of the entire document.

“De gustibus non disputandum est” as the Romans used to say — there’s no right or wrong in matters of taste.

Finding Other Fish (Patents)

Perhaps surprisingly, “De gustibus …” is less applicable when you’re using a particular patent or patent application as an entry point for patent document searching.  In searching you want to use both the claims and the specification; but since each is written in a somewhat different language, how you use each section is different.

This should be somewhat intuitively obvious from the simple fact that the claims represent a condensation down of what’s written in the specification; the claims have a conciseness that the specification doesn’t have.  So let’s say you’re doing a keyword search based on keywords that you pull from the claim(s) versus keywords that you take from the rest of the patent document (the specification).  The claims may be the perfect place to get useful keywords because they’re so condensed that the words in the claims might tend to be the really important ones, whereas the specification might have enough other stuff in it that it’s hard to select useful words from it.

For example, the specification might talk broadly about a new invention for changing lightbulbs, in which case it would probably use words like “lightbulb,” “incandescent bulb,” “fluorescent bulb” etc.  Those are good words, but if you searched them you’d find patents that are more likely to be about lighting itself than about changing the lights.

On the other hand, our hypothetical lightbulb changing patent application (or issued patent) would probably have claims that talk about — at the very least — burned out bulbs, since that’s the essence of a lightbulb changing apparatus right?  And so if we used keywords like “burned out lightbulbs” and searched for that in the claims only, we would be much more likely to pull out on-point patents and patent applications relating to changing lightbulbs rather than making them.

On the other hand — there’s always an “on the other hand” isn’t there? — an invention on lightbulb changing might have claims that are very detailed in their description of the changing apparatus itself, and they might say very little if anything about the fact that the apparatus is for changing lightbulbs.⁵  Such claims would be much less likely to contain “burned out lightbulb” type keywords, and would therefore be harder to find if you were searching those terms or — in terms of keyword selection — would be misleading if you picked keywords from them based on their claims.

So there’s always a balance to be struck between picking keywords from the claim(s) versus from the specification; and searching keywords that occur only in the claims, while useful in terms of limiting down the number of hits, often fails to pick up documents that are relevant.

Clear enough?  Perhaps, but once again the best thing to do is to give some examples.  Stay tuned for the next post, where I’ll do just that.

1. In US patent law this happens when the preamble, for example, “breathes life and meaning” into the claim.
2. This discussion is, as usual, USA-centric.
3. A bit of pedantry: “fish” is either a single fish or multiple fish of the same species, whereas “fishes” refers to more than one fish of different species.  So fish have more or less the same bits (apart from natural variation and subtractions of parts by accidents), whereas fishes — being different species — likely have different bits.  More than you wanted to know, I’m sure.
4. Note that patent documents don’t become public until at least 18 months after their earliest filing date.  Thus no matter how thoroughly you look at issued patents and published patent applications, you’ll never see documents still within this 18 month window.
5. Remember that the preamble doesn’t usually get rolled into the meaning of the claim, so the precise language of the preamble can be rather wiggly (an IP person’s term of art).

Despite various paranoid theories to the contrary, patent offices are only infrequently omniscient.  On the other hand, they certainly do know how to search, and one of the first things they search for is art that the inventor or inventors themselves have produced — so don’t be surprised if that art is cited against you when you file a patent application.  Although this is most commonly a problem for people who publish, including particularly academics,¹ “publication” actually has a more general meaning of publicly disseminated documents, including (to pick a few random examples): sales documents, public presentations (slide shows), marketing materials, etc.  In pre-internet days these materials probably wouldn’t turn up in the searches that patent offices did; now, however, it turns out that patent Examiners know how to google as well as search their own databases, and so such documents are fair game.

The reason I bring this up is that the inventor is usually her own worst enemy when it comes to patenting; most people like to talk about what they’ve been working on, and patent offices may not be omniscient about plain old talk,² but omniscience comes easily when all that’s required is an internet search for previous documents.  This breaks down into a lesson in disclosure for the inventor(s), and a lesson in diligence for the investor(s).

