Writing Chemistry Patents and Intellectual Property: A Practical Guide

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WRITING CHEMISTRY PATENTS AND INTELLECTUAL PROPERTY

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WRITING CHEMISTRY PATENTS AND INTELLECTUAL PROPERTY A Practical Guide

FRANCIS J. WALLER

A JOHN WILEY & SONS, INC., PUBLICATION

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Copyright © 2011 by Francis J. Waller. All rights reserved Published by John Wiley & Sons, Inc., Hoboken, New Jersey Published simultaneously in Canada No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, scanning, or otherwise, except as permitted under Section 107 or 108 of the 1976 United States Copyright Act, without either the prior written permission of the Publisher, or authorization through payment of the appropriate per-copy fee to the Copyright Clearance Center, Inc., 222 Rosewood Drive, Danvers, MA 01923, (978) 750-8400, fax (978) 750-4470, or on the web at www.copyright.com. Requests to the Publisher for permission should be addressed to the Permissions Department, John Wiley & Sons, Inc., 111 River Street, Hoboken, NJ 07030, (201) 748-6011, fax (201) 748-6008, or online at http://www.wiley.com/go/permissions. Limit of Liability/Disclaimer of Warranty: While the publisher and author have used their best efforts in preparing this book, they make no representations or warranties with respect to the accuracy or completeness of the contents of this book and specifically disclaim any implied warranties of merchantability or fitness for a particular purpose. No warranty may be created or extended by sales representatives or written sales materials. The advice and strategies contained herein may not be suitable for your situation. You should consult with a professional where appropriate. Neither the publisher nor author shall be liable for any loss of profit or any other commercial damages, including but not limited to special, incidental, consequential, or other damages. For general information on our other products and services or for technical support, please contact our Customer Care Department within the United States at (800) 762-2974, outside the United States at (317) 572-3993 or fax (317) 572-4002. Wiley also publishes its books in a variety of electronic formats. Some content that appears in print may not be available in electronic formats. For more information about Wiley products, visit our web site at www.wiley.com. Library of Congress Cataloging-in-Publication Data Waller, Francis J. Writing chemistry patents and intellectual property : a practical guide / by Francis J. Waller. p. cm. ISBN 978-0-470-49740-1 (hardback) 1. Chemistry–Patents. 2. Intellectual property. 3. Technical writing. I. Title. TP210.W35 2011 660.02'72–dc22 2011006416 Printed in Singapore. oBook ISBN: 978-1-118-08444-1 ePDF ISBN: 978-1-118-08442-7 ePub ISBN: 978-1-118-08443-4 10

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This book is dedicated to my wife, Patricia L. Waller, Ed.D., who has encouraged me with my professional ambition of conveying practical information to my peer group, undergraduates and graduate students, and younger students from grades 1 to 12.

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CONTENTS

PREFACE

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ACKNOWLEDGMENTS

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1.

BACKGROUND AND HISTORICAL PERSPECTIVE ABOUT INTELLECTUAL PROPERTY

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Chapter Objective / 1 Introduction / 1 Book Strategy for Patents / 6 A Brief History of Patenting / 7 Intellectual Property: Is It Important or Not? / 8 The U.S. Patent and Trademark Office / 9 Why Intellectual Property Protection Is Currently Important / 13 Information Overload and Prior Art / 15 China as an Emerging Intellectual Powerhouse / 18 Patents as Sources of Technology / 19 Patents in Force Worldwide / 20 Chapter Summary / 20 Additional Reading / 20 Question / 21 vii

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CONTENTS

BRIEF INTRODUCTION TO VOCABULARY AND DEFINITIONS

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Chapter Objective / 22 Introduction / 22 Short Story from Panama / 23 Patent Terminology / 24 Trade Secret Definition / 30 Copyright / 31 Trademark Definition / 32 Chapter Summary / 33 Additional Reading / 33 Questions / 34 3. YOUR FIRST DECISION: TRADE SECRET OR PATENT?

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Chapter Objective / 35 Introduction / 35 Trade Secret / 36 Patent / 39 Comparison between a Trade Secret and a Patent / 40 Chapter Summary / 41 Additional Reading / 41 Question / 42 4. WHAT COMES FIRST: A PROVISIONAL OR NONPROVISIONAL PATENT APPLICATION?

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Chapter Objective / 43 Introduction / 43 Provisional Patent Application / 45 Nonprovisional Patent Application / 48 Patent Application Comparison / 49 Chapter Summary / 50 Additional Reading / 50 Question / 50 5. REASONS FOR PATENT OFFICE REJECTIONS

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Chapter Objective / 51

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CONTENTS

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Introduction / 51 Patentable Invention and Its Usefulness / 52 Novelty / 53 Nonobviousness / 54 Other Reasons for a Rejection / 56 Chapter Summary / 57 Additional Reading / 57 Question / 58 6.

REASONS FOR INVALID PATENTS

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Chapter Objective / 59 Introduction / 59 Experiments: Actual or by Insight / 60 Prior Art Disclosure / 60 Issued Patent Is Invalid / 61 Inequitable Conduct / 62 Other Considerations When Writing Your First Patent Application / 62 Another Point of View / 63 Chapter Summary / 63 Additional Reading / 64 Question / 64 7.

EXAMPLES OF PATENT SPECIFICATIONS

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Chapter Objective / 65 Introduction / 65 Key to Patenting Success / 66 Why Understanding Patents Is Important / 66 Typical Pathway for Patent Application within a Company / 67 Claim 1 and 2 of U.S. Patent 5,247,190 / 68 Examination of U.S. Patent 5,872,289 / 71 Format for Patent with Federal Support / 76 Examination of U.S. Patent 6,369,239 / 77 Examination of U.S. 2004/0010115A1 / 79 Examination of U.S. Patent 7,071,289 / 81 Examination of U.S. Patent 5,273,995 / 82

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CONTENTS

Examination of U.S. Patent 7,253,209 / 83 Comparing Claim Language with Written Description of Invention / 85 Chapter Summary / 87 Additional Reading / 88 Questions / 88 8.

WRITING THE PATENT APPLICATION

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Chapter Objective / 89 Introduction / 89 The Inventive Process / 90 Summary of Our Understanding for Patents and Trade Secrets / 92 Identifying a Problem to Be Solved / 93 Methodology to Solve a Complex Problem / 97 Possible Inventions from Our Everyday Reading / 101 Patentability Requirements / 102 Circumventing the Rules of Electrophilic Aromatic Substitution / 103 Water Splitting via Ruthenium Complex / 105 Detecting Mechanical Stress within a Polymer / 108 Places to Find Future Problems / 110 Controlling Molecular Size of Semiconductor Quantum Dots / 111 Chapter Summary / 113 Additional Reading / 113 Question / 114 9.

AN EXAMINATION OF CLAIM FORMAT

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Chapter Objective / 115 Introduction / 115 Interpretation of Claims / 116 General Background about Claim Language / 118 More Definition about Claims / 119 Specific Claim Language / 120 Chapter Summary / 123

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WHY YOU NEED CONFIDENTIALITY AGREEMENTS

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Chapter Objective / 124 Introduction / 124 Confidentiality Agreements in General / 125 Important Elements within a Confidentiality Agreement / 125 Chapter Summary / 127 Question / 127 11.

PRACTICAL INFORMATION ABOUT COPYRIGHTS AND TRADEMARKS

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Chapter Objective / 128 Introduction / 128 Copyright / 129 Copyright Interpretation / 131 Adjunct Professor Appointments and the Copyright / 133 Filing for a Copyright / 136 Trademarks / 137 Chapter Summary / 139 Question / 140 12.

GLOBAL PATENT FILING AND PATENTING STRATEGY

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Chapter Objective / 141 Introduction / 141 Developing a Patent Strategy / 142 International Patent Filing / 143 Filing Options / 145 Chapter Summary / 146 Questions / 147 13.

WHAT ACADEMIC SCIENCE FACULTY SHOULD KNOW ABOUT PATENTS AND COPYRIGHTS

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Chapter Objective / 148 Introduction / 148 Recent Background / 149 What Should You Do after Having a Novel Concept? / 150

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Notebooks / 151 Invention Disclosure / 152 Confidentiality Agreements / 153 Copyrights / 153 Chapter Summary / 154 Additional Reading / 154 Questions / 154 14.

INTELLECTUAL PROPERTY RESOURCES

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Chapter Objective / 155 Introduction / 155 Brief Summary of Selected Intellectual Property Books / 156 Intellectual Property Courses / 162 Worldwide Patent Offices / 163 Emerging Technology Fields / 163 Useful Organization / 164 Chapter Summary / 165 Additional Reading / 165 15.

BOOK SUMMARY AND ON YOUR OWN

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Chapter Objective / 166 Introduction / 166 Pending Intellectual Property Developments / 167 Summary of Previous Chapters / 167 Responsibilities of the Inventor / 168 Conclusions / 169 Chapter Summary / 170 Additional Reading / 170 16.

RESPONSES TO QUESTIONS AT END OF CHAPTERS Chapter Chapter Chapter Chapter Chapter

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Objective / 171 1 / 171 2 / 172 3 / 173 4 / 173

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Chapter Chapter Chapter Chapter Chapter Chapter Chapter Chapter 17.

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5 / 174 6 / 176 7 / 177 8 / 178 10 / 178 11 / 179 12 / 179 13 / 180

PATENT APPENDIX

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Chapter Objective / 181 Useful Information Besides the Invention / 181 Chapter Summary / 184 U.S. Patent 5,872,289 / 185 U.S. Patent 6,369,239 / 194 U.S. Published Patent Application 2004/0010115A1 / 198 U.S. Patent 7,071,289 with Certificate of Correction / 207 U.S. Patent 5,273,995 / 219 U.S. Patent 7,253,209 / 229 INDEX

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PREFACE

There will probably be several different audiences that will read this book. The first is the intellectual property novice who, like me 40 years ago, did not know what intellectual property actually meant. It is this audience that I hope to reach. Then the second group of people are the new employees entering the chemical technology workforce, either in academia or in industry, where protecting intellectual property will be relevant to their jobs. This book, I hope, will be helpful in discussing intellectual property—including patents, copyrights, trademarks, and trade secrets—with the appropriate attorney who will assist you in your endeavors. The next-to-last group of readers will be members of the general public who would like to better understand some of the intellectual property cornerstones that drive innovation and are available to protect individuals and corporations from worldwide competition. The last group of readers are the individuals who will be taking the initiative to write their own chemical patent applications, obtain advice from a patent attorney, and together file that patent application. To all these readers this book is to be viewed as a practical guide. Many of the chapters are short and to the point. Intellectual property comes in many forms. It can be a patent, copyright, trade secret, or trademark. The protection of chemical science and technology through intellectual property allows individuals, companies, and countries to develop the results of chemical science and technology into marketable products in an orderly fashion. The development of these results is part of the innovation process. If the chemical xiv

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science and technology represent a paradigm shift or a product worth billions of dollars in the marketplace, your intellectual property may be challenged through litigation. Therefore, it is imperative that the owners of the intellectual property understand the basics of each form and how each form will protect their ideas. My intent in writing this book is to cover these centerpieces of intellectual property in a depth that is useful and practical to the general reader and chemical practioner. It is also hoped that this book can be a supplemental textbook for an academic semester course on intellectual property. When I started my industrial career at E. I. duPont deNemours and Company, Inc., my formal education did not include a knowledge of intellectual property. Now after 30 years of an industrial career, I still find newly trained scientists, engineers, entrepreneurs, and individual inventors to be uninformed about intellectual property. It is hoped that this book will give interested individuals the basic understanding behind patents, copyrights, trade secrets, and trademarks and allow them to approach each with some working knowledge. With additional textbook references noted in Chapter 14, intellectual property owners can enhance their knowledge of intellectual property and become more educated individuals. In addition, at the end of most chapters, I have added a section called “Additional Reading.” The resources listed there are examples of the many articles about similar facts. I have used such data to help readers understand my narrative. These added resources present additional points of view about some of the information I present. My formal graduate education is within the discipline of organic chemistry. Teaching a new discipline forces you to learn the science or subject matter well—at least well enough to be able to convey the learned subject matter to someone else. I have done this with graduate courses in the disciplines of polymer science and material science. It is hoped that what you learn between the first and last pages of this book gives you the basic skills to understand and practice intellectual property in conjunction with an intellectual property attorney. The majority of this book is taken from a one-day short course titled “Practical Approaches to Patents and Other Forms of Intellectual Property” developed by me for the American Chemical Society® in early 2006. Since that time, the notes for the short course are in version five, thanks to the feedback from the course participants. The American Chemical Society® offers the short course at National American Chemical Society meetings and at on-site company locations. My overall approach in teaching the short course and in this book is to explore how history has affect intellectual property, to understand the basics of

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PREFACE

each form of intellectual property, and (since the book focuses primarily on writing patents) to discuss reasons for patent rejections and invalid claims. During the development of this strategy, we will look at specific selected patents to illustrate patent-writing methology. In addition, comparisons will be made between patents and trade secrets and provisional versus nonprovisional patent applications. Copyrights and trademarks will briefly be discussed as another means to protect intellectual property. Then, a brief discussion will cover confidentiality agreements and the foreign filing of patent applications. Last, useful information will be covered for academic chemical science faculty. I am not a patent attorney or a patent agent and consider myself one who uses intellectual property. While employed as a senior research associate at Air Products and Chemicals, Inc., and as a project leader at DuPont®, I have been fortunate to work closely with many different intellectual property attorneys and patent liaison personnel who were willing to share their expertise with me. So it is hoped that the information summarized in this book enables you to become a better intellectual property user. Francis J. Waller

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ACKNOWLEDGMENTS

I wish to thank all the patent and legal attorneys whom I have met in my 30-year industrial career. Many of these attorneys were willing to share with me their individual passion for intellectual property. An equal amount of thanks goes to all the participants in my short course, “Practical Approaches to Patents and Other Forms of Intellectual Property,” offered through the American Chemical Society®. These students have challenged me in meeting their expectations for taking the short course. People who have helped make this book possible are 1. Mrs. Teri Hoppe, who diligently has taken my written and spoken words and transformed them into the manuscript that you see here. 2. Mrs. Amy Kovalski, who edited the manuscript for grammar and consistency of the chapters. 3. The reviewers, who offered feedback to make this book more worthwhile. The ideas in this book are the author’s and not those of E. I. DuPont deNemours and Company, Inc., or Air Products and Chemicals, Inc. In addition, the content of this book should not be a substitute for professional intellectual property counsel. The author has tried to ensure that the information in this book is correct at the time of the galley proofs. The author’s ideas expressed in this book are based on xvii

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firsthand experience working with attorneys, teaching a short course for the American Chemical Society® titled “Practical Approaches to Patents and Other Forms of Intellectual Property,” and extensive reading about intellectual property. The information in this book is not legal advice but is meant to acquaint the reader with facts about intellectual property. The facts gathered from other cited references are added or interpreted by the author to make this book useful for the general public.

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CHAPTER 1


CHAPTER OBJECTIVE The objective of this chapter is to provide the reader with an overview of the concept of intellectual property. Many new terms will be introduced here and discussed in detail later throughout the remaining chapters. In a similar manner, the examples introduced here will be used and expanded in later chapters. With this introduction, you will begin to understand that inventing or expressing in words something believed to be technically novel is only the beginning; you must determine within the world information domain if it really is novel as a matter of law and then pursue the necessary steps to obtain a patent, copyright, trademark, or just keep it as a trade secret.

INTRODUCTION The human intellect can create a novel, new, or not currently known concept, idea, or thought in the mind. Therefore, intellectual property

Writing Chemistry Pantents and Intellectual Property: A Practical Guide, First Edition. Francis J. Waller. © 2011 Francis J. Waller. Published 2011 by John Wiley & Sons, Inc. 1

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is an intangible creation of the intellect. When a novel concept or idea is reduced to practice by someone, the inventor, it now becomes a tangible creation that can be protected by a patent. For example, say your novel concept is to capture sunlight to convert water to hydrogen and oxygen. H 2O ⎯catalyst ⎯⎯→ H 2 + 0.5O2 The reduction to practice or how your invention would work has three key components. First, you need a bimetallic nanoparticle. Second, the nanoparticle activates water to generate hydrogen atoms and an epoxide connected to the surface of the nanoparticle. Third, hydrogen and oxygen are released from the surface of the nanoparticle. You must further define the nature of the bimetallic character of the nanoparticle and describe the nanoparticle: particle size, particle composition, and bimetallic loading. Remember, not all metals in combination would function as a bimetallic catalyst for this reaction. In addition, the particular particle composition must be able to form an epoxide and connect to hydrogen atoms. Also the release of hydrogen and oxygen from the surface of the nanoparticle may require a desorption process, which may be heat activated. Therefore, you can readily see, to come up with a novel concept and then to determine how it would work are not easy operations. But eventually, when the specifics of the reduction to practice are worked out and a model is demonstrated, you have an invention. Similarly, when you commit your thoughts to paper or screen, the tangible expression can be protected by a copyright. Therefore, legal protections of tangible creations include patents and copyrights. Other legal protections include trademarks and trade secrets. If you visit a Java City coffee shop and purchase coffee in their container, you will quickly note that the words Java City on the cup are followed by a ™ symbol. The ™ symbol means “trademark.” Also, on the side of the container, there appears © 2007 Java City, Inc. All Rights Reserved. This phrase means that the text on the back of the coffee container is protected by a copyright. The © symbol means “copyright”. Now if you read the text, part of a sentence reads “using a unique timesignature process.” This could mean that Java City, Inc. may have a patent on some unique process to roast the coffee beans or the referenced unique process could be protected by a trade secret. So the use of the different forms of intellectual property could give Java City, Inc. a competitive edge in the marketplace. The symbols ™ and © will be discussed further in another chapter. Before I began to pull intellectual property examples together to illustrate various points in this book, I noticed that I had several pencils

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INTRODUCTION

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on my desk. One has the Penn State® logo and eleven paw prints. Next to each paw is the notation ™. Both of these symbols, ® and ™, refer to trademarks. The ® is used to indicate that the trademark is federally registered. The ™ symbol usually, but not always, means the potential owner of the trademark has filed for federal registration for a class of goods but not yet received it. Recently, I was reading the Smart Money® magazine1 and noticed an advertisement for AT&T®. Toward the bottom of the page were the words “© 2009 AT&T Intellectual Property and AT&T, the AT&T logo, all other marks contained herein are trademarks of AT&T Intellectual Property and/or AT&T affiliated companies.” I think from this and the earlier examples you can see that companies take the use of their trademarks and copyrights very seriously. So as you read other advertisements, look for the ©, ®, and ™ symbols, and you may be surprised at how many logos and unique sets of words or phrases are actually protected by trademarks while the written expression is protected by a copyright. Even this book is copyright protected. Intellectual property is all around us. In 2008, J. K. Rowling, the author of the best-selling Harry Potter book series, and Time Warner, Inc., were engaged in a copyright trial in federal court against RDR Books.2 In this example, RDR Books was planning publication of a Harry Potter reference guide. At issue in this trial was the question of whether RDR Books took too many quotations and plot summaries from Rowling’s work. Here the copyright doctrine of fair use was being challenged. Fair use allows a limited amount of copyrighted material to be incorporated into another author’s work without requiring permission from the copyright owner under certain situations. These situations include scholarly work and critiques for noncommercial purposes. However, I believe, the reported reference guide here was for commercial purposes. In the trial, the judge halted publication of the Harry Potter reference guide. He ruled that the reference guide would violate the copyright owned by Rowling because fair use was not being followed. One must remember that using an unnecessary amount of verbatim material from another work that is protected by a copyright can lead to litigation. Apparently, RDR Books did not change the original work with any new meaning or commentary. In the Preface, I noted that if your product is worth a very large amount of money in the marketplace, your intellectual property may be challenged through litigation. The Harry Potter series is very popular and successful in the marketplace. Further discussion about copyrights will be presented in Chapter 11. Another example of intellectual property in the news occurred in 2006 with the Coca-Cola Co. when they alleged the stealing of

