New England Biz Law Update
In-house counsel are operating in an increasingly patent-conscious and technology-driven environment.
As such, in-house attorneys are likely to become involved in assisting their companies in determining whether a product or process is covered by the claims of a patent and, if so, whether that patent is valid.
This process is complex and can be somewhat daunting in the abstract. To assist in-house counsel in the process, a brief discussion follows of the rights that a patent conveys, a reason to take a good look at patents that are brought to your company’s attention, and a framework to help you and your company take the first steps in evaluating a patent.
Take A Good Look
A U.S. patent gives to the patent owner the right to exclude others from making, using or selling the inventions claimed in that patent.
Potentially relevant patents sometimes come to light as an unwelcome surprise from a patent owner.
Your company may have just brought a new product to the market. On the heels of this successful launch, a letter arrives noting the new product and bringing to the company’s attention a patent or several patents that just might be of interest.
Perhaps your company has a profitable, long-established product line. Out of the blue, the letter describes a potentially relevant patent that was only recently issued by the U.S. Patent and Trademark Office The underlying message is, “we think that you might infringing the patent.”
Sometimes relevant patents are found when a prior art search is conducted to determine whether patents exist that might interfere with the commercialization of a company product.
No matter how the patent comes to the company’s attention, if it appears to be relevant, it is important to evaluate the patent in light of the company’s product or process.
One reason to do so is to reduce potential damages in the event the company is eventually sued under the patent and determined to be an infringer. Knowledge of a patent could switch the company from a position of innocent infringement to one of willful infringement and subject the company to the possibility of treble damages and payment of the attorney’s fees of the patent owner. Treble damages can usually be avoided by a well-reasoned opinion of counsel as to why there is no infringement.
Patent Review
As in-house counsel, you will likely ask technical experts in the company to assist you and the company’s outside patent counsel in evaluating the patent in connection with products or processes of the company. The company’s technical experts participating in the evaluation process will have to gain a detailed understanding of the company product or process under review. They must also have or gain an understanding of the patent, what it discloses and what it claims.
A framework for helping your technical expert take apart and then evaluate a patent follows. On first review, a patent often seems more confusing and convoluted than it really is. To help unravel the mystery, the parts of a typical U.S. Letters Patent are described in the accompanying chart.
Your technical expert can focus his or her evaluation by keeping the details of the product or process in mind during dissection of the patent and by answering the following eight questions:
1. Is the patent technically correct? If the answer is no, be prepared to discuss the details as to why it is not.
2. Does the application disclose all details necessary to enable a person skilled in the art to make and use the claimed invention? If the answer is no, be prepared to discuss how the application is lacking.
3. Do you understand the problem solved by the invention disclosed in the patent and how the invention actually solves the problem? If the answer is yes, be prepared to discuss the problem solved and how it is solved. If no, be prepared to discuss what is lacking.
4. Are there any disadvantages that accompany the use of the invention disclosed in the patent that are apparent to you, particularly disadvantages that the company product or process overcomes? If the answer is yes, be prepared to discuss these disadvantages.
5. Are you aware of anything which would indicate that the claimed invention is not novel, or is a trivial modification of the “prior art,” or otherwise not patentable? (“Prior art” is all that is known before the invention. It is usually represented in patenting by earlier patents and other publications.) If the answer is yes, be prepared to discuss the details of what you think might render the claimed invention unpatentable.
6. Are you aware of any public use, sale or publication of the invention disclosed in the invention? If the answer is yes, be prepared to discuss the details of any such public use, sale or publication.
7. Are you aware of any “prior art” publications or uses that are relevant to the invention, particularly those publications or uses that predate the filing date of the patent application by more than one year? If yes, provide lists or copies of the publications. If a use, provide information on the use if available.
8. Please consider every way in which the company product or process is different from what is disclosed in the patent and be prepared to discuss these differences.
It’s important the technical person understands that “be prepared to discuss” means exactly that. A written technical analysis on these issues is not what you are looking for at this point in the evaluation process. Rather, you want the technical expert to be prepared to discuss his or her preliminary thoughts on these issues at a meeting with you and, if appropriate, patent counsel.
This preliminary analysis of the patent should lay an excellent foundation to work with patent counsel going forward to determine the company’s freedom to operate in view of the patent or patents under consideration.
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Anatomy Of A Patent
A patent includes a specification and claims. The specification is that part of a patent which precedes the claims. The specification usually includes: an abstract, drawings (optional), background of the invention section, summary of the invention section, description of the drawings section (optional), detailed description of the invention section, examples (optional), and claims.
The background section describes what others have done in the field and what problems have not been solved by this prior work, to provide a setting for the invention claimed in the patent. The summary of the invention section should give a broad overview of the invention, and provide a structure for understanding the detailed description and the claim sections of the patent.
Abstract
The abstract of the invention is found of the first page of the patent and contains a very brief description of the invention. It does not define the legal coverage of the patent.
Drawings
Drawings are optional but are often present in software and business method patents.
Background Of The Invention
This section describes the state of the art in the particular technical area to which the patent relates and what problems remain to be solved or disadvantages accompany the prior art solutions.
Summary Of The Invention
The summary of the invention describes the invention overall, e.g., the purpose of the invention, problems solved, advantages offered, and so forth.
Detailed Description Of The Invention
This section describes in detail what the invention is and how it is made and used. Examples showing how the invention works in a particular application may or may not (more often not) be present in software and business method patents.
Claims
The patent ends in claims. The claims define the invention which the patent owner holds as his or her exclusive property for the duration of the patent and has the right to exclude others from making, using and selling. The claims of a patent are analogous to the boundaries set forth in a real estate deed: Both specify the scope of ownership in a piece of property, one intellectual property and the other real property.
Linda Buckley, Esq. is a partner and co-chair of the technology transactions practice group of Edwards & Angell, a 300-attorney national law firm focusing on financial services, private equity and technology. She may be reached at [email protected].