Disclosure

For the inventor, the operative term is “disclosure,” by which I mean being honest about what you’ve published and talked about in the past, honest primarily to yourself and your investors, but also honest with the patent office(s) — which are likely to find out anyway.

In this regard, I understand that inventors are usually forward-looking, and tend to see what they’ve published or talked about before as “merely old hat,” or some such irrelevant stuff, unlike what they’re now seeking money and patents on.  But patent offices don’t see it that way: I’ve already talked about lack of novelty and obviousness, and the most graphic way I could put it is to say that patent offices don’t usually see an invention as springing Athena-like from Zeus’s head.

No indeedy.  So if you’re the inventor, you need to sit down and honestly review your prior publications and other public disclosures, or, better yet, accumulate them and then take them to either your technology transfer office (if you’re an academic) or a patent agent or attorney.  And when I say “your” publications and disclosures, I also mean the people who work for you or with you who might also have published or presented — for example, graduate students and postdocs.  And those pesky poster presentations or abstracts that you or your students or coworkers got all fired up about for the First International Conference on Biotechnological Methods in the Pan-Zoroastrian Republics — with the internet and a little computerized translating, those short disclosures might be relevant too, and you need to consider them.

Also, as an inventor you have a duty to disclose relevant publications to the patent office, and patent rights can be lost if you breach that duty.  So disclosure is a necessity for that reason as well.³

Diligence

Like herrings and wolves and other such creatures, inventors do not usually operate alone; and, if you are an investor or other person operating in conjunction with an inventor or inventors you owe it to yourself to be exceedingly diligent about what public disclosures the inventor may have previously made that are either: 1) perilously close to the invention(s) you’re investing in now; or, 2) are close enough that they will be problematic for patenting.

What this means is — to put it in the words of a former president — “Trust, but Verify.”  Take the name or names of your inventor(s) and do what the patent offices will do: look up those inventors in the scientific literature, patent literature and using google or whatever search engine you favor, and see what they’ve published or otherwise disclosed that falls within the ambit of the invention(s) that you’re working to commercialize.  It may not be easy to find that problematic abstract on “DNA Testing of Tarim Mummies: Evidence for Tocharian Group Proto-genes Conferring Resistance to Auto-Combustion and their Relevance to Zoroastrian Rituals on the Silk Road — A Metasurvey” that appeared in that conference seven years ago, but abstracts have a way of cropping up in places you can find them,⁴ and the sooner you know what’s out there the sooner you’ll be able to get a sense of what the patent offices might cite against you.

And keep in mind that the resources of law firms and technology transfer offices are hardly infinite, and that it’s up to you to do your own homework, rather than relying on someone else to tell you that there won’t be inventor-related documents that will affect the invention you’re interested in.

Conclusion

I realize that it’s not especially sexy to look through old documents when thinking about an exciting new discovery.  But I can’t say how many times a little bit of that sort of looking went a long way in terms of finding out things that should have been learned before a patent application was written or licensed.  If Gandalf had done his diligence in Gondor early-on, the Ring would long since have left the Shire.⁵  Admittedly that wouldn’t have made for a good set of movies,⁶ but it would have made for sound patent strategy.

Which is, after all, what these posts are ostensibly about.

1. People who Publish Profligately.
2. Talk tends to be lethal later on, when the validity of a patent is litigated, a situation where there are highly-interested parties involved who have the time and money to dig up people who can recount what was said publicly years before.
3. It’s beyond the scope of this article to go into further detail about the duty of disclosure, which is actually an art in-and-of-itself, in that this duty in some cases is taken by patent professionals to be evidence weighing against doing searching — you can’t be in breach for failing to disclose stuff that you didn’t know about.  I’ll leave this discussion to a later posting.
4. For an academic inventor, looking at their website or CV is a great way to start.
5. Hey, that’s at least as quotable as “Listen, strange women lying in ponds distributing swords is no basis for a system of government,” and look how far that one went.
6. “‘One Ring’ Goes Uneventfully Into the Fire; No Sequels.”

In my previous post I discussed keyword, classification and ambient knowledge searches, and promised to provide a concrete example, specifically an example of a USPTO search.