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confidential documents and a sample of a new coke product.3 Three employees of Coca-Cola Co. were alleged to have tried to sell the items to Pepsi Co., Inc. The confidential documents were deemed trade secrets. Trade secrets, if protected adequately, will give the holder of the trade secrets certain rights if the trade secrets end up in a competitor’s hands. Remember, the long-used syrup formula that gives CocaCola® its unique flavor is still a trade secret. Further discussion about trade secrets will be deferred until Chapter 3. The last example of intellectual property from the press is Medtronic® suing Boston Scientific® in 2006 for patent infringement.4 This case involved stents to prevent blockages in coronary arteries. The stent market was about $4 billion in 2008. A U.S. District Court in Texas found Boston Scientific® had infringed three patents used by Medtronic®. The judge ruled that Boston Scientific® must pay Medtronic® $250 million. However, in 2008 a federal judge found two of the Medtronic® patents unenforceable. The judge reduced the $250 million damages to $19 million. In more recent court decisions, Boston Scientific® may also have infringed patents held by Johnson & Johnson® involving heart stents. It can readily be seen that the major manufacturers of heart stents are involved in patent infringement litigation. In fact, some of the litigation goes back a decade! Again, this points out that if you’ve developed an innovative product that’s worth very large amounts of money in the marketplace, your intellectual property may be challenged through litigation. A more detailed discussion about patents, valid claims, infringement, and enforceability will be discussed in later chapters, but this brings up an important point regarding patents. For a patentee, the owner of a patent, to succeed in litigation, getting the patent application nearly correct the first time is very important. As an inventor, you do not want your patent application finally rejected by any patent office, nor do you want to have invalid claims. Patent claims do not, by law, infringe other patent claims. Making, using, offering to sell, selling, or importing into the United States a patented invention is what infringes patent claims. If the claims of one patent were identical to the claims of an earlier patent, those claims might be invalid as anticipated. Those claims, however, would not infringe the claims of the earlier patent. The manufacture, use, offer for sale, sale, or importation of a product falling within the scope of those claims, however, might infringe the claims of the earlier patent. Some people may have a dilemma about patenting in the field of human health. Should one allow science or technology that pushes forward research in human health to be put into the public domain and

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INTRODUCTION

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therefore available simultaneously to many people? Or should one patent the invention and make it available only to those who can pay? Possibly two pathways are available to the original inventor. If the original inventor in an emerging technology area does not obtain patent protection, he or she may be prevented to practice their own invention by later patents allowed in the same area by someone else. A case in point occurred in 2006 when S. Yamanaka, a stem-cell researcher at Kyoto University, created the first iPS cells.5 By introducing just four genes into mouse tail cells grown in a lab dish, he could produce cells that looked and acted like ES cells. These new cells were called induced pluripotent stem (iPS) cells. Kyoto University fast-tracked the Japanese patent application on the method covering the discovery of four genetic factors to reprogram the cell. This patent was eventually allowed and gave Yamanaka the right to carry out his own research. A patent normally gives the inventor the right to exclude others to practice the invention. However, since the method was the first of its kind and there was no close prior art, Yamanaka can practice his own invention. Therefore, if you have a novel invention and the novel invention represents a paradigm shift in science or technology, you are the dominant intellectual property holder and can practice the invention. It pays to be first with novel technology because there is no prior art references (including patents). The second pathway for the original inventor is to publish the invention in a scientific article. This pathway would allow everyone to practice the discovery. In later chapters, keywords such as allowed patent, definition of a patent, prior art, and method patent will be discussed in more detail. As an intellectual property writer, it is important for you to understand that intellectual property is worldwide. Patents, copyrights, and trademarks are being applied for every day. Science and technology normally move at a rapid pace. Rapid advancement of science should encourage you to act quickly to file your own patent applications, submit a copyright on original tangible works, or obtain a trademark that distinguishes your product from another product. As an example, the number of U.S. patents for technologies from India increased more than 10-fold from 1993 to 2003. One fifth of all U.S. chemical patents were granted to Japanese inventors during roughfully the same time period. In 2007, about 8% of inventors were identified as having a Chinese surname. The reason for being aware of these facts is that many inventors file patent applications in their own country and in the United States. Later in the book we’ll discuss worldwide prior art searching, but for now simply be aware that you must examine all printed information pertaining to the technology field that is covered

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by your invention. Printed information includes not only where it is published but also in any language. The same would apply to information that has a copyright. The expression of words on some tangible medium can occur anywhere in the world. Consider when you use Google® to search a topic to find out what has been written about it. The number of worthwhile hits sometimes is staggering.

BOOK STRATEGY FOR PATENTS Figure 1.1, shows the basic elements one must comprehend before writing a patent application; these elements will be covered in later chapters. The written patent application or specification is made up of two parts: invention description and claims. The claims must be valid and nonobvious over the prior art. The description must disclose your invention adequately and enable a skilled artisan to make and use your invention. There are also a series of legal requirements you must follow. These include following proper format; paying required fees; and ensuring that the invention is useful, novel, nonobvious, and belongs to a statutory class eligible for patent protection. Not following or proving the legal requirements to the patent examiner will lead to a rejection.

Legal requirements to follow

Specification -Description -Claims -Format, fees -Useful -Novel -Nonobvious -Statutory subject matter

Reasons for rejections

Claims that do not cover the prior art

Search -Field -Basic requirements (how it works)

-Prior art (problem) -Describe the invention (solution) -Examples

Educate the examiner

Figure 1.1. Basic elements for a successful patent application.

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A BRIEF HISTORY OF PATENTING

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As we begin to discuss various aspects of patents in later chapters, reflect back on Figure 1.1.

A BRIEF HISTORY OF PATENTING Patent laws were first established in the United States in 1790. Patent numbering started in 1836. Early on in patent history, a working model of an invention was required when you filed a patent application. Luckily, this requirement was dropped several years later. The U.S. Constitution gives Congress the power to enact laws relating to patents. Under this power, Congress has enacted laws relating to patents up to the present time. For example, in 1980, the Bayh-Dole Act gave universities title to ownership of inventions resulting from research funded by the federal government. Before that time, title belonged to the government. In 1984, the Hatch-Waxman Act was passed. This act allowed generic drugs to enter the marketplace. Before 1984, generic drugs were not very common. After 1984, the generic drug company was required only to demonstrate bio-equivalency of the generic drug. In addition, the generic drug company receives the benefit of clinical trial data from the drug company. In return, the drug company received a maximum of up to a 5-year extension on the patent life. The first historical reference to a body responsible for issuing and archiving patents goes back to 1679, with the creation of the General Board of Trade and Currency of Spain. This board had the responsibility of increasing economic growth. Invention rights in Spain, however, were granted before 1679 by the king of Spain in the 15th and 16th centuries. Recently, there has been a lot of discussion on the question of whether assessment of damages in patent infringement cases should be based on the extent to which the most recent patent improves on the previous patents. Presently, there is not a limit on damages. For example, if your invention is a novel light-emitting organic or polymer material used in a light-emitting diode (LED) that is part of an HDTV set, should you receive damages on the light-emitting organic or polymer material or the whole HDTV set, which is made up of many interacting components that are functionally different? Damages now are based on the whole HDTV. Patent lawsuits have increased substantially in the last 20 years (Table 1.1). There was an increase of 63% from 1986 to 1996. The next 10-year period shows an increase of 54%. In 2006, there were approximately 2800 lawsuits in U.S. courts. Again, this reflects the many products in the marketplace worth billions of dollars.

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TABLE 1.1

Patent Lawsuits

Year

Number of Lawsuits

10-Year Percent Increase

1986 1996 2006

1,129 1,840 2,830

— 62.9 53.8

This is not to say that some of the litigation originates from companies or individuals with other agendas. An example is patent trolls. These are companies or individuals who buy patents from other companies or individuals with the purpose of not making any particular product but to extract royalties or be awarded damages when their patent claims are infringed. Many times these are frivolous lawsuits that may be cheaper to settle out of the U.S. court system. The patent trolls however, also have the financial and human resources to file their own patent applications on products or methods, again with the same objective of finding companies that infringe their patent claims. This example should put into perspective that it is very important to have a patenting strategy when you are nearly ready to launch a new commercial product. A well-thought-out patenting strategy may make it more difficult for patent trolls to have a negative impact on your new commercial product. A brief discussion about patenting strategies is found in Chapter 12.

INTELLECTUAL PROPERTY: IS IT IMPORTANT OR NOT? Presently, novel discoveries or products are usually protected by patents. This allows the holder of the patent to commercialize the discovery. Also, expression of words are protected by copyrights. As an example, copyrights help writers and book publishers recoup their time and expenses for publishing a book. Some people are advocating that protection of intellectual property was important during the Industrial Age, but as we move further into the Information Age, all information should be freely exchanged and less protected by patents6 or copyrights. This approach would decrease litigation in the courts. Since 1990, litigation in particular infringement cases has increased more than 400%. However, there is a possibility that scientific researchers—individuals, collaborators, or corporations— may not financially benefit from their discoveries if not for some protection mechanism. With no intellectual property protection, the cheapest producer could manufacture the product. The cheapest producer may not be associated with the original inventors. This situation

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THE U.S. PATENT AND TRADEMARK OFFICE

9

now exists when exclusive patent rights expire. A case in point is the generic drug–manufacturing companies. Is there an alternative approach to patents? Ideas have value, and the perceived value increases when more people have input to the idea. The sticky point is when the idea is reduced to practice into a tangible product. If the tangible product is sold and represents a paradigm shift in technology, how are the monies from that unique product distributed so that everyone from the idea generator to manufacturer is rewarded for his or her effort and therefore encouraged to repeat with a similar effort? Maybe the objective and fair approach would be an organization that collects the money from sales and distributes it to the appropriate parties from the original idea generator to the final manufacturer. One may want the low-cost manufacturer so that the product has global appeal. The distribution system organization would benefit humankind just like patents, trademarks, and copyrights. The new idea could be disseminated freely, since it would not be protected by patents, trademarks, or copyrights. However, presently we have patents, trademarks, and copyrights that confer rights to their holders. Critics continue to propose changes to the existing intellectual property system. Maybe we need a drastic new approach to bringing products to the marketplace where everyone along the new product chain benefits. Only time will tell if people without hidden agendas can make a different innovation system work. It may not be the crude distribution system organization just described but something that fosters innovation, rewards the participants, and is fair and objective and that everyone can live with because it will continue to benefit humanity.

THE U.S. PATENT AND TRADEMARK OFFICE The U.S. Patent and Trademark Office (USPTO) has been located in Alexandria, Virginia, since 2006. (It used to be in Arlington, Virginia.) The USPTO receives both patent and trademark applications. Table 1.2 shows that the number of patent applications has increased by 73% from 1987 to 1997 and by 98% from 1997 to 2007. About 181,100 patents were issued in 2007, compared to 137,122 issued in 1987. Over time, the large volume of applications to be examined has caused a backlog. In 2010, about 700,000 patent applications had not yet been evaluated by an examiner. Presently, about 450,000 patent applications are received yearly. This growing backlog of patent and trademark applications is expected to increase between 700,000 and 1 million in

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TABLE 1.2

Patent Applications by Decade

Year

Number of Patent Applications

10-Year Percent Increase

1987 1997 2007

137,122 237,045 468,330

— 72.9 97.6

2010. To help rectify the backlog of applications, the USPTO hired an additional 1,500 patent examiners in 2007 and in 2008, bringing the number of examiners to about 5,500. In 2010, the number of examiners stood at about 6,000. The good news from the hiring is the backlog of patent and trademark applications should be slowly reduced. However, because about 50% of the examiners are relatively new, many will have to be mentored in the patent office procedures and assigned to the examining technology centers based on their expertise. Each center has jurisdiction over a selected group of assigned fields of technology. With the worldwide economic slowdown staring in 2008, the USPTO has seen a slight reduction in applications. This translates into a loss of revenues. How the economic slowdown affects the USPTO plan for growth and training new hires remains to be seen. The global slowdown could possibly extend into 2012. Patent examiners see their jobs as helping inventors protect their intellectual property. If you have an opportunity to interview an examiner in the presence of your attorney, listen carefully to what may be bothering the examiner if you were sent a rejection notice. This meeting is your chance to resolve any scientific or technical questions in a faceto-face discussion. Written responses are still required to respond to a rejection notice; however, so much more can be covered in a one-onone discussion. Each company has a different policy about visiting a patent examiner. In all my trips to the USPTO, the outcome has always been favorable to the allowance of my patent. Patent allowances by the USPTO have changed over time, and the percent change is instructive from a historical point of view. The allowance history is reflected in Table 1.3. Before 1999, the patent allowance rate by the USPTO was about 65%. Then from 1999 to 2000, the rate increased to 72%. This high rate of allowance probably was a result of a rapid examination. Rapid examinations can lead to issued patents with invalid claims since the examiner’s own prior art search may not have been sufficiently thorough. The difference between an allowed patent and an issued patent is a fee paid to the USPTO. In 2006, we saw the rate of allowance falling to about 45%. In 2009, the rate of

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THE U.S. PATENT AND TRADEMARK OFFICE

TABLE 1.3 Years 2006 1999–2000 Before 1999

11

Patent Allowances Rate of Allowance (%) 45 72 65

allowance fell further to just under 40%. Therefore about one out of every three or so patent applications are allowed. What does this mean to you? Certainly the USPTO is being more diligent in their prior art search to determine if your invention already exists or is obvious to a person with ordinary skill in the art. Most likely more patent applications are being rejected by the USPTO because in the last decade, critics of the patent system have ascertained that many of the issued patents are obvious, have invalid claims, or are only incremental improvements over existing patents. The latter can lead to more infringement because the inventor is making an improvement in a technology area that is already dominated by existing patents and patent estates. The average time spent by a patent examiner on a chemical patent is a mere 20 hours. Therefore, you and your patent attorney should have all the submitted paperwork correct and a well-thought-out specification for the patent examiner to read. The specification is the written description of the invention with the corresponding claims. It is important to mention here that since the patent examiner spends only a total of 20 hours evaluating your patent application, you should make his or her job easier. Do not overburden the examiner with prior art references that are not relevant. In the written description of the invention, summarize the status of the prior art and identify the problem that researchers are trying to solve. Then very clearly state how your invention solves the problem or fulfills the marketplace need. Always spend adequate time to discuss how your invention is not obvious based on the prior art. Many times if the examiner must spend too much time trying to determine why your novel invention is the solution to the problem, he or she will simply reject the patent application and wait until you and your attorney explain why your invention is novel, useful, or not obvious in your written response. In Chapter 5, we will spend time on the concept of obviousness. Usually this is a common rejection from the USPTO. Through writing patents during my 30-year industrial career, I have found that being proactive in doing the necessary homework while writing the specification of the patent application is much better than responding to a rejection. The first take-away messages in

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TABLE 1.4

Preexamination Period Activities

Serial number assigned Fees recorded Tentative classification in a technology field Security-sensitive material screened Security-sensitive cases separated (not published) Administration duties performed

TABLE 1.5

Examination Period Activities

Application assigned to examining unit and examiner Classification in technology field completed First office action from examiner Applicant’s response to office action Second office action or allowance Possible applicant’s response to office action Examiner’s last office action Final allowance or rejection

TABLE 1.6

Postexamination Period Activities

Review of allowed application and all paperwork Electronic data capture for printing Fees collected Patent printed and issued

writing a patent specification is to state the problem to be solved, clarify how the invention solves the problem, and explain in clear language how each prior art reference points away from the invention. The examination by the USPTO is broken up into a preexamination period, examination period, and postexamination period. Some activities in each period are summarized in Tables 1.4–1.6. In the preexamination period, most of the activities are not performed by the patent examiners. This stage takes approximately three months, and two fees are paid to the USPTO: a basic filing fee of $330 and an examination fee of $220. The most important point here is that security-sensitive patent applications are not published. Next, the patent application enters the examination period (Table 1.5). The total cost at this stage is $540 for a search fee and $1,510 for an allowance fee if the patent application is allowed. The time required to go through all of the activities for this stage is up to 26 months. Even after the last office action, the inventor has time for another response if an additional fee is paid. Usually the time between all the

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WHY INTELLECTUAL PROPERTY PROTECTION IS CURRENTLY IMPORTANT

13

responses is an average of 8 months out of the 26 months. In the postexamination period, 2 to 3 months are required to complete all of the activities outlined in Table 1.6. From the time the patent application arrives in the USPTO until the time it is issued as a patent, the total cost is about $2,600. This will keep the patent enforced for 3.5 years before the next set of fees are required. Then just before 3.5 years, 7.5 years, and 11.5 years have elapsed, maintenance fees of $980, $2,480, and $4,110, respectively, are due (The example discussed here is for a utility type patent.). Therefore, the lifetime patent costs are about $10,170. This does not include any patent attorney fees. In the case of most utility type patents, exclusive rights are assigned to the inventor for 20 years. If you have been keeping track of time in the overall examination process, 31 to 32 months have elapsed. In 2009, it took about 40 months for some allowances. It should be mentioned here that your patent application will be published by the USPTO after 18 months from the date of submission to the patent office. This publication can be prevented under special considerations which will be discussed in a later chapter. Later, we will also discuss such terms as issued patent, utility patent, filing date, and a Non-publication Request. Before we leave this section, it should be mentioned that every word in your issued patent and every word in your claims will be scrutinized carefully by your competition. Therefore, proofreading a patent should be a high priority after it is issued. Make sure there are no typographical or grammar mistakes that could influence the interpretation of the patent. Also the USPTO may omit information that was changed by the applicant (you) during the examination period.

WHY INTELLECTUAL PROPERTY PROTECTION IS CURRENTLY IMPORTANT Patents are obtained to protect an existing business. Patents will also protect new businesses. Many companies will license a patent and obtain royalties. Patents will also exclude others from entering emerging technology that is new and on the cutting edge of science. Approximate drug developmental costs since 1992 are summarized in Table 1.7. There is an ongoing debate if the elements that make up these costs are justified, but let’s assume the cost reflects an approximate estimation of the real developmental cost for the drug. The last number of $2.8 billion represents the Exubera® failure by Pfizer®. I have heard the real number is slightly over $3.0 billion. Like any other technology company, drug companies must be protected from knockoff

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TABLE 1.7

Drug Developmental Costs

Year

Approximate Cost (billions of U.S. dollars)

1992 1996 2000 2003 2007

0.4 0.6 0.8 ∼1.0 2.8

TABLE 1.8

Patents Granted to IBM

Year

Number of Patents

1993 1997 2001 2004 2007

1,085 1,724 3,411 3,200 3,148

copies of their products. A patent gives the company 20 years to exclude others from making, using, offering to sell, selling, and importing their product. If these developmental costs are not recovered, the company will eventually go out of business and employees terminated. So intellectual property is a mechanism to capture both the costs in bringing a successful product to market and not bringing all those unsuccessful products to market. It was mentioned earlier that patents can be licensed to generate a revenue stream. Table 1.8 records the number of patents issued to IBM®. In 2001, IBM® generated $1.5 billion from licensing their patent estates and other intellectual property. A more recent example is Kodak®. In 1975, Kodak® invented the digital camera but did not move quickly enough to commercialize the novel product. About 1,000 patents are assigned to Kodak® on digital imaging. In the last 3 years Kodak® has received between $250 and $350 million per year from licensing fees. It has been projected that the magnitude of the licensing fees will continue through 2012. For most companies this would represent a very nice profit center. There is also a connection between intellectual property and the financial performance of a company.7 Table 1.9 lists the rankings of several chemical and pharmaceutical companies in 2007 based on their financial performance and intellectual property. In general, pharmaceutical companies will have a smaller number of patents than chemical companies because more of their information is kept as a trade secret.

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INFORMATION OVERLOAD AND PRIOR ART

TABLE 1.9 in 2007

15

Company Financial Performance Ranking Company

Ranking 1 2 3 4 5

Chemical

Pharmaceutical

DuPont® BASF® 3M® Rohm and Haas® General Electric

Wyeth® Pfizer® Johnson & Johnson® Bristol-Myers Squibb® Elan®

This connection between financial performance and intellectual property can be explored further by investors seeking a possible methodology to determine the long-term financial strength of a company. Reading and understanding the patents and patent estates of a particular company and their competitors gives some sense in the risk you will undertake by investing in a startup company or by simply purchasing their stock for your personal investment portfolio.

INFORMATION OVERLOAD AND PRIOR ART The last time I performed used Google® to search on the keywords “intellectual property,” there were about 47.5 million hits. As one can imagine, some of this information will be useful but a lot will not. If you refine your search with additional words like “copyrights as intellectual property,” the number of hits will be reduced to 34.5 million; searching for “trademarks as intellectual property” will result in only 17.3 million hits using Google®. There are many sources of information for a prior art search on science and technology to be used in a patent application. Prior art includes patents and printed publications anywhere in the world that are in the public domain. Some of these information sources are worldwide patents, scientific journals, scientific databases, company annual reports, online sources, trade journals, and books. One must remember that some patents and some scientific journals may not be in English. For the online sources, one must consider the reliability of the information because the majority of the data are not peer reviewed. If you do quote from the Internet, make sure you also have the date the information appeared. Remember, online information is updated frequently. For example, university websites, and especially faculty websites, change often.

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TABLE 1.10 Year 1995 1998 2000 2002

Nanotechnology Patents Number of Patents 400 800 1,600 5,200

Changes — Doubled since 1995 (3 years) Doubled since 1998 (2 years) More than tripled from 2000 (2 years)

In the first decade of the 21st century, the Carnegie Foundation stated that knowledge is doubling every 15 years. Scientific information, however, is doubling much faster. All we have to do is look at the field of nanotechnology. A broad definition of nanotechnology is difficult, but usually we are discussing nanoscale materials in the 100 nm or less range, and in particular, less than 30 nm. It is in the latter range, 30 nm or less, that quantum confinement effects show up. I will limit this definition discussion to nanophotonics, which deals with the interaction of light and matter on the size scale mentioned. As background, conventional laws of physics change when you get down to the molecular and atomic level size. A semiconductor can emit a broad spectrum of wavelengths of light in the bulk form when photo-excited. This is where particles of the semiconductor are large, measuring much greater than 100 nm. This same semiconductor, if it can be made in specific particle sizes between 30 nm and 5 nm, will emit different wavelengths of light than the bulk semiconductor material. It turns out the wavelength of light will shift to a higher energy or shorter wavelength with decreasing particle size. In Table 1.10, worldwide nanotechnology patents are summarized over a 7-year period. You can quickly see that when nanotechnology was first emerging as a technology area, the information described in patents doubled in just 3 years from 1995 to 1998. This is much more rapid than the general conclusion by the Carnegie Foundation of knowledge doubling every 15 years. If we now look at the number of U.S. patents issued since 1790, we will see the overall trend of a decreasing number of years for every 1,000,000 patents issued. Table 1.11 summarizes the number of issued patents in millions. The 7,000,000th patent was issued on February 14, 2006, and assigned to DuPont®. Going from 6,000,000 to 7,000,000 patents took only 7 years. In 2009, the USPTO issued 7,500,000 patents by March 3, and I was issued U.S. patent 7,569,158 on August 4, 2009. The patent numbers increased to 7,770,000 by August 3, 2010. Based on this trend, the 8,000,000th patent should appear toward the end of 2011 or beginning of 2012. Therefore, the number of years between the 1,000,000 milestones has been reduced to 5 or 6 years.

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17

INFORMATION OVERLOAD AND PRIOR ART

TABLE 1.11

Issued U.S. Patents

Year

Millions of Patents

1790

0

1911

1

1935

2

1961

3

1976

4

1991

5

1999

6

2006

7

Years between Each Million 121 24 26 15 15 8 7

TABLE 1.12 Increased Percent of Issued Patents to Non-U.S. Countries between 1990 and 2001 United States 79.6

Japan

Germany

Taiwan

South Korea

49.8

28.3

2,955

1,701

If one looks at the number of U.S. chemical patents issued between 1990 and 2001, the number has increased from 13,075 to 23,489 patents. More important, the percent increase for several countries filing in the United States during this time increased as well, but not uniformly. In Table 1.12, the data for four non-U.S. countries are illustrated in regard to the percent increase in the number of patents between 1990 and 2001. There was a 2,955% increase from Taiwan. Most likely each one of those inventions was also filed in the inventors’ parent country, where the language is not English. Often you will find that the claim structure for a non-U.S. patent may be different than the U.S. equivalent. Last, if one looks at the percent change in published information in all scientific fields from 1990 to 2004, the Asia Pacific area has increased from 16% to 25%. The European Union has increased from 32% to 38%, but the United States has decreased from 38% to 33%. The Asia Pacific region, which includes China, South Korea, Taiwan, Japan, Singapore, and India, is growing the fastest in terms of scientific information. China is now the second-largest producer of academic scientific papers in the world. The United States is still the largest

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18


producer. Other countries, like India and Brazil are coming on strong, with an increasing number of papers. It now should be obvious to the intellectual property writer that information obtained through prior art searches must be worldwide and be translated into English so that an accurate assessment of the novelty of your intellectual property can be performed.

CHINA AS AN EMERGING INTELLECTUAL POWERHOUSE Recently, the China’s State Intellectual Property Office (SIPO) announced that they issued more than 580,000 patents in 2009. This number is up 41% from the previous year. In 2008, China was first in chemistry-related patent applications worldwide. In fact, from 1998 to 2008 the number of chemistry patent applications jumped from roughly 4,200 to approximately 67,000, while in the United States similar patent applications increased less dramatically from about 17,100 to approximately 41,000. For China this represents a 1495% increase, but for the United States this is only about 140% increase. In 2007 China made nearly 40% of the world’s supply of computers. China also is growing in pharmaceuticals and scientific equipment manufacture. This growth in manufacture and intellectual property, such as patents, probably stemmed from Western companies pairing up with Chinese companies to form joint ventures. During this time of the joint venture, Western companies are agreeing to share their technology or intellectual property. Presently, Western firms are taking a closer look at this model of technology transfer. China’s government spent about 1.5% of its gross domestic product in 2007 on research and development (R&D). This is a small percentage when compared to other countries, but it is expanding the spending rate by about 20% yearly, an impressive rate. The trend is also seen in China’s higher level education institutions. For example, the faculty of Peking University College of Chemistry has increased the percentage of papers published in high-impact journals from about 8% to 60% over the last decade. Again, a very impressive number. Any reader interested in intellectual property—especially patents, trade secrets, and technical know-how—must take note that the Chinese government has made a concerted long-term effort to become the dominant intellectual property player in the world. At least, this is what all this information means to me. Therefore, China should become an emerging country in which to conduct routine prior art searches.

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PATENTS AS SOURCES OF TECHNOLOGY

19

PATENTS AS SOURCES OF TECHNOLOGY We have seen that IBM® uses patents as a source of revenue. Many companies attempt to duplicate the IBM® concept, but most likely IBM® does it the best. The patent estate of IBM® is very large, and not all of their patents are used in their existing or new businesses. Recently, IBM® has said they were willing to give up their title of holding the most patents and have become more critical of the patent system. Besides litigation costs, my guess is that the U.S. maintenance cost for the large number of patents is astronomical. This does not take into consideration foreign filing maintenance fees. Besides IBM®, there are many other worldwide companies that obtain U.S. utility patents (Table 1.13). In fact, of the top 10 companies obtaining utility patents in the United States, 9 are foreign. Table 1.13 lists only half of these companies. These companies are consistent in generating a high number of inventions over multiple years. The reason they file patents in the United States is that their products are marketed here. Besides IBM®, I should mention, Dow Chemical®. As of the end of December 2008, it had 2,266 active U.S. patents and 9,478 active foreign patents. This represents a four to one ratio of foreign patents to U.S. patents. Therefore, one should not forget the maintenance costs for foreign patents. Next, let’s look at some of the top universities holding U.S. utility patents (Table 1.14). Several points are relevant. First, the University of California system obtained, on average, 100 patents per year between 1969 and 1999. In 2003, they were granted three times that amount! Second, universities usually have diverse patent estates. This then becomes a source of licensed technology much like IBM®. Third, universities spawn many startup companies based on the technology developed by their faculty. So if your company is looking for emerging technology, the intellectual property office at universities should be visited frequently either physically or online. TABLE 1.13

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Number of U.S. Utility Patents by Company

Company

2001

2004

2007

IBM® Canon Kabushiki Kaisha Samsung Electronics Matsushita Electrical Fujitsu®

3,411 1,877 1,450 1,440 1,166

3,200 1,800 1,604 1,934 Not determined

3,148 1,987 2,725 1,941 1,865

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TABLE 1.14

Number of U.S. Utility Patents by Universities

Institution University of Calif. System MIT Stanford University University of Wisconsin California Institute of Technology Johns Hopkins University University of Minnesota

1969–1999

2003

2,768 2,151 961 875 853

323 152 117 87 169

593 556

95 54

PATENTS IN FORCE WORLDWIDE Globally there were about 6.3 million patents in force in 2007. This means that maintenance fees are being paid on a regular basis. A further breakdown has the United States with 1.8 million, Japan with 1.2 million, and the rest of the world with the balance of 3.3 million patents. Some of these patents probably have invalid claims and some infringe other valid patents. Another way to look at these numbers is that the United States has about 29% of the in-force patents, while the rest of the world has 71%. Again this demonstrates that prior art searches must be done worldwide even though many patents will be in a foreign language. CHAPTER SUMMARY Fourteen tables of data are presented to illustrate various facts and trends over selected periods of time to furnish background about intellectual property. You probably have more unanswered questions than answered questions at this point, but the unanswered questions will be answered in the remaining chapters. If you are already a user of intellectual property, you do not have to spend a lot of time on Chapter 1. For the beginner, this chapter sets the stage for later discussion points. Most of the subject matter in this chapter will be covered in more depth later. ADDITIONAL READING 1. “Call China Now for Just Pennies.” Smart Money, June 5, 2009. 2. Slater, D., and Trachtenberg, J. “Judge Halts ‘Potter Lexicon’ for Copyright Violations.” Wall Street Journal, September 9, 2008, p. B11.

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QUESTION

21

3. Weber, H. “Safeguarding Intellectual Property.” Morning Call, July 10, 2006, p. A8. 4. Pollock, L. “Judge Cuts Penalty Award against Boston Scientific.” Wall Street Journal, September 2, 2008, p. B3. 5. Cyranoski, D. “Japan Fast-Tracks Stem-Cell Patent.” Nature, 455 (2008): 269. 6. Crovitz, L. “Why Technologists Want Fewer Patents.” Wall Street Journal, June 15, 2009, p. A13. 7. McCoy, M. “The Patent Leader.” Chemical and Engineering News, August 27, 2007, p. 28.

QUESTION 1. Two sections in this chapter are “Intellectual Property: Is it Important or Not” and “Why Intellectual Property Protection Is Currently Important.” a. Conduct a web search to determine if there are other proposals being considered besides patents to protect inventions or innovations. b. Using on the information you find, discuss a plausible model for innovation not based on patents when there are incentives to bring about the innovation.

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CHAPTER 2


CHAPTER OBJECTIVE Intellectual property has its own vocabulary. The vocabulary introduced in Chapter 1 is expanded here in more detail. Additional definitions and further discussion of selected keywords are provided in this chapter and are also taken up in more detail in later chapters. Expanding your intellectual property vocabulary is a building process; as you would expect, patent attorneys will have much more in-depth knowledge. The objective of this chapter and book is to give you the necessary background to continue learning and practicing intellectual property.

INTRODUCTION Every science discipline has its own unique vocabulary, and intellectual property is no different. Books on patents, copyrights, and trademarks usually have a section on the definition of keywords. This book does too, but I craft each definition by how the word is used or applied in


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SHORT STORY FROM PANAMA

23

the rest of the book. Often definitions are found in a glossary at the back of a book; however, I have decided to place them here so in you can more easily reflect back on Chapter 1, where some of the terms were introduced. In addition, this chapter is a bridging chapter to future chapters. Being acquainted with the terms used throughout this book will help in your knowledge building. Important keywords are defined and described again in each chapter, along with additional vocabulary.

SHORT STORY FROM PANAMA In late January 2009, I was in Panama to travel through the Panama Canal. While in Panama City, an article appeared in The Panama Post titled “Panama Invents.”1 The article reported that 237 patents were issued in 2008 from 400 applications. It also mentioned that the practice covering patents was institutionalized in 1994 with the passage of the Law on Copyright and Related Rights. Panama now appears to be paying attention to intellectual property protection. For those of you deciding to file in Panama, there are four different types of patents. These can be described briefly as patents covering 1. inventions to solve a technical problem (like our utility patents) 2. uses of an existing tool or device to provide an improved or different function 3. three-dimensional forms of an appliance or a device 4. two-dimensional drawings that define lines, colors, and shapes added to a product to distinguish it from another (like our design patents) Probably the most important fact learned from this country with its emerging intellectual property protection is that in a national survey conducted in urban areas, 75% of the respondents were aware of intellectual property rights. If the U.S. population were asked a similar question, would a 75% awareness of intellectual property rights be obtained from the urban population? The answer is probably no. The Panamanians must be commended on their intellectual property education and getting the word out about patents and copyrights to the general urban population. The survey was answered by 1,152 people ages 24 to 64. The survey had a 3% margin of error.

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PATENT TERMINOLOGY In general, a patent protects for a period of time new ideas or concepts that have had a reduction to practice. In the United States, a utility patent grants to the patentee the right to exclude others from making, using, offering for sale, selling, and importing the invention for a term of 20 years from the date on which the application was filed. The utility patent produces some sort of utilitarian or functional result. There are two other types of patents: a plant patent and a design patent. A plant patent protects any distinct or new variety of plant discovered by asexual (not by seed) reproduction. A plant patent offers protection for 20 years from the date of filing the application. Therefore, a utility and plant patent both have 20-year terms. However, a plant patent has only one claim, whereas a utility patent can have many claims. The third type of patent is called a design patent, and it protects any new, original, and ornamental design for an article of manufacture. Like a plant patent, a design patent has only one claim. However, the term of the patent is only 14 years from the date of issue, not the filing date of the application. To be a utility patent, the new invention or discovery must belong to one of the classes listed in Table 2.1. A manufactured article is anything made by a human that accomplishes a result without movable parts in the manufactured article. A machine is a mechanical device with movable parts. A composition of matter can be a chemical compound or a mixture of ingredients. Last, a process or method utility patent has one or more steps in making something, such as a chemical compound. Most of a chemist’s new inventions would be protected by a composition of matter or process utility patent. For a patent application sent to the USPTO to be examined by the patent examiner, the specification of a patent application must be submitted. The specification provides sufficient disclosure or narrative about the invention so that a person with ordinary skill in the art can reproduce the invention without spending undue experimentation. So a person with ordinary skill in the art is really a person with a technical TABLE 2.1

Utility Patent Classes

Manufactured article Machine Composition of matter Process or method Any new and useful improvement of the above four

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PATENT TERMINOLOGY

TABLE 2.2

25

Formal Specification Headings: Format

Title of the invention Background of the invention Brief summary of the invention Brief description of several views of the drawings Detailed description of the invention Examples Claims Abstract

background in the field of the invention. The specification also includes the claims and an abstract. The latter is a one-paragraph summary of the invention. Other formal specification headings are outlined in Table 2.2. These headings are used by all inventors when describing their inventions in the specification, and thus we will refer back to this table later. When writing a specification, the “Brief Summary” section is treated as a high-level overview. The details of the invention are very brief. On the other hand, in the “Detailed Description” section, much more detail about the invention is included but follows the outline discussed in the summary. The section called “Examples” should consist of the experiments and detail the steps necessary to make the invention work. The invention described in the utility patent application and more specifically in the specification must be new or have novelty, be useful and be nonobvious over the prior art, and fit into one of the classes mentioned in Table 2.1. Furthermore the paper work must be prepared in, a specific format, and the appropriate fees must be paid upon filing. However, there are more than these requirements. For example, 35 U.S.C. § 112 alone has six paragraphs describing various requirements for the specification of a patent application (see Chapter 5). Later on we will learn that the requirements of novelty, usefulness, and nonobviousness also form the basis for rejection by the patent examiner. A rejection occurs when the patent examiner does not think the invention is patentable because, for example, prior art anticipates or renders obvious the invention outlined in the written description and claims. The novelty requirement is satisfied when each element or statement describing the invention in a patent claim cannot be found in a single prior art reference. In a later chapter we’ll discuss each element of how the invention works in more detail. Therefore, the invention is new. Usefulness, on the other hand, means the invention must demonstrate some useful purpose. Another term, nonobviousness, requires a little more discussion, both here and in a later chapter. For an invention to

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TABLE 2.3 April 2010

U.S. Maintenance Fees as of

Fee Due Before 3.5 years 7.5 years 11.5 years

Fee $980 $2,480 $4,110

be nonobvious, it must be different from the prior art viewed as a whole. Many times elements of a patent claim are found in two or more different prior art references. You then must ask yourself: Would a person with an ordinary skill in the art be motivated to combine the previous references to obtain a predictable result? If the motivation cannot be found, then you have a better chance not to be cited with an obviousness rejection. The invention with an unexpected or surprising result stands the best chance to clear the obviousness requirement because it was not predictable. Recently, the courts have gone further by allowing the combination of references from unrelated fields. The inventor pays various fees to the USPTO during the examination period and lifetime of the patent. There is a filing fee that must accompany the application for a patent. Before the patent office converts an allowed patent application into an issued U.S. patent, an issue fee must be paid. Maintenance fees are paid at regular intervals for utility patents but not for plant or design patents. These fees and intervals are listed in Table 2.3. It was mentioned earlier that a search fee and an examination fee are also paid by the inventor. Fees totaling $2,600 are paid before the first scheduled maintenance fee at 3.5 years. The USPTO categorizes inventions by classification. The classification system is called the U.S. Patent Classification System (USPCS). There are about 300 main classes and over 60,000 subclasses. Classification among the main classes is based on the most comprehensive claim found in the patent. Each main class or subclass is titled and numbered. The term prior art has been used in Chapter 1 and here. Prior art is defined by statute and includes patents and any printed publications anywhere in the world that are in the public domain, meaning you can find it with reasonable diligence. There may be publications that are in databases or libraries that after much searching cannot be accessed. These publications would not be part of the public domain. Prior art also means the publication can be in any language. Prior art can include in-force patents, expired patents, and published patent applications anywhere in the world.

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The written description of the invention within the patent must allow a person with ordinary skill in the art to reproduce your solution to the problem. A person skilled in the art is a person with the expertise to understand the invention. This person could have an undergraduate degree and years of experience or have earned an a master’s or doctorate. If you, the inventor, have a Ph.D. in some discipline of chemistry, you would expect that a person with ordinary skill in the art also would have a Ph.D. Remember, some high-level technical fields will require a higher threshold of skills. Besides the written description, all regular patent applications have at least one claim. A claim is the set of words that describe the invention. Claims have a structure (discussed later), are specific, and are worded clearly and consistently with the written description found in the specification. Claims can be independent—that is, they do not refer to any other claim—or can be dependent. Claims also can be very broad or narrow. Broad claims are what everyone wants, but they must be substantiated by the written description. Also if the claims are too broad, they may be invalid over existing prior art. On the other hand, narrow claims may avoid existing prior art, but they also may allow a competitor to engage in activities that do not infringe the claim. If you have invented technology that is a paradigm shift from what is known, your claims can be very broad because there is no prior art to worry about. One last comment about patents. What can you patent? We have mentioned that inventions fall under utility, plant, or design and that the utility patent is divided into five statutory classes. The invention must be novel, useful, and nonobvious. Laws of nature—that is, scientific and mathematical principles—cannot be patented. We think of these laws as part of the public domain, which everyone can use. But what about the products invented by robots?2 The U.S. patent statute states that a person is entitled to a patent. So even if a robot has an independent ability to generate, test, and verify ideas using cognitive powers like ours, patents still cannot be applied for by robots because the inventor is not human. The situation may be even more complicated because once the invention is made by the robot with cognitive powers, the patent cannot be applied for by a human because the human is not the inventor. Human individuals with inventions may apply for patents. It was mentioned in Chapter 1 that a patent troll is usually a nonpracticing inventor who does not make or sell products. Patent trolls will buy up intellectual property and look for companies infringing the patent claims of the purchased patents.3 In 2008, there were approximately 220

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patent trolls operating in the United States. Patent trolls can also apply for their own patents directed to technology they do not themselves commercialize. We have used the word infringement several times. If a patent gives the inventor the right to exclude others from making, using, offering for sale, selling, or importing the invention for a period of years, then infringement occurs when someone besides the inventor makes, uses, offers for sale, sells, or imports the invention covered by the claims. This infringement is done without the original patent owner’s permission. This also assumes that the claims are valid, the maintenance fees have been paid, and the term of the patent is still in effect. In the United States, inventors can have a statutory bar that prevents them from receiving a patent. This occurs when the invention appears in a single printed and accessible publication or patent or it has been on sale or in public use for more than 1 year before the patent application filing date. This is also known as the 1-year rule. If a single printed and accessible publication or patent exists and describes the invention, then the invention is no longer novel. These examples of the statutory bar actually are the conditions that anticipate your invention. Remember, the invention must be novel. It is not novel or new under the definition of the statutory bar. An inventor is usually a scientist or engineer employed by a company who assigns the invention to the company. The inventor is the assignee. Most inventors sign some sort of employment agreement when they are initially employed by a company. Usually technology-driven companies hire scientists to invent. Last, a patent may have a certificate of correction attached to it. This certificate spells out minor technical or even typographical errors after the USPTO issues the patent. Sometimes during the examination period, agreed-upon changes to the original patent application do not make their way into the patent application. Therefore it is important for the inventor to proofread the issued patent for any errors. Other vocabulary words and definitions are provided in the following list. Some of these terms will be used later in the book, and others you will encounter when talking with a patent attorney. • Anticipation. The invention is too similar to an earlier invention found in a single prior publication or the invention has been on sale for more than 1 year. • Diligence. The inventor can demonstrate that steady progress is being made toward the reduction of the invention to practice.

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• Expert witness. A person who has highly specialized knowledge about the subject matter claimed in the patent application. • Filing date. The date that the patent office indicates on the filing receipt sent to the applicant of the patent application. • Freedom to operate. An issued patent gives the owner exclusive rights to prevent others from practicing their claimed invention. You may be able to practice your own invention if you have the freedom to operate. This is true if you do not infringe another patent’s valid claims. • GATT. General Agreement on Tariffs and Trade gives the patent applicant in the United States after June 7 1995, exclusive rights for 20 years from the filing date of the patent application. Before this date the exclusive right was for 17 years from the issue date. • In-force patent. Occurs when the exclusive term for your patent has not expired, the maintenance fees are up to date, and the patent claims are still valid. • Interference. When two inventors file an application to patent the same or about the same invention. The USPTO will declare interference between the two filing parties. Resolution must be established by who was first to conceive of the invention and then reduce it to practice. About 1% of filed patent applications relate to this situation. • Issued date. Date appearing on the patent, also called date of patent. • Nonpublication request. If the applicant completes a nonpublication request and agrees not to file in a foreign country at the time of filing the patent application, the USPTO will not publish a patent application after 18 months. • Office action. A patent examiner will send a letter to a patent applicant regarding the pending patent application. • Patent agent. A person who is not an attorney but who has technical training and can draft, file, and prosecute patent applications for an inventor. The patent agent passes an exam and is issued a license by the USPTO. • Patent attorney. A person who is not only licensed to practice law but is also licensed by the USPTO to prosecute patent applications. These attorneys also have a technical degree. • Patent examiner. Employee of the USPTO who examines patent and trademark applications. Examiners have technical degrees and may also be attorneys.