So let’s get right down to it, using as our example US patent number 7,062,800, titled “Plunger.”  US patents and patent publications are conveniently accessed at Google Patents (www.google.com/patents) or any number of other sites; my favorite is Free Patents Online (www.freepatentsonline.com), which conveniently offers access to a good variety of non-US patent documents, and which also has a number of search features that I use quite regularly.  Although you can follow along with the html version of this patent, it’s usually more useful to obtain a .pdf, or otherwise obtain access to some form of the patent document that provides the drawings.

Once you’ve gotten US7,062,800, look on the front page until you find the application number — in this case 10/808,096.  What we’re going to do now is to use the USPTO’s  public Patent Application Information Retrieval (public PAIR) system to download all¹ of the documents that have passed back and forth between the applicant for this patent and the USPTO during the course of examination of this patent — that is, during the “prosecution” of this patent application.  In order to accomplish this feat, go to http://portal.uspto.gov/external/portal/pair and enter the appropriate words in the CAPTCHA box; assuming you’ve been lucky enough to be able to correctly read the gibberish present therein, you should then be able to search for the application number by leaving that radio button for that option selected (it’s the default option) and entering the number as an unbroken string of numbers, in this case “10808096” (but without the quotes).

Once you’ve run the search, you should get a “Bibliographic Data” page with a number of tabs across the top.  Click on the “Image File Wrapper” tab, then click the check box immediately to the left of the blue “PDF” button at the top of the rightmost column, and then click the blue “PDF” button itself to save the complete prosecution history.²

You’re almost there.  Open up the downloaded .pdf and go to page 52, where you’ll see a “Search Notes” form, and on it an indication that the Examiner in this plunger case searched for earlier patent art is US class 4, subclasses 255.01, 255.05, 255.08, 255.11 and 255.12.  This makes perfect sense since you can search for class 4 (at http://www.uspto.gov/web/patents/classification/) and find that it corresponds to “BATHS, CLOSETS, SINKS, AND SPITTOONS,” with subclass 255.1 corresponding to a subclass of class 4 titled “OBSTRUCTION REMOVER,” subclass 255.05 to a subsubclass of 255.1, directed to “With Force Cup (e.g., a plunger),” etc.

That’s an example of classification searching.  Now go to page 11 of the .pdf and you’ll see that the Examiner performed a second search later on in prosecution, in which he updated his earlier search (this time skipping 4/255.080); if you go to page 12 of the .pdf you’ll see that there are now also keyword searches, which have been run in the USPTO’s proprietary EAST search system.³  I’m not going to cover the syntaxis of these searches, but a cursory look should convince you that it basically involves proximity searching for multiple keywords, often with stemming thrown in.

That same cursory look should also convince you that there’s nothing especially spiffy⁴ in what the USPTO does, nor indeed is there any spiffyness manifest in the computerized search systems of any of the other worldwide patent offices.  However, despite the same basic approach, there’s a lot to be learned from looking at the search methodologies that patent offices use — and, if you have a patent application in prosecution, at the specific searches your Examiner or Examiners have been using.

Quite truthfully, I always find it very sobering to look at patent office searches, particularly keyword searches, because they remind me of the extent to which art is cited based on choice of keywords.  And keywords, to continue the “choice of nets” theme, are not nearly as easy to pick as people usually think.

But that’s a topic for another post.

1. Apart from copyrighted articles, which are not downloadable in this public PAIR system in order to prevent copyright violation.
2. Again, apart from copyrighted documents.  You may also find that file history information is not available for older serial numbers.  Also, be aware that the USPTO does not certify its electronic prosecution history files; if you want a certified file wrapper you have to order it.
3. Public training is available for this system as well as the WEST system; see http://www.uspto.gov/products/library/search/#heading-3
4. A patent attorney term of art.