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• Priority date. A date where a patent application was first filed in any country. • Reissued patent. If the inventor wants to revise the claims or even the rest of the specification of an in-force patent, he or she can apply for a reissue patent within 2 years of the issue date. The inventor does not receive any additional years of exclusiveness. Since 2003 the number of reissued patents are 0.2% to 0.3% of the total patent applications filed with the USPTO. A reissued patent will start with the prefix RE followed by the patent number. • Restriction. A request from the patent examiner to limit the patent application to a single invention. For example, when the patent application has both composition of matter and process claims. • Specification. Includes the written description of the invention, the claims, and an abstract. • Valid claim. It has been determined from the prior art that the invention was not anticipated. Additional definitions of common terms in patent law will be given in later chapters. But the initial vocabulary outlined here should prepare the reader to better understand the following chapters.

TRADE SECRET DEFINITION Defining a trade secret is more difficult than defining a patent. A trade secret is intellectual property, but it’s defined more by how the information has both economic value and can be maintained confidential. Therefore, a trade secret can be a chemical formula, a formulation of specific ingredients, a computer program, a chemical manufacturing process, the best conditions in which to run a chemical manufacturing process, customer lists, business plans, technical data, or pricing information. The owner of the trade secret has an opportunity to obtain an economic advantage over the competitors as long as the information remains confidential. Most intellectual property is a trade secret at the time of creation. You have two options after creation: You can either maintain the intellectual property secret or you can obtain a patent in return for divulging the content of the secret. The following list contains additional vocabulary words useful in understanding trade secrets.

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COPYRIGHT

31

• Independent conception occurs when a competitor is using your trade secret but it cannot be proved that the trade secret was improperly acquired. It is common to have a trade secret, but then someone else performs sufficient R&D to come up with the same information or idea. • Know-how can be technical expertise that is needed to accomplish a task but not confidential. Therefore, it is a combination of trade secret and nonsecret technical knowledge. • Any information in the public domain can be found by a trained specialist. This information can be used by anyone without permission from the author or originator of the information assuming the information is not found in an in-force patent or a copyright. If a trade secret becomes part of the public domain, the information can be used by others. COPYRIGHT I was once asked to write several paragraphs about legal protection for science fair participants going to compete at the international level. The brochure was titled “Does Your Science Fair Project Require Legal Protection?” In the brochure there was a brief description of patents, copyrights, and trade secrets. The section on copyrights is paraphrased here and should give the reader an introduction to the concept of a copyright. Additional discussion will be deferred until Chapter 11. The purpose of copyright laws is to advance the progress of knowledge by giving authors control over their written words and therefore enable them to create new written works. The tangible expression of the thought is the written word in a research paper, in the technical summary or abstract, or in the required poster presentation that displays your research findings. Each can be copyrighted if you follow the principles below. The written expression of words involves selecting from the known vocabulary a particular sequence of words that the author wants to convey to the reader. The copyright protects an author’s particular selection and arrangement of words into material that tells his or her story. When you express words and arrange words into a story, you are meeting the three basic requirements to obtain copyright protection. The first requirement is fixation, or writing on a tangible medium such as paper. You can register your work with the Library of Congress, which serves as the Copyright Office, so that the public knows that you are the author of the copyrighted material. The next requirement is

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originality. This means that the work was independently created by the author, not copied from other published work. Besides being independently created by the author, the work must have some creativity. This is the third requirement. If you just list information or facts, like when preparing a telephone directory, this would not be creative and could not be copyrighted. Normally an author cannot copyright facts; however, the author’s expression through a unique selection and arrangement of individual facts could be copyrighted. If you do use another author’s expression, such as a particular sequence of words, you need his or her permission. You cannot copy verbatim. An exception is fair use. However, if you express in your own words another author’s expression and merge it into your own story by writing a different arrangement of words, you are on safer ground to copyright the material as yours. If you do use another author’s expression within the limits of fair use, you should always acknowledge the author in a footnote or reference. Fair use takes into account the amount of the borrowed author’s work and the purpose of borrowing the work, such as scholarship, and your intended nonprofit use of the borrowed author’s work. Copying verbatim or using extensive amounts of material beyond fair use from another author’s work is infringement of the other author’s copyright. Remember, you always can ask permission from an author to use some of their copyrighted work verbatim. To indicate that your work has been copyrighted, add “Copyright © 20– by [your name]” to your original work, placing it at the bottom of the work or on the first page or on any other single page. Other examples of copyrightable material are the abstract or all of the selected pages of your display presentation. The time duration of a copyright is the lifetime of the author plus 70 years. Sometimes it is easier to define a copyright by stating what it is not. A copyright does not protect ideas; facts that are scientific, biographical, or historical; or news of the day. As you think about this a little more, functional subject matter such as procedures, rules, and governmental work are also not copyrightable. Remember: Ideas reduced to practice are protected by patents.

TRADEMARK DEFINITION A trademark will distinguish a particular product from others in the global marketplace. Trademarks protect the public because the con-

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sumer will be confident that when purchasing goods bearing a trademark, he or she is buying a product with recognition and expected quality. A trademark is a nonfunctional identifier. It can be a word, name, shape, symbol, or design, for example, or any combination of those used to identify a particular manufacturer’s goods from those of others. The trademark makes a connection in the consumer’s mind between the trademark and the product or goods. If I mention Kodak® or Fuji®, you probably think of photographic film. Or if I mention Fuji®’s green box, you likely think of photographic film. A trademark can be registered at the federal level and remains in force for 20 years if registration was before November 16, 1989; it can be renewed for additional 20-year periods of time. If a trademark was registered after November 16, 1989, it must be renewed in 10 years and can be renewed for additional 10-year periods. Two trademark identifiers are used. The ™ after the word, name or symbol means the trademark registration could be pending or the company is claiming ownership of the mark. The raised TM mark has no legal significance. When a trademark is placed on a federal list, it is registered with the USPTO and the symbol ® is placed after to the trademark.

CHAPTER SUMMARY In this chapter, some basic vocabulary used in talking about intellectual property, particularly in regard to patents was discussed in some detail. Additional vocabulary and definitions are introduced in later chapters. It is hoped that you are building an understanding of intellectual property and will find more answers to your questions here and in the later chapters.

ADDITIONAL READING 1. Blanco, L. “Panama Invents.” The Panama Post, January 26–February 1, 2009, p. 7. 2. Stevenson, R., Murphy, J., Clare, T. “Robot Inventors: Patently Impossible?” Science 324 (2009): 1014. 3. Clark, D. “Start-Up Takes on ‘Patent Trolls.’ ” Wall Street Journal, November 24, 2008, p. B5.

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QUESTIONS 1. Define or explain the following terms. (This may require extra reading.) a. Patent pending b. Patent agents 2. What are the requirements for copyright application? 3. What is the purpose of the USPTO? 4. How can trade secrets be licensed?

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CHAPTER 3

YOUR FIRST DECISION: TRADE SECRET OR PATENT?

CHAPTER OBJECTIVE When new intellectual property is first generated, should it be kept as a trade secret or should the inventor file a patent application? In this chapter, the advantages and disadvantages of each will be compared so that you and the commercial development team responsible for strategic intellectual property decisions can develop a pathway forward.

INTRODUCTION As mentioned in the Preface, patents allow individuals, companies, and countries to develop the results of science and technology in an orderly fashion. In other words, society wants innovation or products in the marketplace, not inventions. Invention usually drives innovation, and that is one reason governments have put in place a system for patents, trademarks, and copyrights. Since each patent specification is a legal document and is a very detailed disclosure of the actual invention or discovery, it is a source of technical information and not a source of


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TABLE 3.1

Utility Patents Issued in the United States by Company

Year

DuPont®

1990 1995 1999

533 454 338

Rohm and Haas® 32 117 85

Merck® 134 125 216

Pfizer® 82 75 112

information for innovation. The invention or technical information must be turned into innovation or new products for the marketplace. Over the years, the competitive advantage in the United States has moved away from at least basic manufacturing toward more technologydriven, information-rich industries. One example is pharmaceuticals, a very information-rich industry. Pharmaceuticals are situated globally. This strengthens the premise mentioned in previous chapters that intellectual property is global. A patent, for example, creates no wealth unless licensed to receive royalties or the invention is sold as a product; however, without the patent it becomes difficult to transition to innovation. Pharmaceutical companies are issued patents covering formulations, processes for drug manufacture and drug intermediates and uses of these products. The patents are all of the utility type. In Table 3.1, several companies are compared in regard to their utility patents issued over a 10-year period. In general, pharmaceutical companies are issued fewer patents than a large chemical company like DuPont®. One could say that from a patenting point of view, drug companies behave like a small chemical company, such as Rohm and Haas®. One explanation is that more of a pharmaceutical company’s know-how is kept as a trade secret. (Rohm and Haas® can no longer be considered a small chemical company since in 2009 it was purchased by Dow Chemical Company.)

TRADE SECRET As mentioned previously, intellectual property is a trade secret at the time of creation. A trade secret is any information not in the public domain that has economic value and is kept confidential by a company wishing to extract economic value from it. Why would anyone want to keep information secret? One possible reason is to forgo the total expense of money and time to obtain a patent for the discovery or

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TRADE SECRET

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invention. In Chapter 2 it was discussed that in the United States the dollar cost to file and maintain a utility patent enforced for 20 years is about $10,170. This does not include patent attorney fees for prosecution or any litigation expenses if the issued patent is challenged in court because of infringement. An inventor may want to both patent the laboratory discovery such as a drug or chemical intermediate but keep as a trade secret certain, selected know-how in the actual manufacturing process for the drug or chemical intermediate. Remember that in a broader sense, a trade secret can consist of a chemical formulation, chemical manufacturing process, composition of matter, technical data, business plans, customer lists, or software methodology. As long as the information provides a competitive economic advantage and is kept confidential, it can be kept as a trade secret. Some intellectual property attorneys will tell you that a trade secret is not a substitute for patent protection. However, the formula for Coca-Cola® has been held confidential for a very, very long time. In Chapter 1, the intellectual property term trade secret was introduced with an abbreviated story about three Coca-Cola Co. employees who were alleged to have tried to sell trade secrets to PepsiCo. Other recent examples appearing in the news are about employees from DuPont®, Dow®, and Eastman Chemical. In the recent DuPont® example, an employee was alleged to have stolen trade secrets about processes and materials for the next generation of organic light emitting diode (OLED) displays and to have shared these trade secrets with a new employer, China’s Peking University.1 In 2010, the employee pleaded guilty to trade secret theft. The next example concerns a former employee of Dow Agro Sciences® charged with the theft of trade secrets to benefit a foreign government.2 The employee was charged under the federal Economic Espionage Act. The third example also highlights the importance of trade secret information. Here Eastman Chemical filed a lawsuit against Indorama Polymers in Thailand charging them with stealing polyethylene terephthalate manufacturing trade secrets.3 Eastman Chemical alleges that former employees now working for Indorama® disclosed trade secret information. Lawsuits in the last two examples have not settled yet. The important point here is that if a company keeps information confidential that has commercial value as a trade secret, the company has a right to seek financial damages and/or an order to prevent the use of the stolen information. Anyone who keeps information as a trade secret must maintain its confidentiality. How can you keep information

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TABLE 3.2

Methods for Keeping Trade Secrets Confidential

Keep a limited number of hard copies and stamp pages “Confidential” Keep in a secure place Restrict internal access; grant access on a need-to-know basis only Password protect electronic files Nonemployees must sign confidentiality agreements Educate employees

TABLE 3.3 Advantages and Disadvantages of Trade Secrets Advantages Indefinite Secret

Disadvantages Could be patented by someone else If secret becomes part of public domain, everyone could practice it

Low cost No requirement like novelty as in a patent

confidential? Table 3.2 lists several methods. Restricted internal company access and educating your employees have the most impact on keeping information confidential. Remember to have a plan for confidentiality and enforce it. Have your institution’s legal department educate employees about trade secrets and document the enforcement procedure. There are a few advantages and disadvantages to remember about trade secrets (Table 3.3). The advantages are straightforward, but remember the two criteria that must apply: There must be economic value, and the information must be kept confidential. The two disadvantages mentioned in the table are important for the inventor and for the commercial development team to consider. Most inventors can reverseengineer products to determine what materials are used in the product. Also, inventors can arrive at the components within a formulation or composition of matter. Therefore, the trade secret could be patented by someone else, such as your competitor. If the trade secret does end up in someone else’s patent, the trade secret is lost. Therefore, the two disadvantages should be considered seriously. Probably some differentiating part of a patented chemical manufacturing process is the easiest to keep as a trade secret because that cannot be easily reverseengineered. However, this generality may not always be true.

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PATENT

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PATENT There was some discussion about patents in Chapter 1 and Chapter 2. Basically, a patent is a legal grant from a government giving the inventor an enforceable right to exclude others from practicing the invention. The invention is described in the elements of the claims. For a utility patent in the United States, the enforceable right exists for 20 years. The inventor agrees to make public disclosure of the invention in return for this legally enforceable right. It is assumed here that the invention has fulfilled the requirements needed by the USPTO to become a patent.4 Some of these requirements are summarized in Table 3.4 for a utility patent. The requirements for usefulness, novelty, and nonobviousness will be discussed in much more detail in Chapter 5 when we look at reasons why a patent is rejected. The usefulness, novelty, and nonobviousness of the invention, in my opinion, should be explained in the written specification of the patent application. The specification educates any reader, in particular the patent examiner, about what the invention is and how someone else can make the invention work. When you describe what makes your invention work, you are enabling someone else who has similar expertise as yourself to duplicate your invention. Within the specification you must also describe the preferred way to make and use the invention. Most people call this the best mode. The specification therefore teaches. The patent claims are exactly what you are staking out as your invention but done in legal terms. The claims state what it is that others are excluded from practicing with regard to your invention. Like trade secrets, there are a few advantages and disadvantages to remember about patents (Table 3.5). The inventor in conjunction with his or her commercial development team and patent attorney must eventually decide if the intellectual property is filed as a patent or kept as a trade secret. Tables 3.3 and 3.5 list the most important advantages and disadvantages of each. The ultimate selection really comes down to which industry your intellectual property will impact. Is it an industry

TABLE 3.4

Some Requirements for Becoming a Utility Patent

Fit into one of five statutory classes (see Table 2.1) Useful Novel Nonobvious Application prepared in a specific format and fees paid

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TABLE 3.5 Advantages and Disadvantages of a Utility Patent Advantages

Disadvantages

Excludes others Licensing opportunities

Enforceable for only 20 years Public disclosure Costly Time required to write

___________________Growth by_____________________

Company Size

Technology

Rapid Change

Start-up

Trade Secrets ~

Nontechnology

Slow Change

Patents

Trade Secrets>>Patents

Patents

Patents

Patents

Patents

Patents

Small

Patents > Trade Secrets

Large

Patents>> Trade Secrets

Figure 3.1. Patents and trade secrets as protection mechanisms.

in which technology is changing every 2 to 3 years or an industry in which technology changes at a slower pace, such as 10 to 15 years? We will discuss another option, the provisional patent application, in Chapter 4.

COMPARISON BETWEEN A TRADE SECRET AND A PATENT The outline in Figure 3.1 may be helpful to you. Although there are no hard-and-fast rules on choosing a trade secret or a patent in a given situation, a number of factors were considered in creating the figure.

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These included the speed with which the technology is changing, if the companies derive its growth from technology, the size of the company, and the status of its cash reserves. Remember, a lot of know-how in the pharmaceutical industry is kept as a trade secret, while composition of matter and chemical processes are protected by patents. An established chemical or technology company will rely on patents more than trade secrets. A company like IBM® will probably file more patents. As a result, IBM® could and does generate more cash flow through the licensing of patents when these patents represent technology outside their core businesses. Startup companies, on the other hand, must attract money or venture capitalists, and patents are concrete assets to venture capitalists. If your invention opens up a new technology field or is a paradigm shift in technology, then you want to file a patent with valid claims that not only exclude others from practicing your technology but also allow you to practice the technology. The latter is very important when a paradigm shift is involved. Remember, a paradigm shift in technology represents new technology that has never been reported anywhere in the prior art.

CHAPTER SUMMARY In this chapter, we compared the major advantages and disadvantages of trade secrets and patents. In so doing, other vocabulary words were introduced and defined. Special situations may arise that will influence your choice of using trade secrets or patents, depending if you are employed by a small start-up company, a large chemical company, a specialized technology company like pharmaceuticals, a nontechnology company, or a company that both sells new products and licenses technology. In each of these special situations, patents or trade secrets may be preferred over the other. Figure 3.1 captures these preferences for patents or trade secrets.

ADDITIONAL READING 1. Reisch, M. “Chemist Charged with Crime.” Chemical and Engineering News, October 12, 2009, p. 12. 2. Thayer, A. “Scientist Held for Trade Secret Theft.” Chemical and Engineering News, July 26, 2010, p. 9.

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3. Reisch, M. “Bottle Battle Brews.” Chemical and Engineering News, January 4, 2010, p. 12. 4. Francoeur, A. “Got an Idea? Want to Patent It? Read This First.” Photonics Spectra, September 2008, p. 77.

QUESTION 1. In Figure 3.1, I inserted for slow-changing technology patents but not for trade secrets by company size. Why do you think this was done?

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CHAPTER 4

WHAT COMES FIRST: A PROVISIONAL OR NONPROVISIONAL PATENT APPLICATION?

CHAPTER OBJECTIVE A provisional patent application (PPA) was established in 1995. Some inventors are not aware of its existence and some companies prefer to file a nonprovisional patent application instead of a PPA. In this chapter, the advantages and disadvantages of a PPA are discussed in relation to a nonprovisional patent application, also called a regular patent. New vocabulary is also defined.

INTRODUCTION By now your practical knowledge base about patents, trade secrets, copyrights, and trademarks has grown. In the previous chapters this was accomplished through an intellectual property overview with current examples of each form, definitions of vocabulary, and a comparison between a trade secret and a patent. In Figure 4.1, I have summarized


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Trade Secret (all new information at creation)

Trademark (identifies product)

Patent (functional feature of invention)

Copyright (author's creative expression)

(types)

Utility Design Plant

Five classes

Symbol to indicate possible overlap among Trade secret and patent Trademark and patent Copyright and patent Trademark, patent, and copyright

Figure 4.1. Connecting the four cornerstones of intellectual property.

the underlying principle of each centerpiece of intellectual property; you will note that there can be overlap between these centerpieces. In Chapter 1, the writings on a coffee cup from Java City™ were discussed briefly. The text on the back of the coffee cup was copyrighted with ©2007 Java City Inc. Also, there may have been a patent or trade secret implied covering the “unique time-signature process” for roasting the coffee beans. In this chapter, we will compare within patents the PPA and the nonprovisional patent application.1 The latter patent is the one we are more familiar with and probably the type you have helped a patent attorney to write. The issued patent from the USPTO results from a nonprovisional patent application. The cost for writing a patent, including both the fees paid to the USPTO and patent attorney fees, could run between $15,000 to $20,000 for an issued utility patent enforced for 20 years from the filing date. You likely know of examples for which these costs were higher. The lower range reflects an instance when you take the initiative and write the specification and maybe take a chance

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at writing some or all of the claims. The patent attorney then becomes a checker to what you have diligently spent hours preparing. Throughout this book, I emphasize that the intellectual property writer always works with an attorney regardless if he or she is involved in patents, trademarks, or copyrights. It turns out that probably less than 5% of the issued utility patents actually make any money. Some experts say it is less than 3%. Now you must ask yourself the question; Is there a cheaper way to protect my invention while I am attempting to determine if there is a commercial market for my product? The answer is yes. Enter the provisional patent application. Its filing cost is $220. The PPA establishes an interim record for your invention and a filing date. The filing date could also be the priority date. The priority date is defined as the earliest filing date. When the PPA is sent to the USPTO and the filing date is assigned, this date becomes the priority date for foreign filing, even though the foreign filing date is after the priority date. International treaties govern patents filed in different countries. The United States is a member of many international treaties (more about these treaties in Chapter 12).

PROVISIONAL PATENT APPLICATION The USPTO established the PPA in 1995. The main purpose of the interim patent application is to provide a low-cost option to the nonprovisional patent application. Foreign applicants in their own countries already had this option. Two of the best benefits of a PPA are the establishment of an early priority date and the fact that one has 21 years of patent protection if the PPA is rolled over into a nonprovisional patent application and the latter becomes an issued patent. Remember, the patent holder has an exclusive right for 20 years based on the filing date of the nonprovisional patent application, but the priority date is the date of filing the PPA. This strategy also allows the holder 1 year for the PPA and 1.5 years before the publication date of the nonprovisional patent application to determine if there is need for this invention as a product in the marketplace. After 1.5 years, the nonprovisional patent application is made public. Further, if the inventor decides not to foreign file and signs a nonpublication request, available from the USPTO, then he or she has about 1 year of the PPA plus 2.5 years as the average time the application takes to go through the USPTO examination period to keep the details of the invention out of the public domain. So in total the inventor has about 3.5 years to test the marketplace before the competition finds out what he or she is

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TABLE 4.1 Advantages of the Provisional Patent Application Abstract not required Prior art disclosure not required Claims not required Formal form of nonprovisional patent application not required Inventor’s oath not required

TABLE 4.2

Disadvantages of the Provisional Patent Application

Incomplete description of the operation elements of the invention Experimental data may differ from the written description Other inaccuracies (such as wrong inventor) may crop up

actually doing. What a deal! However, remember the average 2.5-year examination period could be upset with a 6-month notice of allowance. Unexpected and pleasant surprises sometimes do happen from the USPTO. The PPA has many advantages besides establishing an early filing date, which can be used for foreign applications. It is inexpensive. Presently, it costs $220 for filing. The PPA is not published like a nonprovisional patent application, but if rolled over into a nonprovisional patent application, the PPA is included in the file wrapper for the nonprovisional patent. A file wrapper is the file that the USPTO keeps for each nonprovisional patent application. The file wrapper holds the history of the nonprovisional patent application. The file wrapper includes copies of any correspondence between the USPTO and the inventor and summaries of any visits to the USPTO to talk with the patent examiner. Other advantages for a PPA are summarized in Table 4.1. However, if the inventor foreign files, the PPA must have at least one claim. So in theory the length of time required to write and assemble a PPA is shorter than for a nonprovisional patent application because of the reduced requirements. Having listed some of the advantages of a PPA, I should note that there are also disadvantages. Some of the more important ones are summarized in Table 4.2 and explained below. Just like in the nonprovisional patent application, the inventor must describe the invention in clear and concise language so someone with ordinary skill in the art can reproduce the invention. All the operating elements of the invention or what makes the invention work must be adequately explained. Usually this is where most inventors will fail— that is, the PPA does not explain adequately how to make and use the invention. Because PPAs are written quickly to establish an early prior-

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ity date, the enablement criteria are sometimes lacking in sufficient detail. Many times an inventor will submit a copy of a scientific journal article or a PowerPoint presentation for the written description. The write-up or written description must include all the documentation with examples to substantiate the eventual claims or invention. The patent examiner must be able to understand the invention laid out in the PPA, and it must be the identical invention described and claimed in the nonprovisional patent application. So you can see sufficient thought must be put into the PPA, just as you would have put into the nonprovisional patent application. Also, if you think drawings are necessary to understand your invention, these must be provided in the PPA. Do not submit inferior drawings, which is similar to not submitting an adequate written description of the invention. So all of the nonrequirements mentioned in Table 4.1 are perfectly okay, as long as the inventor has overcome all the disadvantages listed in Table 4.2. Since the inventor is not required to perform the items listed in Table 4.1, the patent attorney fees associated with a PPA are less. Another disadvantage of a PPA is in regard to venture capitalists, who do not view these patent applications as strong assets with value. A nonprovisional patent application or an issued patent has a stronger asset value, allowing the inventor to borrow money. I have filed PPAs actually written as a nonprovisional patent application with all the format of a nonprovisional patent application. The purpose for filing a PPA was to establish a priority date because the competition through the existing prior art was getting close to the invention. After submitting the PPA to the USPTO, you can use the words patent pending on your prototype invention as it is being tested in the marketplace. You have no patent rights because the patent rights come from the allowed nonprovisional patent application. In the United States, the inventor who can prove that he or she was the first to invent, that is prove conception and reduction to practice, will be the recognized inventor if several different inventors from different companies have pending patent applications for the same invention or have a pending application and an issued patent within one year of the pending application filing date. In the rest of the world, it is the first person to file a patent application. The first to invent carries with it two criteria: First, when was there a novel concept or idea and, second, when was the idea reduced to practice? The reduction to practice is the tangible creation that can be protected by a patent. Usually the date you conceived of your invention and the date you reduced your invention to practice are very close in time. If you can demonstrate you are diligent

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about reducing the invention to practice (no lapse of long periods of time), then the date when you conceived your idea is the date for the invention. This date is documented in your research notebook and witnessed with a signature and date. In the eyes of the USPTO, the actual time the inventor finished building and testing the invention is the reduction to practice date. However, the USPTO also allows two other ways to document this important date. This is through filing the PPA or nonprovisional patent application. The latter methods are called constructive reduction to practice. Remember that in the patent application, the inventor must, in clear and concise language, enable one who has ordinary skill in the art to duplicate the invention. This enablement is a constructive reduction to practice.

NONPROVISIONAL PATENT APPLICATION An issued utility patent, as noted in Chapter 3, gives its owner the right to exclude others from making, using, selling, or importing the invention claimed in the patent specification for 20 years from the date the patent is filed. The issued patent does not give the patent owner the right to practice the claimed invention because the issued patent may infringe some other issued and valid patent. You will note in reading patents filed before June 8, 1995, there was only a 17-year period of protection from the date of issue, not the date of filing. There are three types of patents: utility, design, and plant. When you submit a nonprovisional patent application, it must include the written specification in the correct format, an inventor’s oath, drawings (if necessary), and the appropriate fees. The application must be in English for the USPTO. All complete applications received are numbered in sequential order. When the USPTO determines the application is complete, you will be informed of the application number and filing date. In the United States, it is the first to invent who receives the patent. As mentioned before, the filed patent application is published automatically after 18 months unless a nonpublication request is signed and submitted to the USPTO. The USPTO must point out why the patent application is not an invention. So in the written specification (the description of the invention) and the claims (statements of the elements of the invention), the inventor wants to describe the problem to be solved and how the invention solves that problem. The problem, as we will learn later, is the status of the technology reported in the references found under the prior art.

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Once the nonprovisional patent application is filed, the inventor doesn’t want to disclose the invention to anyone else unless a confidentiality agreement is in place (discussed in Chapter 10). Signing a confidentiality agreement with others also applies if a PPA has been filed. What does an allowed patent contain? More about this in Chapters 7 and 8, but briefly it is the cover page of the patent, which has the patent number, name of inventors, name of the company the patent has been assigned to, the abstract of the invention, the filing date, priority date, and a list of prior art references found by the inventor and the patent examiner. Next, there may be a few pages of drawings followed by the written description of the invention. Finally, are the claims agreed by the inventor and the patent examiner. The claims submitted may or may not end up to be the same claims approved by the patent examiner. If you prematurely disclose your invention before filing a nonprovisional patent application to the USPTO, you lose possible patent protection. Premature disclosure occurs when your invention is on sale in the country more than 1 year before the date of the patent application. Giving away free samples of your invention under a nonanalysis agreement is not likely to be considered selling your invention. If you publish an article describing your invention more than 1 year before the filing of the patent application in the United States, then this is premature disclosure. So at least in the United States, there exists a 1-year grace period. For foreign filing, there is no 1-year grace period. Publish or sell before you file in a foreign country, and you have lost any chance of patent protection. As mentioned in Chapter 3, the invention must satisfy several requirements of patent law. Some of these requirements were summarized in Table 3.4. Three of these requirements—novelty, usefulness, and nonobviousness—are discussed in depth in the next chapter.

PATENT APPLICATION COMPARISON A PPA has many advantages from the point of view of low cost, establishing an early priority date and allowing the inventor to assess if the invention has an opportunity not only to turn a profit in the marketplace but also to defermine if the marketplace really needs this new product. Remember, only 3% to 5% of all patents actually make any money on the inventions such documents describe. Probably the downside of a PPA is that the inventor often does not describe the invention in clear and concise terms so a person with ordinary skill in the art can

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actually duplicate the invention. In the rush to file a PPA, inventors err on the side of not describing the invention sufficiently, and when they roll over the PPA to a nonprovisional patent application, they lose the PPA with its earlier filing date. However, if no one else has filed a similar patent application, they still may be able to obtain protection for the invention through the allowance of the nonprovisional patent application.

CHAPTER SUMMARY The advantages and disadvantages of a PPA should be weighed carefully when considering filing a PPA or a nonprovisional patent application. For start-up companies or individual inventors, a PPA is the way to proceed until the start-up company reaches a size requiring venture capitalists and therefore more nonprovisional patents. For an existing company, a nonprovisional patent application is best unless it has a large exploratory or discovery group with a reasonable number of inventions to protect but not necessarily in the established core businesses. Once the inventor has determined that these discoveries can establish new core businesses or add to the core business, the more cost-effective PPA can be rolled over to a nonprovisional patent application. Often in discovery, the new ideas and inventions never reach commercialization, and therefore the PPA can lapse.

ADDITIONAL READING 1. USPTO. “General Information Concerning Patents.” Rev. ed. January 2005. Available at www.uspto.gov/web/offices/pac/doc/general/index.html; accessed October 13, 2008.

QUESTION 1. Define or explain the following terms. (Extra reading may be required.) a. File wrapper b. File wrapper estoppel c. Inventor’s oath d. Constructive reduction to practice

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CHAPTER 5

REASONS FOR PATENT OFFICE REJECTIONS

CHAPTER OBJECTIVE In Chapter 4, we learned that an invention must satisfy several requirements. Three of these requirements are novelty, usefulness, and nonobviousness. For the most part, the first two of these requirements do not present a major problem with a patent examiner. The third requirement, nonobviousness, is more subjective, and it is difficult to obtain an objective working definition. One of the other requirements for an invention is a patent application must be prepared in a specific format with specific sections. This chapter focuses on these requirements and, therefore, reasons for USPTO rejections.

INTRODUCTION There are statutes under patent law found in the 35 U.S. Code (USC). Some of the more common USCs cited by the U.S. patent examiners for patent application rejections are USC 101, 102, 103, 111, 112, and 113. So the feared correspondence from the patent examiner may state,


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for example, that claims 5–10 are rejected because of a 103 rejection. What does this mean? We will discuss each of these USCs in this chapter.

PATENTABLE INVENTION AND ITS USEFULNESS Table 5.1 outlines a list of rejections often cited by the patent examiners of the USPTO according to USC section followed by a brief description. We learned in Table 2.1 that under a utility patent the invention must be a new and useful process, machine, manufactured article, or composition of matter or any new and useful improvement to any of those four. At this point of the discussion, the assumption is that your invention does not fall under a plant or design patent. If a patent examiner does not think your invention falls under any of the five mentioned classes for a utility patent, you will receive at least a 101 rejection. The invention must also have functional usefulness—that is, it must be able to operate. This would leave out all perpetual motion machines! Also considered within the usefulness criteria is that the invention must be safe. That would require that all drugs would have to be approved by the FDA. Many inventors make new chemical compositions that are either organic, inorganic, or polymeric. If these new chemical compositions do not have a use, you will not obtain a patent. But if the chemical compositions were intermediates in another chemical step, then you have defined their usefulness. As an example, suppose you have made a new polymer and you modify the polymer to make a different polymer. Then the first new polymer has a defined functional use. But even though you have just defined a use for the new polymer as a chemical composition building block, you may also want to list other possible uses. If not, someone else could obtain a new use patent on your polymer. TABLE 5.1 Title 35 U.S. Code Sections 101 102 103 111 112 113

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Brief Description Patentable inventions under utility classes Novelty condition Nonobvious subject matter condition Patent application requirement Requirement for patent specification Requirements for drawings

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Before leaving the topic of statutory classes for a utility patent and their usefulness criteria, I should mention that there are other items that cannot be claimed as inventions besides the perpetual motion machine. These other nonpatentable items are naturally occurring phenomena, laws of nature such as mathematical principles, ideas without a reduction to practice, abstract ideas, material items found in nature, and products of nature. However, some of these nonpatentable items do slip through the examination process and make it to become a patent. Presently, there are about 50,000 patents related to DNA with an additional 70,000 applications filed. DNA is our genetic code and much gene information is coded on DNA. The patents describing genes are being challenged because human genes are products of nature and natural products cannot be patented. As an example, BRCA1 and BRCA2 are genes used as biomarkers for breast and ovarian cancer. These two genes are patented by Myriad Genetics.1 The lawsuit before the courts questions whether these genes are patentable because patented genes could impede cancer diagnosis. The outcome of the lawsuit was announced in 2010. A federal judge in New York ruled that the patents were improperly granted because the patents were related to isolated DNA, which is a product of nature and cannot be patented. Most likely Myriad Genetics will appeal the ruling. Today, there are about 4,000 patents on human genes so the ultimate decision will have a large impact on gene patents.

NOVELTY The next possible rejection is based on novelty, or a 102, rejection. To determine whether an invention is novel, the patent examiner will take into consideration the following points: Was the invention described in the prior art by others before the date of invention? Was the invention described in the prior art by you more than 1 year before the date you made application for the U.S. patent? Did someone else receive a patent during your examination period in the USPTO and was this person’s reduction to practice date before the date of your invention? Remember, in the United States the first to invent has the right to the patent. You might be wondering how you can be cited as prior art. This can happen if you give a talk at a conference or publish a scientific paper describing your discovery. In this day with video capabilities on cell phones, your conference slides can be captured as a picture and then dated and posted on the Internet by someone else.2 So prepare

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for some of these outcomes by keeping an up-to-date notebook properly witnessed to establish the date you conceived your invention with the reduction to practice. Remember, you also lose novelty if you fail to file before 1 year of any sale of your invention. The patent examiner is trying to determine how your invention differs physically in some way from all the prior art. So novelty covers any physical difference between your invention and the prior art and can cover any new use of any existing invention and a new combination of the prior art references. The latter is especially true if there are combinations that give unexpected results. Your invention is anticipated only when it is very similar to an earlier invention. The earlier invention must be described fully in an existing patent or another single publication. If the invention is only partially described in another patent and partially described in another publication, there is no anticipation. Many times if we are describing a chemical process patent, we try to establish that the chemical process will operate, say, between 15° and 95°C and a pressure range of, 1 and 45 atm. Then you will cite a preferred range, such as 45°–60°C at 5–25 atm. What you imply here is that within these ranges nothing unexpected will occur—that is, the rate of reaction increases in a predictable fashion with a rise of temperature. Also, an increase of pressure will increase reaction rates because of increased gas solubility, and you’re within the expected mass transfer regime. After your chemical process patent is issued, another inventor determines that within your stated pressure range in the written description and your claims, the rate of reaction increases by a factor of 100 within a more narrow pressure range but within your stated limits. This increase in the rate reaction between 15 and 20 atm is not expected based on engineering principles. This new range is novel because of the unexpected rate of reaction observed. In your patent application you did not mention any unexpected increase in reaction rates, and your experimental examples, which were run at several different pressures but none within that range, did not teach this sort of unexpected result. The second inventor will receive a patent for his or her new discovery.

NONOBVIOUSNESS A 103 rejection deals with the nonobvious quality of the invention. The Patent Act statute states that the invention as a whole would not have been obvious at the time the invention was made by a person having

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ordinary skill in the art. A person with ordinary skill is defined as someone who has very comprehensive knowledge about the prior art as yourself. To be nonobvious, the differences between the invention and prior art must be substantial. The new results of your invention must not be anticipated by all the relevant prior art. If your invention produces unexpected and surprising new results over the prior art, this will strengthen your patentability. Usually patent examiners will determine the breadth and content of the prior art through their expertise in the area, the references submitted and the references they find on their own. Examiners then ascertain if the invention is novel and ask the question, Would someone with ordinary skill in the art determine the obviousness of the claimed invention? Remember, for novelty, examiners look for physical differences between the prior art and the claimed invention in one reference. The obviousness determination has until recently come to be known as the “TSM test,” where T is teaching, S is suggestion, and M is motivation.3 In other words, what does the prior art teach and suggest and would one with ordinary skill in the art be motivated to piece all these teachings together to come up with the invention? In 2007, the U.S. Supreme Court changed from the TSM test to the idea that an invention is not patentable if there are a finite number of identified predictable alternatives obvious to try. In addition, the Supreme Court allowed the combination of references from unrelated fields to prove obviousness. Since a patent examiner will spend a total of about 20 hours on your application, an automatic rejection of the patent application could occur if he or she is not able to easily identify the nonobviousness of the invention. Therefore, it would be in your best interest to spend time on this issue by laying out in the patent specification the nonobviousness. Some things to think about initially are the following: Does your invention solve a problem documented in the prior art? Does your invention advance a mature field? Does your invention operate with the elimination of an element that was necessary in the prior art? Does your invention give a synergistic result—that is, does it produce an unexpected and surprising new result rather than a predictable result? What you do not want to occur is to have the patent examiner give you a 103 rejection because then you and your attorney have the task to prove your invention is not obvious. This sometimes leads to an uphill battle with the examiner, which you want to avoid. In 2000, patent examiners approved about 70% of all patent applications, but as recently as the first quarter of 2009, the approval rate was only 42%. As of 2010, the approval rate was slightly below 40%.

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TABLE 5.2

Nonobviousness Factors: Check List

1. You recognize the problem through the prior art and you teach your invention is the solution. 2. Artisans with ordinary skill in the art have failed to solve the problem through their published unsuccessful solutions. 3. A solution to the problem is a long-sought-after need. 4. Prior art teaches that your invention (solution) cannot be done. 5. By the time your application is acted on, you will have a commercial success. 6. Your invention simplifies previous inventions through the elimination of one or more elements mentioned in the claims that make the invention work.

Therefore, it is important not to receive a 101, 102, or 103 rejection. Having an understanding of the reasons for these rejections should allow you and your patent attorney to file a stronger and well-thoughtout patent application. Some factors that determine nonobviousness are listed in Table 5.2. Those factors should be useful in your thinking process when writing patent specifications. The fourth one—that prior art moderates your invention (solution) cannot be done—is always a winner. These nonobviousness factors should be evident and not much explanation is required. However, in Chapters 7 and 8, I will call your attention to the application of some of these factors in actual patents.

OTHER REASONS FOR A REJECTION A 111 rejection is associated with several requirements for a patent application that are usually oversights by the inventor and/or patent attorney. The more important requirements are as follows: 1. The patent application must be made or authorized by the inventor. 2. Certain information must be contained in the patent application, such as the specification or written description of the invention, any drawings, and an oath by the applicant that he or she is the inventor of the subject matter in the application. 3. The application must also be accompanied by the appropriate fee. A 112 rejection refers to the details on how an invention must be described in a patent application, which is the specification including the claims. As I mentioned previously, the specification contains a written description of the invention and how to make and use the

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invention. The written description must be in clear and concise language so that one with ordinary skill in the art can make and use the invention. The inventor must also include the best mode of carrying out the invention at the time of the patent application. Besides the written description of the invention, the specification also has claims. These statements claim the invention in patent law language. Sometimes, the latter seems strange at first glance until one understands how a claim is structured into three parts: a preamble, transitional words, and the body of the claim. We will look at claims in more detail in Chapters 7 and 9. A 113 rejection usually pertains to the requirements for submitting a drawing. If necessary to explain the written description of the invention, especially for machines or articles of manufacture, drawings must be submitted. Sometimes a diagram, line drawings, or graph is worth a thousand words. So if we ask the question, What are the conditions for obtaining a patent? we can find the answer under patent law. Patent law specifies that the subject matter of the invention must be useful, novel, and nonobviousness. In addition, if it is a utility patent, then the invention must be a new and useful machine, manufactured article, composition of matter, or process or improvements to these. Last, there are also a few patent application requirements—such as an oath, specification, and drawings. It stands to reason these conditions should represent the basis for the rejections by the patent examiners. Therefore, if the intellectual property writer understands and complies with USC 101–103 and 111–113, then receiving a rejection from a patent examiner becomes more of a remote possibility.

CHAPTER SUMMARY At this point, the reader should be familiar with the types of rejections cited by the patent examiners. If you as an inventor spend the time to educate the examiner in a clear and concise manner about your invention and how your invention is different from the prior art, you are closer to the notice of allowance for your inventions.

ADDITIONAL READING 1. Marshall, E. “Lawsuit Challenges Legal Basis for Patenting Human Genes.” Science 324 (2009): 1000–1001.

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2. Ledford, H. “Breaking the Convention?” Nature 459 (2009): 1048–1049. 3. Gortych, J. “Supreme Court Decision Impacts High-Tech Patenting.” Photonics Spectra August 2007; pp. 80–84.

QUESTION 1. In your own words, describe the USCs listed in Table 5.1.

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CHAPTER 6


CHAPTER OBJECTIVES In this chapter, some common errors made by inventors that lead to invalid patents are discussed. In earlier chapters, I noted that a sale or public use or public disclosure of your invention a year before your U.S. patent application will bar your invention from becoming a patent. In Chapter 5, six USC requirements were introduced that, if lacking, are used by the patent examiner to reject a patent.