I previously provided a quick overview of patenting, and specifically of patentability, freedom-to-operate (FTO), and the importance of searching — especially patent searching — in both of those processes.  As I pointed out, in determining whether or not you pass the legal barriers to getting a patent (patentability), a government patent office such as the USPTO is going to search the “art” out there, including literature references, published and issued patents, etc., to see if your invention is (among other things) “novel” and “non-obvious” in light of that art.  And as I also pointed out, understanding your FTO requires an understanding of the issued and also published patents in whatever country or countries you’re planning to make, sell or use your particular commercial process.  And, as I finally noted, you should treat everything I said as only a preliminary introduction to a complex process, and you should seek out a patent professional’s opinion before making any irrevocable decisions that might effect your putative patent rights or your possible infringement of the patent rights of others.¹

In light of the above, it should be abundantly clear that searching — including but not limited to patent document searching — is critical to patentability and FTO issues.  Since the title of this post is “Catching Patents (101),” you can and should reasonably conclude that what I’ll be talking about here is an introduction to patent searching (the “101”), but that this is only an introduction.  Since this is an introduction, let’s do the 101 thing and start with a concrete example.

Keyword Searches

A concrete example?  Yes.  Literally.  No, really, I mean literally.  How literally?  Go to the USPTO’s search site for issued patents (http://patft.uspto.gov/netahtml/PTO/search-bool.html), and type the word “concrete” in the TERM1 box and hit “search,” that’s how literally.  As of this moment that search retrieved … 121,597 issued patents; that’s a lot of patents, although given a) there are currently over 8 million issued US patents, and b) concrete is probably a pretty important area for patenting, it’s perhaps not as amazing a number as you might think.  By contrast, a similar search, but for the term “aardvark” turned up (as of this moment) only 118 issued patents, very few of which seem to be directly related to the animal.  US6,892,622, for example, is titled “Anti-mine Unit,” and refers to aardvarks only in the context of the company “Aardvark Clear Mine Limited;” not very interesting, but then again I wouldn’t have expected to find the aardvark — or Orycteropus afer for the taxonomically inclined — to be a hotbed of patenting activities.

So much for a first search.  We learned that concrete is hot and aarvarks are not.  Anything else?  Well, actually, a number of things.  That aardvark search — a quick scan down the first 20 or so entries doesn’t indicate any aardvarks the animal, which means that “aardvark” quite possibly isn’t a very good keyword if you want animal aardvarks as opposed to all the oblique references that we actually got.  Let’s try “Orycteropus afer” and, when that doesn’t work (it didn’t for me anyway), let’s just try “orycteropus.”  Still nothing.  Perhaps there are no aardvark the animal patents at all.  Or, to go back to the first post, perhaps we’re still not using a well designed search net to find them.

For the moment we’ll leave the question of whether aardvarks the animal exist in any of the patent databases; the important point here is the dilemma of knowing whether we found nothing because there is nothing to find; or, instead, whether we found nothing because we didn’t do a very good search.  Or, to be more specific, whether we did a good keyword search, because that is, after all, the kind of search we performed, and it’s important to understand that there are other kinds of searches that can be done.

What other kinds of searches?  Well, in addition to keyword searches, there are classification searches and what I’ll refer to as ambient knowledge searches.  These two topics are important enough that I’ll spend the rest of this post briefly discussing them.

Classification Searches

In this age of search engines it’s hardly surprising that the kind of searching we first think of is keyword searching, with “aardvark,” “Orycteropus afer” and “orycteropus” being three examples of keywords.  However, surprising as this may seem, at one time there were no computers; and, even after that, for a good long time computers weren’t ubiquitously used for searching.  But on the other hand patent systems have been around for a long time — the US patent system was started by George Washington on April 10, 1790 for example,² and according to Wikipedia patents date back to 500 BC, in, of course, ancient Greece.³  So up until recently people weren’t searching based on keywords; instead, they were searching based on systems of classification.

When I was at University, I made various futile attempts to create my own systems of classification;⁴ by graduate school I had pretty much given that sort of thing up.  The same cannot however be said for the various patent offices; the International Patent Classification (IPC) system, for example, has about 70,000 categories,⁵ while the USPTO has 450 classes and 150,000 subclasses.⁶  There are a number of helpful guides to using these classification systems,⁷ but a simple hands-on example will capture the essence of the process.

To that end, go to www.uspto.gov/web/patents/classification/ and, in box C (“Search USPTO”), with “look in” left at “Patent Classification,” search for the word “concrete.” While over time the results may vary, as of this writing this search brings up two hits. Click on the first one and search for occurrences of the word “concrete” and you’ll see variuos hits which give you a sense of classification — but on the other hand things still seem a bit discordant.

That’s fine, no one said classification system searching was instantaneously illuminating, so go back and re-run the same search, but this time with “look in” set to “Index to Classification.”  Click on the first hit, and search for the word “concrete,” and you should find an entire index category for concrete, with a lovely conceptual index depending from that term, a whole cornucopia of categories that give insight into how to find various patent references in the database that might never have come up via keyword searching.⁸

Ambient Knowledge Searches

I have to admit it: I don’t use classification searches nearly as much as I ought.  The ought part is straightforward enough: not only are such searches highly illuminating of possible patents and patent publications that might be relevant to patentability/FTO,⁹ but patent offices use their classification systems in determining whether there is patent art that makes an application for patent not-novel, obvious, etc., and so understanding how various patent offices do searching will help you in getting some estimation on the kinds of rejections you’re likely to get if/when you apply for a patent.

But I’m fundamentally lazy; or, perhaps, I tend to work in IP areas where classification isn’t as useful.  Thus one of my specialty areas is biotechnology, and my own feeling is that cutting-edge biotech inventions tend to fall outside the logical confines provided by classification.  Whatever the reason, I don’t use the classification systems as much as I should.

Or at least I don’t at first — instead, what I do use is ambient knowledge searching and keyword searching to define up a corpus of information that, with luck, gives me a sense of what classification(s) I might look in.  So how does all that work?

Ambient knowledge is the term I use to describe the jumble of information about a particular subject area that we gradually accrue by reading about that subject, thinking about that subject, researching that subject, picking through stuff about that subject.  It’s not a methodical collection of information; but the information grows nevertheless.  And the resulting pile of knowledge provides a huge entry point into designing patent searches.

So again let’s give an example.  Let’s say we suddenly realize we misremembered the name of our favorite “A” animal — it’s not, after some reflection, “aardvark” but instead “armadillo.”  And this sudden insight came when watching “Arthur,” and we realized that, much as we love the Reed family of Aardvarks, those weren’t in fact the animals that our favorite aunt has stuffed copies of all over her bookshelves.  Ambient knowledge strikes.

We search the USTPO classification index for “armadillo” and find … nothing.  And then we do a keyword search for “armadillo” and find almost 1200 hits, some of which are to stuffed toys but some of which are pretty clearly to the actual animals. Now why should aardvarks warrant little if any scientific study when so much attention is apparently paid to the biology of armadillos?  Are armadillos charismatic megafauna when aardvarks are not?¹⁰

Ambient knowledge to the rescue.  Years ago I came across a fascinating article on how armadillos are one of the few animals that can be used to study leprosy.¹¹  So the likelihood is that armadillo biology is studied because these animals are a model system for a horrible human disease, and I could focus my search on that topic by searching for both “armadillo” and “leprosy.”

Furthermore, with better recollection I might actually remember the names of the people doing seminal work with that model system, and I could use that ambient knowledge to search just for patents to those people.  And, having done so, I could look at the cover page of each of those patent applications or issued patents — where the classification numbers for those documents are listed — and see if they have any classification numbers in common.  And any of those non-keyword searches would very likely add considerably to my ambient knowledge of the subject, making my searching better, and thereby giving me better insight into patentability (if I’m doing leprosy work for example) or FTO (if I want to see if there are any patents out there on armadillos and leprosy that I need to be wary of for infringement purposes).

So in a nutshell catching patents is as important as catching fish; and keywords aren’t the only way to troll the patent document seas.  The topic is important enough to warrant a real example — as interesting as aardvarks and armadillos are.  Stay tuned for the next post, where I’ll delve briefly into an actual USPTO search, again on the principle that examples are worth more than exegesis.