INTRODUCTION In Chapter 5, reasons used by patent examiners were examined to reject patents. These were based on USC statutes. The six discussed were summarized in Table 5.1. However, there are additional considerations that you can and should control as you write the patent application. These are examined briefly in this chapter. They stem from the answer to the question, What makes a patent invalid? This question often comes up during litigation of a patent.


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EXPERIMENTS: ACTUAL OR BY INSIGHT The inventor makes a discovery either through experiments that are actually performed or by insight. In the latter mode, the inventor has an intuitive feeling based his or her expertise that if the experiment or example is performed as written, then the result will be X, Y, or Z. This insight approach can be used to write up your experiments to show how the invention would be practiced. This is just like what you would do if you wrote up an experiment for someone else to execute, except the execution is not performed. In this case, when you incorporate this insight approach into writing your patent application, you must write the example in the present tense. What you do not want to do is write the example in the past tense, which means you actually carried out the experiment.

PRIOR ART DISCLOSURE You, the inventor, have a duty to disclose the prior art known to you to be material to patentability. In Table 6.1, certain behaviors are summarized that an inventor must demonstrate. If there is litigation later on, say over an infringement on someone else’s valid patent, the opposing legal counsel will have a difficult time to prove inequitable conduct if you followed these behaviors. Inequitable conduct is shown when it can be proven that the patent owner, usually the inventor, intentionally misled a patent examiner or when the inventor and patent attorney should have known that the withheld material was important to the patent examiner during their examination process. If this can be proven, then the issued patent will be declared invalid. The conduct outlined in Table 6.1 is simply ethical behavior that anyone should operate under while dealing with other people and, in particular, patent examiners. You should never write down anything in

TABLE 6.1

Prior Art Disclosure Norms; Inventor Conduct

Be frank Show good faith Do not have an intent to deceive Do not submit false information Do not misrepresent existing information you submit Do not bury a relevant prior art article in with many less relevant articles

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a patent application with the intent to deceive. All the information submitted should be true and not be misrepresented in any way. Remember you, the inventor, are asking a government to give you an exclusive right for 20 years from the date of patent filing. Exclusivity is taken seriously by the people in charge of allowing the same.

ISSUED PATENT IS INVALID Sometimes it will be determined that a particular patent should never have been issued in the first place. Remember, an invalid patent cannot be infringed. But what are the grounds for an invalid patent? These points are listed in Table 6.2. Most of the points in the table can be controlled by the inventor. As shown in Table 6.1, the inventor should be truthful with the patent examiner. If inventors named on the patent are not the true inventors—that is, at least one of the claims cannot be ascribed to a particular inventor—then remove the inventor’s name. Co-inventors are not the same as co-authors. The distinction between the two is that a co-author in a scientific publication may give you an explanation or rationale for your discovery, but he or she cannot be identified as being responsible for any of the claims of the invention. Sometimes no matter how thorough your search of the prior art or your patent attorney’s or the patent examiner’s search, a relevant reference may be overlooked. Later, when you become aware that a particular single reference is your invention, you must—no matter how hard it may be—notify the patent office of this reference, even if, as a result, your patent will become invalid. It is better for you to tell the patent office than for someone else, like your competition, to do so because you do not want to become known as someone who has an intent to deceive. If you don’t find a reference but someone else does and tells you about it, you are obligated to pass the information on to the patent office. As I mentioned early in Chapter 1, if your invention is a paradigm TABLE 6.2

Invalid Patent: Common Arguments

Invention is taught in the prior art that wasn’t seen by patent examiner Inventors named in the patent are not the true inventors Inventor and/or patent attorney were aware of prior art and did not disclose it to the patent examiner Inventor publicly disclosed the invention to another more than 1 year before filing the U.S. patent application Invention described in the specification does not enable one with ordinary skill in the art to practice the invention without undue experimentation

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shift in technology or worth a billion dollars, your competitors will also be looking for that one reference or anything else that can invalidate your claims or puts the inventor’s conduct in a negative light. You as the inventor should always check inventorship after a patent office action, especially if selected claims have been eliminated or if the patent examiner splits your patent application into two patent applications. This latter procedure is called a restriction. Suppose inventor 1 has spent 5 years making derivatives of a class of monomers to make a polymer with specific properties. Then inventor 2 is added to the team and discovers within 6 months that by making a certain derivative of the monomer class, the polymer has the desired properties. Inventor 3 on the team makes the monomer derivative by a novel, nontoxic chemical process. A patent is applied for, and it not only contains class of monomers claims but also method or process claims. Inventors 1, 2 and 3 are joint inventors. But let’s say the patent examiner decides to split the parent patent application into two patents, one having the composition of matter claims and the other one having method or process claims. Now inventors 1 and 2 are on the composition of matter patent, and inventors 1 and 3 are on the process patent.

INEQUITABLE CONDUCT As mentioned previously in this chapter, inequitable conduct boils down to the inventor or inventor and patent attorney intentionally misleading the patent examiner. If this behavior can be proven, the issued patent will be invalid. Therefore, under inequitable conduct, the patent is enforceable if you, the inventor, give the best mode of operation, give full and truthful disclosure, and have the correct inventorship.

OTHER CONSIDERATIONS WHEN WRITING YOUR FIRST PATENT APPLICATION We have already seen in Table 6.1 a listing of norms for an inventor’s conduct. In addition, the inventor should not have an inaccurate or incomplete description of experimental results that would lead someone with ordinary skill in the art to perform undue experimentation. For example, suppose you used a protective group reported in a scientific article that contains the same patented synthesis. But you forgot to mention that point in your examples or even in the claims in your

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patent application. Remember, the experimental examples should not be inoperative. By this simple omission your patent application, if issued, may be held invalid. Sometimes when you make comparisons between your data and existing data, the results may be misleading because you used different test methods to make the comparisons. Only apples to apples should be compared. These are fine points, but in litigation the fine points become major headaches. Last, proofread your issued patent for typographical and grammatical errors. You can always apply for a Certificate of Correction. There are typically 25,000 certificates issued each year. You do not want an error to cause misinterpretation of a crucial fact or claim that would cause your patent to infringe on another or become invalid.

ANOTHER POINT OF VIEW Recently, an opinion correspondence was reported in the journal Nature.1 The author of the opinion stated “Many firms ask their technologists to remain ignorant of the patent literature.” The author explained that ignorance is a valid defense against an infringement. Also, the author mentions that scientific validity of the patent’s arguments and supporting data are not central to the patent examiner’s review. However, I think it would cause problems not to conduct a thorough prior art search or to have data but not use the data. What you do not want is to have someone with ordinary skill in the art to perform undue experimentation using this strategy. Therefore, the inventor should seek legal opinions on the information presented here.

CHAPTER SUMMARY In this chapter the defenses that are often used against the rights of a patent were covered. The approaches used by the intellectual property attorneys of the competition are shown in Table 6.3. It is important to pay attention to detail. It is not always the idea and reduction to TABLE 6.3

Defenses against a Patent Holder’s Rights: Questions to Ask Yourself

Does the patent infringe another valid patent? Is the patent enforceable? Is the patent valid?

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TABLE 6.4

Rejection Possibilities in the United States: Questions to Ask Yourself

Did you file the patent application within 1 year before publishing or selling the invention? In the patent application, did you include the best mode of operation? Have you disclosed all the relevant prior art? Have you convinced the patent examiner that the invention is useful, novel, and nonobvious? Do all the named inventors on your patent application have at least one claim?

practice that are challenged; the details of filling out the forms to document the discovery and other such pitfalls may prevent the inventor from obtaining an issued and valid patent. In these last two chapters, we examined not only reasons for patent application rejection but also what determines a patent to be invalid. It should be clear the patent writer must be careful when writing a patent application. Table 6.4 contains a few questions you should ask yourself.

ADDITIONAL READING 1. Piehler, D. “Legal and Practical Pitfalls in Making Use of Patents.” Nature 462 (2009): 276.

QUESTION 1. List all the reasons for an invalid patent.

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CHAPTER 7


CHAPTER OBJECTIVE Parts of eight U.S.-issued patents will be examined in Chapter 7 for information in order to determine salient points to be used to construct strong patent applications. These salient points will also be used in Chapter 8 to write outlines for patent applications.

INTRODUCTION In Chapter 5 the major rejections used by patent examiners to prevent a patent application from becoming an allowed patent were briefly discussed. This chapter focuses on selected parts of issued and published patents to demonstrate strategies that will help an inventor avoid rejection.


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KEY TO PATENTING SUCCESS There are several keys to writing successful patent applications. One of these is to understand the reasons used by patent examiners to reject applications. This background was presented in Chapter 5. The second key is to perform as complete a literature search as possible on the field of the invention and the basic requirements on how the invention actually works (more on this later in the chapter). The third key is to educate the patent examiner so that he or she does not have any reason to reject the patent application. This latter topic will be covered in some detail in this chapter. And last, make sure someone with ordinary skill in the art can duplicate the results in the patent without undue experimentation. One additional point is to be at least cognizant of the various reasons why patents become invalid and do not fall into those pitfalls (see Chapter 6).

WHY UNDERSTANDING PATENTS IS IMPORTANT Before I provide several examples of patent specifications, it is important for all intellectual property users and writers to understand why patents are important to read—not only for your research but also from a business perspective. This is best told by a personal story during my employment at Air Products®. In early 2000, my management asked six senior researchers to spend about 50% of their time for 6 months to evaluate a business opportunity. The business would be new for Air Products® and involved high purity conjugated polymers as candidates for light emitters in the emerging technology field of polymer light-emitting diodes (PLEDs). The literature search carried out was on organic material for organic light-emitting diodes (OLEDs), which for us included both small organic molecules and polymers. We wanted the literature search to be comprehensive for the technology field on how these materials actually functioned to emit light when a voltage was applied across the electrodes of a diode. The literature search covered universities active in the research at the time, companies making conjugated polymers, companies active in small molecule research for OLEDs, and companies licensing PLED technology. This literature search yielded about 3,000 worldwide patents and about 1,000 scientific publications. The six of us collectively read approximately 800 patents and all the scientific publications. The conclusion for us as a team was that the world did not need another blue,

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TYPICAL PATHWAY FOR PATENT APPLICATION WITHIN A COMPANY

67

green, or red light-emitting polymer. However, it was determined that the advancement of the PLED business really needed a conductive polymer with tunable properties of conductivity and work function to be a layer between the anode electrode and the known polymers used as light emitters. Since the polymer light emitters were within the visible spectrum, each emitter had slightly different energy levels represented by their highest occupied molecular orbital (HOMO) and their lowest unoccupied molecular orbital (LUMO). The blue emitter was the most challenging, and existing conductive polymers or hole injection layers (HIL) were not matched in regard to their work function and the work function of the indium tin oxide (ITO) used as a transparent anode electrode material. In early 2002, a project was initiated to either invent a novel HIL or license an opportunity through a university agreement to develop an HIL polymeric material that the emerging PLED market wanted so that global PLED applications would grow. Air Products® entered into an exclusive licensing agreement with the University of Connecticut to develop and market polymeric materials covered by U.S. patent 7,071,289. This licensing agreement was made known on August 3, 2006.1 The fundamental invention of poly(thieno[3,4-b]thiophene) was by Professor G. Sotzing, while the dopant technology was invented by Air Products®. The combined technology helped increase the lifetime of PLED for display applications.

TYPICAL PATHWAY FOR PATENT APPLICATION WITHIN A COMPANY Figure 7.1 shows the pathway by which an inventor fills out an invention disclosure. The form is a template with specific questions and moves the invention disclosure through a management chain of

Liaison person Fill out * template

Internal Patent attorney

Inventor (most knowledgeable)

External (Draft)

Figure 7.1. Pathway for writing a patent application. *, invention disclosure.

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command and eventually to the legal department responsible for intellectual property. Usually a patent attorney will decide if the invention disclosure will be assigned to an internal company patent attorney or sent outside the company to firms specializing in intellectual property, particularly those firms that are very good at drafting patent applications. Within 3 to 6 months, a patent draft with claims will be sent back to the inventor. Many times, but not always, upon reading the patent application draft, the inventor wonders if this document really is his or her invention that was initially described in the invention disclosure several months earlier. Meetings are usually then held with the patent attorney to correct the disclosure so as to more closely match the discovery. If you are active in meeting with the attorney before the invention disclosure is initiated and/or have frequent discussions with the patent attorney preparing your patent application, the patent application draft will be better and will be prepared over a shorter period of time. Since you, the inventor, are the most knowledgeable person about the discovery, an alternative is to skip the invention disclosure and to write the patent application yourself while obtaining legal guidance and help with claim writing. Over my 30 years of industrial experience, I has chosen the latter route. You, the inventor, are the most knowledgeable about the invention, know the prior art the best, and have read many patents. Putting all of this together into a patent document that can be worked on together by you, the inventor, and the patent attorney makes more sense than tossing a completed questionnaire over the fence and hoping something close to the final patent application comes back to you.

CLAIM 1 AND 2 OF U.S. PATENT 5,247,190 In Chapter 2 we noted the patent specification is made up of two parts: the description of the invention and the claims. It is constructive to examine an excellent patent claim, discuss why it is excellent, and think about how the inventors of the patent performed their prior art search. The first patent for discussion is U.S. 5,247,190, titled “Electroluminescent Devices” and assigned to Cambridge Research and Innovation Limited. The U.S. patent was issued on September 21, 1993, but has a foreign priority date of April 20, 1989, in Great Britain and a U.S. filing date of December 28, 1990. Let us look at Claim 1 and Claim 2. Claim 1 reads as follows:

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CLAIM 1 AND 2 OF U.S. PATENT 5,247,190

1. An electroluminescent device comprising: a semiconductor layer in the form of a thin dense polymer film comprising at least one conjugated polymer; a first contact layer which is selected so that on application of an electric field to said device charge carriers of a first type are injected into the semiconductor layer; and a second contact layer which is selected so that on application of an electric field to said device charge carriers of a second type are injected into the semi-conductor layers, wherein the polymer film of the semiconductor layer has a sufficiently low concentration of extrinsic charge carriers that on applying an electric field between the first and second contact layers across the semiconductor layer so as to render the second contact layer positive relative to the first contact layer charge carriers of said first and second types are injected into the semiconductor layer and combine to form in the conjugated polymer charge carrier pairs which decay radiatively so that radiation is emitted from the conjugated polymer.

Claim 2 is as follows: 2. An electroluminescent device as claimed in claim 1, wherein the conjugated polymer is poly(p-phenylenevinylene) [PPV] of formula wherein the phenylene ring may optionally carry one or more substituents each independently selected from alkyl (preferably methyl), alkoxy (preferably methoxy or ethoxy), halogen (preferably chlorine or bromine), or nitro.

Let’s try to summarize Claim 1. The electroluminescent device or PLED is made up of three layers. The first contact layer is the negative electrode or cathode. The second contact layer is the positive electrode or anode. In between the contact layers or electrodes is the semiconductor layer or the conjugated polymer. Charge carriers are injected from each electrode; electrons from the cathode and holes from the anode. These charge carriers form pairs within the conjugated polymer layer in the LUMO and decay to the HOMO by emitting light of a specific wavelength or wavelengths, depending on the band gap or energy gaps of the conjugated polymer. The band gap is the difference in energy between the LUMO and HOMO. The first claim is a very broad claim because the semiconductor layer is defined as a conjugated polymer, not a specific conjugated polymer as in Claim 2, which focuses its attention on the conjugated polymer PPV. PPV has the organic structure as shown in Figure 7.2. When Cambridge University conducted their initial research on PLED, they were the first to do so. About a decade before that, organic small molecules, or OLEDs, were discovered. Therefore, the finding that a con-

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CH

CH

n Figure 7.2. Structure for PPV. TABLE 7.1

Procedure for Prior Art Search: Points to Cover

Define your invention Determine if your invention covers a particular technology field or statutory class Define the basic requirements that make your invention work Perform prior art search on technology field and basic requirements

jugated polymer could do the same was a paradigm shift in technology and there was no prior art. How would you perform the prior art search to determine if your idea or concept was novel? Remember, the date of the invention would be when this idea was reduced to practice by making and testing your operative device as outlined in Claim 1. The following thought process is probably followed by most people involved in prior art searches. The main points are outlined in Table 7.1. The prior art search would include both patents and other information in the public domain, such as scientific articles. Therefore, in the previous example and using what is in Claim 1, you would use electroluminescent device or LED or PLED and probably OLED for the technology field. This information also helps define the statutory class (see Table 2.1). The “what makes the invention work” part of the search is covered by the combination of cathode, anode, and conjugated polymer as the semiconductor layer. If semiconductor layer only was used for the search, most likely your search results would include inorganic semiconductors. Including OLED would probably hit both small molecule and polymer. I would guess the gray area is oligomers, and you would want to capture all these hits because when does the size of the oligomer make it a low molecular weight polymer or not? Now comes the difficult job of reading all the references and determining if any conjugated polymers are mentioned as a semiconductor layer in an electroluminescent device. If you find the technology area and all the basic requirements mentioned in one reference, you are in trouble. If you find the technology area and one or two of the basic requirements mentioned in different references, you are in less trouble. Would one with ordinary skill in the art combine the references to make your light emitting device?

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EXAMINATION OF U.S. PATENT 5,872,289

71

In this patent example, the use of a conjugated polymer was not disclosed in any of the references. Therefore, the issued patent became a benchmark for PLED. Any inventor who later found a conjugated polymer that emitted a different color than PPV had to license the patent. Research and commercialization of the PLED application is being carried out worldwide still today, even if obtaining a license from Cambridge is necessary. To complete this particular story, how would you continue to determine patentability? This invention is novel or new because it uses a conjugated polymer between two electrodes instead of a semiconductor made up of an inorganic or small organic molecule. The invention is useful. The invention would also not be obvious to someone with ordinary skill in the art. The closest prior art would be small organic or inorganic compounds that would show the characteristic of electroluminescence. Up until the time of this discovery, conjugated polymers had not been shown to demonstrate the property of electroluminescence. So would it have been obvious to a person with ordinary skill in the art? Probably not, since not all conjugated polymers show this property. There has to be some built-in property within the conjugated system so that the polymer has the photophysical manifold to emit light from the excited state.

EXAMINATION OF U.S. PATENT 5,872,289 Before we look at patent 5,872,289, let us review some background information. First, instead of saying all seven numbers of the patent, attorneys refer to the patent by its last three digits. Therefore, this patent will be referred to as 289 and not 5,872,289. When you first look at an issued U.S. patent, there will be a cover page containing the title of the invention, the names of the inventors, references cited, date of patent, the patent number, the abstract, and other information. The next few pages will have the figures, if any, followed by a page with the patent number centered at the top, divided into two columns each with a number above the column, for example 1 and 2. Then down the center of the page between the two columns, there is a series of numbers 5, 10, 15, . . . 65. These are line numbers. So the first sentence of the first paragraph is line 5. Locating information becomes very easy using this format. For example, the summary of prior art references for U.S. Patent 4,016,180 starts in column 1, line 36 and is finished in column 1, line 64. Patent 289 can be found in its entirely on p. 185 of this book.

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TABLE 7.2 INID 54 75 73 21 22 51 52 58 56 57

Legend for Commonly Used INID Codes Definition Title of the invention Inventors Grantee or assignee Application number Filing date of application International patent classification National classification Field of search Prior art documents Abstract

The first page of the patent has numbers in brackets, for example [54]. The numbers are the internationally agreed-on numbers for identification of data codes, (INID codes). Each number has a meaning. In Table 7.2, the INID codes appearing on page 1 of patent 289 are identified. Therefore, every time you see the INID code [54], next to it will be the title of the invention. Every time you see the INID code [57], next to it will be the abstract. The title, besides being found next to the INID code [54], it is also found in column 1, lines 1–2. The background of the invention is found in column 1, line 4, while the brief summary of the invention is found in column 2, line 16. The claims start on column 15, line 26 and finish in column 16, line 38. If you look at claim 1 for 289, you’ll find that it is written in a specific format: 1. A liquid-phase process for hydrolyzing a carboxylic acid alkyl ester having 2 to 18 carbon atoms to provide a product mixture comprising a carboxylic acid and an alcohol comprising contacting a feedstock comprising the carboxylic acid alkyl ester and water with an acidic carbon catalyst under reaction conditions sufficient to form the product mixture comprising the carboxylic acid and the alcohol.

There are three parts to a claim: the preamble or type of invention, transitional words such as comprising or consisting of, followed by the body of the claim, which is usually a series of phrases or elements making up the invention or how the invention works (see also Chapter 9). In Claim 1, the type of invention is liquid phase process for the hydrolysis of esters, the transitional word used is comprising and the phrases that make up the invention are contacting ester and water with

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an acidic carbon catalyst under reaction conditions sufficient to form a product mixture of carboxylic acid and the alcohol. Claim 1 is an independent claim because it describes the invention without reference to any other claim. If you look at Claim 2, it relies on Claim 1 for part of the description and thus is a dependent claim. The words comprising and consisting of have very specific meanings in this context. The term comprising expands the claim to include what is specifically stated and material that could be added if mentioned in the specification. For 289, Claim 1 in column 15, lines 31–32 states “the product mixture comprising the carboxylic acid and the alcohol.” The other components in the mixture mentioned in the specification are the unreacted ester and water. Remember, ester hydrolysis is an equilibrium controlled reaction. If the term consisting of was used instead of comprising, then only the carboxylic acid and alcohol would be claimed because consisting of limits the breadth of the claim to what is specially specified in the claim. Let us briefly look at patent 289 in more detail. In Table 7.3 are the parts of the patent. This is the format that patent writers are required to follow. We briefly touched on this in Table 2.2. If the research was federally sponsored, the contract will be identified in a short paragraph under the title (an example will be shown later). As we look at some of the other parts of the patent, we will see that the detailed description of the invention section overlaps the brief summary of the invention section. I often look at the brief summary as a high-level overview of the written description of the invention. We mentioned earlier that to perform a worthwhile prior art search, we must define the invention with respect to a technology field or statutory class and what makes the invention work. This is the same

TABLE 7.3

Required Parts of the Patent Format

Title of the invention Cross-reference to related applications Identify any federally sponsored research Background of the invention Prior art Positive aspect of the invention Brief summary of the invention Brief description of several views of the drawings Detailed description of the invention Experiment/Examples Claims Abstract

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TABLE 7.4

Prior Art Summary Referencesa

Searching Criteria (√) Hydrolysis of carboxylic acid alkyl ester (√) Cation-exchange resin Adsorbent Acidic carbon catalyst (√) High reaction temperature (√) No ether co-products

321

248

180

Catalysis Today

+ +

+ + + — — —

+ + + — — —

+ +

— — —

— — —

+, mentioned; —, not mentioned.

a

information, but in a different format, that appears in your claims. The preamble of the claim is the type of invention, and the body of the claim is a series of phrases that make up the steps that make the invention work. So we can find this information not only in the claims but also in the written description of the invention: column 2, lines 18–25 and column 3, lines 35–38. The literature search for any prior art should cover the technology field and the basic requirements that make your invention work or function. The technology field or statutory class would be liquid phase ester hydrolysis process and what makes it work are a carboxylic acid alkyl ester and water with an acidic carbon catalyst with a reaction temperature up to 200°C. From this literature search, four relevant references were found: three patents and one scientific article. At this time, I generally produce some sort of spreadsheet that summarizes the references with respect to the technology field and what makes the invention work. Remember, this was the searching criteria for establishing prior art. The spreadsheet is shown in Table 7.4. If this table is constructed properly, one can immediately recognize if any of the references mention the criteria on how your invention works. In two of the references, carbon was mentioned, but as an adsorbent. All the references cited cation-exchange resins because that was the state of the art. In the comparative examples of 3, 4, and 5 described in column 8, lines 18–67 and in column 9, lines 1–61, dimethyl ether as an undesirable co-product was found. This was an additional benefit for using the acidic carbon catalyst; no dimethyl ether was formed from the hydrolyzed product methanol. In patent 180, the inventors actually mentioned that methyl acetate is not hydrolyzed to acetic acid when adsorbed onto the activated carbon adsorbent. This reference teaches away from the invention. A person with ordinary skill in the art would conclude that it would not be obvious to test a group of adsorbent

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carbons as carbon catalysts. So the invention outlined in patent 289 produced unexpected results. Likewise, in your own prior art searches, if you can find references that teach away from your invention, this is very strong evidence for not being obvious. Inventors just love to find these references. Next, I would like to quickly go over where you can find certain information within patent 289. It is important to state the problem that your invention is trying to solve. This can be found in column 2, lines 9–15. The problem is based on the shortcomings of the prior art—that is, researchers are looking for higher-temperature hydrolysis catalysts while minimizing the formation of undesirable byproducts such as dialkyl ethers. In the brief summary of the invention section it is advantageous to always define your technical terms so that there won’t be any confusion later on if your issued patent is challenged in the courts. This will have two outcomes. First, you are educating the patent examiner, and second, you are leaving no doubt in anyone’s mind what you mean by a particular term. You can ask three different scientists to define a specific scientific term, and it is not unusual to obtain at least two different definitions or interpretations. In litigation court, you do not want two different or even close interpretations. You want only one meaning, and that is the one you use to explain your invention. For example, in this section, we begin to define terms from a high level. The carboxylic acid alkyl ester has 2 to 18 carbon atoms (column 2, lines 19–20). The structure of the carboxylic acid alkyl ester is given in column 2, lines 37–40. The chemical formula for the carboxylic acid is in column 2, lines 57–60. The R group is generally specified in column 2, lines 62–64, and specific compounds are listed in column 3, lines 1–13. The carbon catalysts and how they are rendered acidic are covered in column 3, lines 44–47. In the detailed description of the invention section much of the same information is repeated, but new information is also added. Examples of new information are more hydrolysis process details, equilibrium, mole ratios and miscibility of components. All of the described information is important because it enables one with ordinary skill in the art to duplicate your invention without undue experimentation. To prevent another inventor from patenting a two-step hydrolysis process for the one-step invention, the two-step process is described in column 5, lines 22–36. Figure 7.3 compares the two-step and one-step hydrolysis process. The conventional cation-exchange resin catalyst operates at T1 of 100°–110°C, while the acidic carbon can operate at a T2 of up to 200°C. The two-step process allows the output from any

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Feedstocks

Feedstocks

Acidic carbon

Products

Conventional catalyst

Acidic carbon

T1

T2

Products

Figure 7.3. Comparison of one-step and two-step ester hydrolysis processes.

existing ester hydrolysis chemical process using conventional catalysts to be changed to a new equilibrium mixture, depending on the higher operating temperature selected. The experiment or example section starts in column 7, line 34. The examples show how to render the carbon catalysts acidic and how to use the acidic carbon catalysts in the ester hydrolysis reaction. It compares the invention with cation-exchange resins, the traditional catalysts. There is a possible downfall in running comparative examples. The experiments may not show the result you want to compare. These experiments are then part of the permanent record and could end up in litigation court if the patent is challenged. Consult with your patent attorney before you run comparative examples. U.S. Patent 5,872,289 Summary There are a few important points patent writers should walk away with after studying patent 289. These points are listed in Table 7.5. I hope the checklist becomes routine as you write more and more of your own patents. As you review these important points, remember you are trying to prevent your patent from being rejected by the patent examiners or via invalid claims. FORMAT FOR PATENT WITH FEDERAL SUPPORT In Table 7.3, it was mentioned that if the research that led to the invention was paid for by federal agencies, that information must be put into the beginning of the specification. An example of this is taken from U.S. patent 6,479,704, which is partially shown here. All this information can be found in column 1, lines 1–11.

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TABLE 7.5 Remember

Checklist for Writing the Patent Specification: Important Points to

Define the technology field or statutory class for your invention and what basic requirements make your invention work Carry out the prior art search Construct a spreadsheet (see Table 7.4) Define the problem that needs a solution from your references State the problem in your patent application and how your invention is the solution to the problem Define specific technology terms used in your written description of the invention Use these technology terms to write your claims Describe your invention in sufficient detail in the patent application specification so that someone with ordinary skill in the art can duplicate your invention Support your claims with operative examples

Hydrogenation with Monolith Reactor Under Conditions of Immiscible Liquid Phases GOVERNMENT CONTRACT This invention was made under Government Contract No. DE-FCO2CH11018 with the U.S. Department of Energy BACKGROUND OF THE INVENTION Industrial hydrogenation reactions are often performed by using finely divided . . .

EXAMINATION OF U.S. PATENT 6,369,239 U.S. patent 6,369,239 is printed on p. 194 in this book. This is a utility patent dealing with a chemical process. I selected this particular patent because it was about four pages in length. In this patent example, you will be looking for specific information. In the background of the invention section, what is the problem to be solved? As you read over the section, you will not find a direct statement of the problem. The problem is indirectly stated. In column 1, lines 5–10, however, the invention is clearly stated. It states “a process for the preparation of dialkoxythiophenes and dialkoxythiophenes by decarboxylation diacid precursors in high boiling solvents not containing nitrogen bases.” The abstract [57] states the invention along with the title [54] of the patent. Therefore the problems mentioned in the prior art references are the low chemical yields of 58%, 54%, and 65%, higher reaction temperatures of between 180° and 250°C, and nitrogen bases appearing in the aqueous phase that must be recovered. These points are mentioned separately in the references cited. The inventors did not state, in a clear single

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statement, the problem to which their invention was the solution. However, the inventors in column 2, lines 5–6 did state, “A special form of this decarboxylation reaction has now been found.” If I now asked you what the invention is, you could use the abstract or column 1, lines 5–10 to tell me. Next, in the detailed description of the invention section, what are the reaction conditions of the invention that separate the prior art from the invention? In column 3, lines 55–59, you found the preferred temperature range of 120° to 170°C with a catalyst. In the example section—column 4, lines 46–67, all of column 5, and column 6, lines 1–5—there is another distinguishing feature between the prior art and the examples. Are you able to find it? It is the chemical yields of the invention. We have said that the prior art chemical yields were 58%, 54%, and 65%. Here the inventors obtained 80%, 95%, 95%, and 86.7% chemical yields. These chemical yields are significantly higher than the prior art. I was surprised that the inventors did not point this out more clearly to the patent examiners. It is mentioned in the abstract when the inventors said “very good yields.” There is a spread of a 15% to 41% increase in chemical yield with this special form of decarboxylation reaction. So there are actually several improvements this decarboxylation reaction offers, which are listed in Table 7.6. My preference is to use the existing outstanding experimental information a little more, especially in regard to stating a solution to a problem that existed with the prior art. But every inventor and patent attorney will write differently. The Bayer® inventors did define the technical terms with clarity. Some of these terms were solvents used, active catalysts, purification methods, and reaction temperatures. In Claim 1, you will note that the technology field or statutory class is a decarboxylation process followed by the transitional word comprising (not consisting of), and then the steps used in the invention. A person with ordinary skill in the art should not have a difficult time in obtaining the same results as the inventors. Now my last question is this: Can you find in the specification the procedure to make the 3,4-dimethoxythiophenedicarboxylic acid esters, compound 1? The compound and the synthetic procedure are shown TABLE 7.6

Decarboxylation Reaction: Process Improvements

Lower reaction temperatures of 120°–170°C with catalysts No aromatic amines solvents required Very good chemical yields between 80% and 95% High boiling nonnitrogen solvents could be recycled

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EXAMINATION OF U.S. 2004/0010115A1 HO

OH HO

O

1. Base

OH

CH3O

OCH3

O RO2C

RO2CCH2

CH2CO2R

S

CO2R

S

2. CH3I

RO2C

S

CO2R

1

Figure 7.4. Synthesis of 3,4-dimethoxythiophenedicarboxylic acid ester.

in Figure 7.4. You will find the information in column 1, lines 66–67 and column 2, lines 1–3.

EXAMINATION OF U.S. 2004/0010115A1 Both U.S. patents 5,872,289 and 6,369,239 were utility patents, in particular chemical process patents. The next two patents are the same, except one is the patent application published after 18 months, followed by the issued patent, 7,071,289, with a certificate of correction attached. These utility patents are composition of matter. All of these patents can be found in Chapter 17. If we examine the cover page of the patent application publication, you will see the publication date is January 15, 2004. The filing date was July 11, 2002. The time period between these two dates is 18 months. The inventor is G. A. Sotzing. The abstract and title state the invention, which relates to polymers and copolymers making up repeat units of thieno[3,4-b]thiophene. Claim 1 states the invention even more succinctly, a polymer comprising polymerized units of thieno[3,4-b]thiophene. Again you will see the preamble contains information on type or class of invention, which is polymers or composition of matter, the transitional word is comprising and the body of the claim or the steps that make the invention work is “polymerized units of thieno[3,4-b] thiophene.” Figure 7.5 shows the general structure of the monomer, thieno[3,4-b] thiophene. At the time of the writing of this patent application, the parent monomer where R=H was known along with two monomers, 2-decyl and 2-phenyl thieno[3,4-b]thiophene. In the publication, 18 months after the filing date, you will note that each paragraph is numerically labeled starting with 0001. This particular patent application has 93 paragraphs followed by 23 claims. But remember, this published patent application has not yet been examined by the patent examiners in the USPTO.

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R

S

S

Figure 7.5. Structure of thieno[3,4-b]thiophene, where R=H.

It was surprising to us that the known monomer had not been polymerized before this time. Most likely it was because of the availability of the monomer. The synthesis is multistepped and requires careful control of reaction conditions to obtain a respectable yield. Since the filing of the patent application in July 2002, more was learned about this type of structural unit.2 Not much was known about the parent compound where R=H or the two derivatives. You will be faced with the following dilemma over and over again: Should you file on the homopolymer and copolymers of thieno[3,4-b]thiophenes or make many different R-substituted thieno[3,4-b]thiophenes in the laboratory and obtain composition of matter patents individually on all the different R-substituted monomers and polymers? The other two known monomers where R=decyl and phenyl had been homopolymerized only. Either rightly or wrongly we decided to file a composition of matter patent on the polymers derived from the monomers where R=H and pack everything about the other possible monomers into this application. When that decision was made by the commercial development and legal teams, we realized as we expanded our understanding about these materials that this patent, if issued, would be prior art cited against us to patent other unsynthesized monomers and polymers. In hindsight, we were correct in our predictions. Let’s look at the text and find the technology terms and ask if we clearly defined these terms. We want to make sure there was no misunderstanding between the meaning of the terms used in the claims and the terms in the specification. Before we get too far into U.S. 2004/0010115A1, please look at the layout of the publication 18 months after filing. We mentioned before about the numbering of the paragraphs. Also you will note that we have page numbers and not columns with numbered lines. And finally, on the cover page only selected INID codes are present. Under the heading “Detailed Description of the Invention” on pages 2 and 3, paragraphs 0024–0037, we defined the terms that are used

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throughout the specification and in the claims. You may be thinking that defining all of these terms seems like overkill. Personally, I have always erred on the side of overdefining. You will also note the specification lists many alternatives to select from when there is discussion about p-dopants, n-dopants, additives for dispersions, polyanions, and oxidants. The patent application has a lot of information about these topics. At the time, no one wanted another patent issued to our competitors that would prevent us from commercializing the oxidized form poly(thieno[3,4-b]thiophene) as a hole injection layer. You will note there are 23 claims in the published patent application. This was the submitted number of claims in the nonprovisional patent application. Five of these claims are independent. Claim 1 is a composition of matter for the polymers, both homo polymers and co-polymers, made from thieno[3,4-b]thiophene. Claims 17, 18, and 19 are application or use claims, and claim 20 is a process claim. Most likely the patent should have been split into a composition of matter and a chemical process patent. These are two different utility patents. However, the patent examiner decided not to split. Remember, this would have been called a restriction.

EXAMINATION OF U.S. PATENT 7,071,289 U.S. patent 7,071,289 can be found on p. 207 in this book. I will not be referring to this patent as 289 because we already have one patent that ends in “289.” You should compare the structure and information appearing in the published patent application after 18 months and the allowed and issued patent mentioned here. The first page now has all the information, including references cited. You will note the examiner cited four additional references in the other publications section. Below the abstract we have 26 claims mentioned for this patent. The pages now have columns 1–16 and line numbers. The numbers on the paragraphs have been removed. During the examination period, three additional claims were added, Claims 24–26. It is very important for the intellectual property writer to always compare the number of claims actually allowed. In U.S. patent 7,071,289 the claims increased by three. Later on in a different patent example, the number actually decreased, going from the published patent application to the issued patent. Therefore, during the USPTO examination period, there were exchanges between the USPTO and the inventor’s legal counsel. All these documents would be in the file wrapper for U.S. patent 7,071,289. As it turns out, in addition, there were filed corrections made to the patent, and for whatever reason, these corrections

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and additions never were incorporated into the first issued patent. Later on, a certificate of correction was attached to U.S. patent 7,071,289. This is the document in the patent appendix section. The certificate of correction is two pages long and is briefly discussed below. It is important to proofread your patent application before it is sent to any patent office and again when the patent is issued because errors can occur. In the certificate of correction, you will notice that two inventor names were added to U.S. patent 7,071,289. In addition, the word nafion in column 3, line 46 is corrected. The correct representation is NAFION®, and we added an acknowledgment of its registered trademark. This was also changed in column 9, line 28. Since the patent has three inventors, the words I claim were changed to we claim. Last, in Claim 22, the polyanion “a perfluorosulfonic acid polymer” was added since this set of words did not make it from the list of polyanions in the specification to the claim.

EXAMINATION OF U.S. PATENT 5,273,995 Our next patent 995, deals with cholesterol inhibitors, in particular Lipitor™, a statin that reduces LDL cholesterol levels in blood. The drug was discovered in 1985, and the first U.S. patent issued on Lipitor™ was U.S. patent 4,681,893. The patent 893 issue date was July 21, 1987, and the filing date was May 30, 1986. In patent 893 the racemic form of the structure (Figure 7.6) is described and claimed. The dependent Claim 5 is reprinted below: 5. A compound as defined by claim 1 having the name trans-(±)-5-(4-fluorophenyl)-2-(1-methylethyl)-N,4-diphenyl-1-[2(tetrahydro - 4 - hydroxy - 6 - oxo - 2 H - pyran - 2 - yl) - I H - pyrrole - 3 carboxamide. OH OH

4

N1 O

F

O

5

H N

Ph

5

3

2

6

2 4

3

O

O

CONHPH

Figure 7.6. Lipitor™ in pyran form.

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OH

OH

R

R

F

83

CO2

N

Ph

CONHPh

Figure 7.7. Structure of [R-(R*,R*)]-2-(4-fluorophenyl)-ß,δ-dihydroxy-5-(1-methylethyl)3-phenyl-4-[(phenylamino)-carbonyl]-1H-pyrrole-1-heptanoic acid.

The numbering of two of the rings is also shown by the side of the structure in Figure 7.6. Patent 995 (reprinted on p. 219 in this book) has 12 claims. Claim 1 deals with the chiral isomer shown in Figure 7.7, which is the open form of the racemic structure shown in Figure 7.6. Both patents mention the Na+, K+, Ca+2, Mg+2, and Zn+2 acid salts of open structure made from the closed cyclic anhydride or pyran form shown in Figure 7.6. There are many review articles and textbooks3 on chiral compounds covering chiral synthesis, separation of racemic mixtures, and the chiral ring opening of cyclic anhydrides. The question to ask yourself is this: Would one skilled in the art (knowing the specification of patent 893 and the many chiral chemistries cited in Collins et al.3) anticipate the claims in patent 995 because of obviousness? Apparently, the patent examiners said no and the patent issued. Since I am an organic chemist, the question I would ask myself would be could you mask the [R-(R*, R*)] isomer with alcohol derivatives that would be chemically different from the racemic mixture described in patent 893? Many of these derivatives could undergo hydrolysis in the body and give the active form of Lipitor™. However, this approach would require new clinical trials. Lipitor™ was introduced into the marketplace in 1997, and patent 995 will expire in 2011. The first Lipitor™ patent will expire 1,213 days from May 30, 2006, according to the certificate extending patent term attached to patent 893. In 2006, this drug had sales over $13 billion.

EXAMINATION OF U.S. PATENT 7,253,209 The last patent to examine is 209. The title of the patent is “Remedies for Cisplatin-Tolerant Cancer.” I selected this particular patent because the issued patent only has 1 claim. You can find patent 209 on p. 229 in

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NH2

[Pt(O2C-(CH2)12-CH3)2] NH2

Figure 7.8. Structure of platinum (II) complex in Claim 1 of 209.

this book. You probably have seen a few patents with only 1 claim. What is very surprising about this patent is that the published patent application after 18 months had 10 claims, not 1. Claim 1 is reproduced here from the published version, which has the number of U.S.2003/0171430A1. Claim 1 of this published application after 18 months reads: A method for promoting the uptake of a lipophilic platinum complex into cancer cells, which comprising administering a solution or suspension of a lipophilic platinum complex in an iodized poppy seed oil fatty acid ethyl ester.