1. And also, please do read the Disclaimer
2. See www.uspto.gov/news/pr/2002/02–26.jsp
3. See en.wikipedia.org/wiki/Patent
4. I distinctly remember attempting to do that sort of thing in my organic chemistry classes with various ketones, aldehydes, ethers, esters and so on; the results were spectacularly unsuccessful.
5. See www..wipo.int/classifications/ipc/en/
6. See /www.uspto.gov/patents/resources/classification/
7. See, e.g., www.uspto.gov/web/patents/classification/help.htm
8. The index class/subclass entries are themselves clickable, and will take you to pages where you can bring up all the currently published or issued US patents with that class, subclass etc.
9. And I should note that, although this discussion is USPTO-centric, classification searches in Rest-of-World IPC classifications are just as useful.
10. A term coined by Richard Lewontin; see, e.g., en.wikipedia.org/wiki/Charismatic_megafauna
11. My ambient knowledge is much more the beachcomber’s accumulation of random fragments of shells and crab claws and driftglass and other bright shiny objects than it is coherent or consistent.  And what I find “fascinating” is probably equally idiosyncratic.  Well, in the words of the famous sailor, “I yam what I yam.”

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.

Patents

 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

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

Novelty

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.

Obviousness

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.

Freedom-to-Operate (FTO)

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.

1. See www.uspto.gov
2. See www.cipo.ic.gc.ca
3. There are many good discussions of patent basics; see, for example the USTPO website at www.uspto.gov/patents/index.jsp
4. 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
5. And, conversely, worthless if there are easy workarounds.
6. 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.
7. See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/2100_2106.htm
8. Although these topics are quite fascinating, I do not discuss them here.
9. See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_102.htm#usc35s102
10. Again, this is a thumbnail sketch of the novelty requirement, and should not be relied on in reaching any legal conclusions.
11. 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.
12. See, e.g., www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm#usc35s103
13. 550 U.S. __, 82 USPQ2d 1385
14. See www.supremecourt.gov/opinions/06pdf/04–1350.pdf
15. See, e.g., /www.uspto.gov/news/pr/2007/07–43.jsp
16. Again, this post is focused on law in the USA rather than the ROW.
17. Which has relatively nice Rhinemaiden-like connotations, a sort of Brünnhilde-in-patent-garb visual effect.
18. An anti-Kirk connotation, as it were.
19. 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.
20. Published patents can have certain latent rights that affect FTO; see note 4 above.

A Short Fable For Our Time¹

Once upon a time there was a small kingdom that had recently been started in what the land-brokers swore was an “always green and fertile countryside with great promise of future fecundity.“² The people moved in, saw the green fields, and rejoiced. They appointed a king, who looked at his subjects, who he loved dearly and who he was sure loved him the same way, and at the land, which was green and lush. And the new king, considering his prospects — including where he had previously been king³ — was filled with as much joy as his people.

And then — as always seems to be the case in historically-accurate recountings such as this one — bad things happened. Specifically, the rains that had kept the fields lush suddenly stopped falling. And the crops withered and died. And all mercantile exchange with other new small kingdoms ceased, as did the hope of ever getting into the good graces of a really large, really rich kingdom which would otherwise have been impressed at how quickly the small kingdom of our story had grown.

The children cried and the people went to the king and demanded to be fed, now. And the king did what kings always do, he put the squeeze on his Profoundly August Advisers, who did what such advisers always do, which was to put the squeeze on the Slightly Less Than Profoundly August Advisers, and so on down the line until they came to Someone Who Actually Knows Things, who, upon squeezing, said, “why not go fishing?”

And that’s what they did. At the personal direction of the Someone Who Actually Knows Things a great fleet was built and fisherpeople⁴ were brought in to person⁵ the boats and provisions were laid in and so on. In fact the Someone Who Actually Knows Things pretty much ran the show until almost the very end, when he got a bad head cold, so the only thing he didn’t do was supervise the construction of the nets. Which was considered so important a task that the king’s own Profoundly August Advisers oversaw their design and construction themselves.

In short order the fleet was launched to much cheering and rejoicing⁶ and went sailing out of the main harbor of the kingdom. Ten days later the fleet came back. With absolutely no fish … not a single sardine.

So the king immediately did the kingly thing and called on his Profoundly August Advisers to blame them for what happened.⁷ And, being on the hook, they in turn immediately called on the Slightly Less Than Profoundly August Advisers and blamed them, and so on down the line until all the blame had been heaped at the feet of the Someone Who Actually Knows Things.

And that humble personage, standing in front of the assembled crowd of the king and his descending ranks of hundreds of advisers⁸ said, “I did everything but oversee the nets, and I stand by my work.” And he stared quite hostilely at the innumerable ascending ranks of kingly advisers,⁹ the most ascendant of whom said, “We are the Profoundly August Advisers to the king, and we designed the nets, with the utmost erudition and with the recognition that, with our design, our illustrious fleet would collect the plentiful bounty of the seas, the fishes of the deep, for the glory of your majesty.“¹⁰

And since it was quite clear that the seas were full of fish whereas the nets were not, the king went on to ask the Profoundly August Advisers exactly what design criteria they’d used for the nets. “Well, your majesty” the Profoundly August Advisers said, “we looked at the nets the common fisherpeople use and saw that the openings are very small, so that vast numbers of small and undignified fishes such as anchovies and smelt and cuttlefish and so on are caught. And, your majesty,” they continued, “being Profoundly August Advisers we knew immediately that the plenitude and abundance of the seas could best be harvested for your majesty far better by discarding such insignificant fish and catching whale fish instead. And so we re-designed the nets to have enormous openings which would allow the small fry to pass through but would without difficulty ensnare the great whale fish, with which the people would be fed.”

The problem — as you, being something other than a Profoundly August Advisor, already no doubt well know — is that, like most seas, those around the kingdom were loaded with insignificant fishes like cuttlefish and anchovies and smelt and so on, whereas as for the magnificent whale fish … not so much. So the king, having had similar experiences with the Profoundly August Advisers in his previous gigs,¹¹ sighed, immediately had all of his Profoundly August Advisers executed,¹² and, at the direction of the Someone Who Actually Knows Things had the fleet refitted with normal nets, which brought in tons and tons of smelt and anchovies and cuttlefish, which weren’t much to look at but tasted quite nice. And, better yet, fed the kingdom, which went on to prosper and, eventually (after receiving a sufficiently high valuation), was bought by a much larger prosperous kingdom.¹³

Moral: A cuttlefish on your plate is worth ten magnificent whale fish in the sea.¹⁴

1. With a tip of my hat to James Thurber.
2. That’s how they really talked. Although they probably used the term “near-term great commercial success” instead of “future fecundity.”
3. A series of other startup kingdoms which hadn’t done so well — but that’s a story for a different day.
4. It was a very progressive kingdom where people were smart enough to know that both men and women are good at lots of things, including fishing.
5. Unfortunately, writing in gender-neutral form gets tediously non-euphonious.
6. And other things people inexplicably do when they’re desperate and have very little hope.
7. This is a standard technique for kings; see “How to Be a King: Lessons from Other Top Managers” if you want to learn more.
8. It is also standard for new kings to immediately appoint lots of advisors, as the book I’ve previously mentioned (“How to Be a King: Lessons from Other Top Managers”) makes quite clear.
9. They all had their own titles, much like the heavenly hosts of Seraphim, Cherubim, Ophanim, etc, but it would be tedious to repeat those titles here, so I won’t.
10. Yes, they really do talk like that. In fact they say a lot more and I’ve done you the favor of eliding over most of it.
11. Although apparently not having learned much from these experiences.
12. He did feel somewhat bad about this. But, after having read the management book for kings I referred to earlier, he’d concluded that — you know — a king is a king is a king is a king … (it was a very literary book).
13. Which went on to mismanage the entire property and eventually brought the entire edifice crashing down — but again, that’s a story for another time.
14. Whereas catching whale fish, while tempting, isn’t easy under the best of circumstances, even if it were politically correct.