When you read Claim 1, again you will realize this is a very broad claim. The platinum complex has to be lipophilic, which means that the ligands coordinating to the platinum complex can be any fat-loving ligand. Also, the type of cancer cells being treated are very broad. The cancer cells could be hepatic, lung, or kidney, to name a few. Now let us look at what the inventors were actually allowed in the issued patent. Claim 1 of 209 is limited to cis-[(1R,2R)-1,2-cyclohexane-diamineN,N′) bis (myristato)] platinum (11). The structure of this complex is shown in Figure 7.8. The arrows signify donating of electron density from the N atoms to form a “coordination bond” to the metal, Pt+2. Since Pt+2 is in the +2 oxidation state, it requires two anions, each with a −1 charge, to balance out the +2 oxidation state of platinum, thus making an overall inorganic compound neutral. In addition, you probably quickly caught in Claim 1 that the cancer cells are hepatic, and in particular these cells are cisplatin-resistant hepatic cancer cells. Now, what has occurred here? Apparently, the patent examiners found information in the prior art references that anticipated the invention and therefore the initial 10 claims. Now to be absolutely sure, you could order the file wrapper for this patent and read all the correspondence between the patent examiner and the inventor and the inventor’s attorney. This issued patent is not too long, just eight columns. Turn your attention to the section on background art in column 1 and column 2, lines 20–67 and 1–18 or so. Let me draw your attention to column 1,

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lines 59–62 and lines 64–67 and column 2, lines 1–6. All the prior art references cited were in the public domain before August 8, 2001. If you read the summary of these references in the background art section, it appears Claim 1 reads either the same as or very close to the prior art. Maybe this is a clue why the inventor’s patent went from 10 to only 1 allowed claim. It appears to me the key in getting the test drug into the cell suspension is the membrane method outlined in Figure 1 of patent 209 and column 6, lines 14–26. In column 6, lines 22–24 it states “thereby only the test drug passed through the membrane were transferred into the cell suspension.” However, identification of the membrane is limited. We learn from the figure that the membrane is a Falcon cell culture insert with 0.4-mm pores and has dimensions of 4.2 cm2. For a person with ordinary skill in the art, maybe this is the only information required to identify the correct membrane to use to duplicate the invention. But if undo experimentation is required because there are hundreds of membranes to test, then the patent may be invalid. I am not a person with ordinary skill in this art, therefore someone else must answer this question.

COMPARING CLAIM LANGUAGE WITH WRITTEN DESCRIPTION OF INVENTION After the written description of the invention and the claims are complete, I think it is very important that at least the technology terms used in the claims should be defined in the written description. Be sure to define words that can be interpreted differently by those skilled in the art, by expert witnesses, and by the inventors. Let us look at a few patent examples from Chapter 17. Table 7.7 lists two technical terms that appear in the claims of U.S. patent 5,872,289. The first term, carboxylic acid alkyl ester, has a specific meaning intended by the inventors. This term is spelled out in column 2, lines 36–48. To facilitate the understanding of the term the patent

TABLE 7.7 5,872,289

Definition of Claim Terms in U.S. patent

Term carboxylic acid alkyl ester acidic carbon catalyst

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Appear in Claim 1, 4 2

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includes not only is a formula but also a detailed description in which both R and R′ are further defined. In addition, the inventors gave specific examples of esters in column 2, lines 48–52. The second term, acidic carbon catalyst, again has a very specific meaning. The meaning is described not only in column 3, lines 44–53 but also in column 6, lines 49–67, which continues on in column 7, lines 1–30. Another example appears in Claim 3 of U.S. patent 6,369,239. The words appearing in Claim 3 are solvent or diluent. In the written description, solvents are defined in column 1, lines 9–10. Solvents must have a higher boiling point than the product and contain no nitrogen bases. Another characteristic for the solvent appears in column 3, lines 28–31. Here the inventors mention that the solvent is polar and has a higher boiling point (at least 5°C), than the product. It is further explained in column 4, lines 33–35, if the diluent has a particularly high boiling temperature then one can carry out the distillation without a separation stage. If you now look at Claim 3, the solvents listed are by chemical class: silicone oil, ketone, ester, ether, sulfoxide, sulfone, or alcohol. All these solvents are polar and contain no nitrogen atoms. Now all these solvents must meet the boiling point restriction. One skilled in the art would have a limited number of choices. Table 7.8 lists technical terms are listed that appear in the claims of U.S. patent 7,071,289. In the written description, these terms are defined for the patent examiner, the person skilled in the art, and anyone else who may not have the same definitions as the inventors. The term electroactive monomer is described in column 4, lines 13–18. The term is also further defined in column 5, lines 37–47. The next term, eletrochromic display, is mentioned in column 8, lines 2–5. The next term, antistatic coating, is described in some detail in column 8, lines 8–20. The term is also covered in column 8, lines 23–31. The last term, perfluorosulfonic acid polymer, referring to a polyanion, is first mentioned as nafion in

TABLE 7.8 7,071,289

Definition of Claim Terms in U.S. patent

Term electroactive monomer electrochromic display antistatic coating perfluorosulfonic acid polymer

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Appear in Claim 4 17 19 26

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column 9, line 28. It is further defined through the certificate of correction, which states nafion is Nafion®, a registered trademark of DuPont®. It is hoped that these limited examples demonstrate that clarity in defining words in the written description indicates how terms are to be interpreted by everyone, not just the inventor.

CHAPTER SUMMARY I selected eight patents to examine, each having a different emphasis. Table 7.9 lists the patents along with my objective for examination. Overall, it is hoped that you are now able to pick up a patent, read it with more understanding, and see how the inventor wrote the specification to explain the invention and to overcome any possible rejection from the patent examiner. Remember, each intellectual property writer will have a different style in explaining his or her invention. Some patents are better written than others. As you read more and more patents, pick out the best approaches or logic that is unique for showing how the invention works and is a solution to an existing problem. I mentioned in a previous chapter that since patents are not copyrighted, you can use one as a model. Make sure you pick a patent that is outstanding in its approach to laying out the specification. TABLE 7.9

Summary of Patents Examined

U.S. Patent 5,247,190 5,872,289

6,479,704 6,369,239

2004/0010115A1 and 7,071,289 with certificate of correction

5,273,995 7,253,209

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Examination Objective Broad claim; defining your prior art search INID codes; patent format; how to define terminology for clarity and conciseness; structure of a claim; how to summarize prior art Acknowledging federal funding Finding information to make the invention the solution to a long-time problem Composition of matter patent; differences between published patent application, and issued patent with certificate of correction The difference between two Lipitor™ issued patents? Major differences between published patent application and the issued patent

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ADDITIONAL READING 1. See www.airproducts.com/PressRoom/CompanyNews/Archived/2006/ 03Aug06.html; accessed August 6, 2006. 2. Sotzing, GA, Seshadri, V, Waller, FJ. “Thienothiophenes: From Monomers to Polymers.” In: Skotheim, TA, Reynolds, JR, eds. Handbook of Conducting Polymers. 3rd ed. Boca Raton, FL: CRC Press, 2007, Chap. 11. 3. Collins, AN, Sheldrake, GN, Crosby, J, eds. Chirality in Industry. West Sussex, UK: Wiley, 1992.

QUESTIONS 1. In Claim 2 of U.S. patent 5,247,190, the phenylene ring may optionally carry one or more substituents. Even though Claim 2 is a dependent claim relying on Claim 1, is it also a broad claim for PPV? Why? 2. In Claim 1 of U.S. patent 5,872,289, what are several keywords used that make Claim 1 broad? 3. Do you think Claim 1 of U.S. patent 6,369,239 is broad or narrow? Why? 4. Is Claim 1 of U.S. patent 2004/0010115A1 for a homopolymer or co-polymer of thieno[3,4-b]thiophene? What about Claim 2? 5. What is the meaning of the following INID codes? a. [52] b. [73] c. [74] 6. Why is it important to compare the published patent application with the issued patent?

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CHAPTER 8


CHAPTER OBJECTIVE In this chapter, I summarize the understanding of intellectual property as it pertains to trade secrets and patents and look at several aspects of the inventive process. Then I examine several possible inventions based on reports in newspapers, trade literature, and scientific journals appearing in 2009 and 2010. We will then take a few of these announcements and begin to draft an outline for a patent application. It is best to start with an outline because of the overlapping formal sections found within a patent application. It is hoped the inventors of these announced discoveries have already filed their patent applications on their inventions.

INTRODUCTION Recently, in Nature, the question was asked why more patent citations do not find their way into academic journals.1 Several reasons were presented, but I believe authors of academic journals do not take


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the time to read patents and may not know how to find the pertinent information written in the format dictated by the particular country’s patent office. In this chapter, we will pause and contrast patents and trade secrets. Then we will develop some detail around possible inventions as if you were the inventor. In the end, you’ll have a useful outline that you can later expand when writing a provisional or nonprovisional patent application.

THE INVENTIVE PROCESS Inventions can be made by individuals, small groups of individuals, or large groups. Inventions are solutions to unsolved problems or paradigm shifts in science or technology. Air-conditioning was the invention of one person, Willis Carrier. Individual parts of the printing press were well known before J. Gutenberg assembled them into what we now know as the printing press. Remember inventions or novel concepts reduced to practice are worldwide. Inventions that are very practical and actually make money for the inventor are fewer in number, less than 3%–5%. One such practical invention was mentioned recently in the Vermont Quarterly.2 The invention solves a problem in the capture of maple sap from trees. The inventor, Tim Perkins, developed a new spout connecting the tree and the tubing leading to the maple sap collection vessel. The new spout contained a check valve preventing the backflow of sap when there was a change in the pressure within the tree. When the sap flows back into the tree, bacteria from the tubing gets pulled back also. The tree responds by walling off the tap-hole position and thus cutting down on the maximum sap collection from the tree. This very clever invention can potentially allow a 20%–25% increase in sap collection. Great idea, practical, and it actually works as claimed. It should be mentioned that check valves have been known for years. But this new use has never been mentioned before in the prior art. Recently, a Salt Lake City, Utah, weekly compiled a list of issued patents, which appeared in the Wednesday issue of The Salt Lake Tribune.3 Titles from a few patents on the list are in Table 8.1. I mention this particular reference for two reasons. First, this is the first U.S. newspaper I’ve read that compiles a weekly list of issued patents. For that very fact alone it should be commended. There are probably other newspapers that perform the same service but I have not seen them. Maybe the newspaper is trying to educate its readership about intel-

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TABLE 8.1 Titles of Patents from The Salt Lake Tribune Impact Resistant Explosive Compositions Methods of Synthesizing Cyclic Nitro Compounds Sensor for Moisture Detection Paper Punch

lectual property. Second, if you look over the selected titles in Table 8.1, these are all practical inventions; a long-standing problem probably existed, and these patents are the solution to the problem. The second title in Table 8.1 may even be a completely novel organic synthesis methodology! In the brand-name pharmaceutical companies, inventiveness is expensive. In 2009, the average cost to bring a brand drug to market was approximately $1.3 billions. The average patented drug costs the consumer $150 to $175 per prescription based on my experience. It has been estimated that approximately $135 is kept by the pharmaceutical company. With the Hatch-Waxman Act of 1984, a company manufacturing generics has 6 months of exclusive marketing after the patent expires. In the United States 70%–75% of the written prescriptions are for generics. An average price for a generic drug is about $40. In 2010, about $12 billion in brand-name pharmaceutical sales will be lost to generics. In 2011, this number will almost triple. So in order for brandname pharmaceutical companies to cover their developmental costs for both successful and nonsuccessful drugs, they must become more inventive, merge, or buy other pharmaceutical or specialized drug companies for their pipeline of drug candidates. The least attractive solution, in to my opinion, is to close facilities and downsize with respect to professional scientists and support personnel. Therefore inventiveness is necessary for this and other industries. Pharmaceutical is just an example. The USPTO has launched a pilot program to decrease the numbers of months to examine and allow patent applications for inventions based on green technology. Here green technology could be in the technology fields of photovoltaics, cellulosic biofuels, wind power, batteries for vehicle transportation, batteries for power storage, and others. It is hoped to knock off 12 months of the examination process for the patent examiners. Presently, the examination process is 32 to 40 months, depending on the type and complexity of the underlying technology. I do not believe the 12-month reduction is enough. With emerging technology, you may be onto your next prototype in 18 months or less. Even with the accelerated schedule, it still may not be enough to have your marketed product protected by an issued patent.

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With this discussion as a backdrop, you can see that the inventive process is necessary to improve the human civilization. The first wheel, airplane, printing press, and air-conditioner to name a few, have had pronounced effects on the advancement of all civilizations.

SUMMARY OF OUR UNDERSTANDING FOR PATENTS AND TRADE SECRETS After the inventive process has taken place—that is, you have mentally conceived the idea and determined in your mind how the idea would work with a reduction to practice—you are ready to make a decision: trade secret or patent. Usually, there is a period of some experimentation to make a workable model of your invention. This is the reduction to practice. Both the conception date and reduction to practice date must be documented in a laboratory notebook. You and a witness should sign this notebook page as soon as possible. In U.S. patent law, these are very, very important dates to document. If you have been diligent in making your invention workable, then the date of invention is the conception date. If you are not diligent in the reduction to practice, then the date for the actual reduction to practice becomes the date of the invention. But you should also recall that the date of reduction could also be the filing date for your patent application. This is because in the patent application, you must describe your invention so that someone with ordinary skill in the art would be able to duplicate the invention. Before you file your patent application, the intellectual property or invention is a trade secret. Keeping the invention only as a trade secret has some serious consequences. If another inventor independently discovers your invention held as a trade secret, the trade secret is no longer a secret. The discoverer could file his or her own patent application, and if the patent is allowed and issued, the inventor could sue for infringement if the inventor learns that the holder of the trade secret is practicing the invention claimed in the issued patent. Every company goes to great lengths to protect their trade secrets. It was recently reported in Science that DuPont® fired one of their researchers in OLED technology for allegedly attempting to steal trade secrets from DuPont®.4 The researcher is facing a civil lawsuit from DuPont® and a criminal investigation by the U.S. Department of Justice. The outcome of this investigation will be settled in the courts; however, it points to the caution that scientists must exercise in their discussions outside of their employers and the fact that any personal interactions developed should be transparent. Usually, scientists

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employed by companies sign a confidentiality agreement that does not allow the departing employee to conduct research in the immediate area for a number of specified years. The number of years vary, depending on the level in which the current researcher is involved: exploratory, development, or commercialization. After conducting a prior art search based on the field of the invention and how the invention works, the inventor can either file a PPA or a nonprovisional patent application. In writing either patent, particular attention must be paid to the written description of the specification and the claims. The claims protect your invention. In the written description, you must, in clear and concise language, describe your invention so someone with ordinary skill in the art can duplicate your results. In addition, you must show novelty, usefulness, and proof that your invention is not obvious based on the prior art. After the patent is issued, always proofread the entire patent for errors or material left out by the USPTO, but agreed upon by the USPTO to be relevant.

IDENTIFYING A PROBLEM TO BE SOLVED Usually inventions are a result of an existing problem to be solved in the world we live. For a patent, the invention must be a novel solution that cannot be found in any prior art worldwide. Scientists usually do not invent just to put a solution on the shelf waiting for a problem to come along to take advantage of the unique solution. Also when a solution or novel technology representing a paradigm shift in scientific thinking occurs, this new tool is often able to solve a host of problems. If we ask ourselves the question, What are the challenging problems existing today? Several issues should come immediately to mind. Remember these issues are at the highest level of thinking. We will break these larger issues into more actionable problems later. My guess you would respond to the question in the following way. The first challenge would be our energy supply followed by food production, human health, security, and probably the next electronic device to make us more productive. There are many other worthwhile challenges, and this is but a short list. Each one of these high-level challenges can be further broken down into smaller technology pieces, each with its own set of problems. For example, if we start with energy supply, you would naturally think of alternative energy sources outside of fossil fuel. Then the alternative energy sources could be further broken down into renewable energy types. The latter could be photovoltaics, biomass, wind,

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Energy supply

Alternative energy

Fossil fuel

Renewable

Nonrenewable

Photovoltaics Tide/wave Solar

Si wafers Thin film

Wind

Organic/ polymer

Biofuel

Corn/ ethanol

Solar collector to drive

Cellulosic/ ethanol

Algae/lipids

ZnO + C

Zn + CO

Zn + H2O

ZnO + H2

Figure 8.1. Technology tree for energy supply.

solar, and tide or wave. Others could be hydroelectric and geothermal. Then each one of these can be further broken down by another subset of technologies. We can look at this as a technology tree. Figure 8.1 is an approach to subdividing a problem area by technology. It is important here to realize that the same approach outlined in Figure 8.1 can be applied to the other challenges mentioned, such as food production and human health. Food production for our growing world population will probably not be adequate. In 2008, global population was at approximately 6.7 billion people. By 2050, it is projected to reach 9.1 billion.5 That is roughly a 50% increase in the number of people. Inventions will be required to meet the overall challenge of supplying food. When we discuss the energy supply, it is meant to include anything that generates electricity or provides energy for our transportation needs. Fossil fuels do not require any further definition but alternative energy can be anything that is derived from renewable or nonrenewable sources. An example of the latter is nuclear power. Renewables, as mentioned, before could include photovoltaics, tide and wave, solar, wind, and biomass. You probably can name others. My technology tree

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of course is not complete, but the renewable section is modeled after the European Patent Office free global database of clean energy patents.6 I have selected three of these technologies (photovoltaics, solar, and biofuel) to break down further, so you can begin to get a handle on the existing knowledge base for each technology. Photovoltaics can be further segmented into Si wafers, thin inorganic semiconductor films, and organic molecules and polymers as a way to obtain an understanding on how materials interface with the sun to collect energy. It is at this level on the technology tree that we can make some in-roads to understand the problems yet to be solved to make any of these photovoltaic approaches a cost-effective means to generate DC power. Biofuels, on the other hand, is divided into ethanol from corn or cellulosics and long-chain fatty esters from lipids. Using corn, a food crop, is probably not the long-term solution for biofuels in my opinion. Previously, it was mentioned that food production to feed the global population is and will become an even more challenging problem. Cellulosics and lipids are another long-term solution for biofuels and many problems will have to be solved through inventions. I personally like the algae or microalgae approach. These unicellar photosynthetic organisms like green plants absorb CO2 and then with sunlight turn the CO2 into organic compounds like fatty acids and glycerol. Lipids, which are a group of organic macromolecules that include fats, oils, and even waxes, are produced from glycerol (a tri-alcohol) reacting with three fatty acids. The oil or lipid isolated can be converted to either biodiesel or biojet fuel through a process called transesterification. The chemistry of transesterification is shown in Figure 8.2. It is the fatty acid ester that can be burned as a fuel. The majority of the ester molecule is very hydrophobic, like a hydrocarbon, because the length of the R group can be 18+ carbons long.

O R R R

O

C

CH2

(CO)O

CH

O

CH2

C O

(Lipid)

+ 3CH3OH

HO

CH2

HO

CH

HO

CH2

O

+

(Glycerol)

3 R

C

OCH3

(Fatty acid ester)

Figure 8.2. Process of transesterification.

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The solar technology approach mentioned in Figure 8.1 is an interesting way to produce H2 and CO from water and a carbon source, such as coal, as a reducing agent. The H2 and CO offgas become available for fuel use. There is also a potential separation of the H2 from the reaction offgas. The thermal heat, 1000°–1300°C, required for the ZnO and carbon reaction comes from sun-collecting mirrors reflecting to a solar tower. The solar tower then beams down the collected sun rays to the solar zinc production plant. The endothermic reaction in the production plant is the following: ZnO + C → Zn + CO The Zn is separated from the offgas and then treated with water to produce the following: Zn + H 2O → ZnO + H 2 To work at these high temperatures, the proper mixing of reagents and materials of construction must be determined by the inventor. This Solzinc project is work in progress.7 One can also put the use of water for H2 production by the photocatalytially splitting of water into H2 and O2 under solar technology. A problem with this approach is water oxidation because the oxidation is a kinetically slower reaction. A correctly tailored catalyst may help speed up this particular reaction. The last point to discuss from Figure 8.1 is the long-standing problems with a solar cell made either from a Si wafer, semiconductor thin film, or an organic molecule or polymer film. One of the problems is the solar conversion efficiency of the cell. The solar conversion efficiency is related to absorptivity of the material or ability to absorb energy from the many wavelengths of light given off by the sun multiplied by the ratio of the number of electrons produced by this absorption and traveling through the external circuit divided by the number of incident photons from the sun. As an example, a semiconductor material such as copper indium gallium selenide has an efficiency of 10%–13%. Organic cells have an efficiency of only 6%–7% at this time. TypicalSi-based solar cells have an efficiency of in the 20%–25%, while a recent report on a semiconductor composite triple-junction solar cell has an efficiency of 40%–41%. The basic problem with materials used in making solar cells is the ability of the material not only to absorb the incident sunlight from the sun but also to create electron-hole pairs or excitons within the material

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that makes up the cell. For the photocell to produce electricity, the electron-hole pair must separate and migrate to their respective electrodes. If one understands the properties of the exciton, electron and hole mobilities, and the material, then the inventor may design better materials for charge separation, migration of charges, and capture of the separated charges at the electrodes. To summarize, after construction of a technology tree (as we did with energy supply), the inventor must initiate a literature search on a specific technology subdivision. For example, what is known about organic molecules and polymers used for film photovoltaics. As you read the literature from your search, write down the problems that researchers have discussed and solved in their papers. You should be able to establish a time line for the advancement of the technology. What are the existing problems to be solved? Earlier, we mentioned solar cell efficiency of only 6%–7% for organic cells. What prevents researchers from getting to 10%, 20%, or 30% in an organic-polymer thin-film photocell? Is it only the separation of the electron-hole charges? It is hoped you now have a procedure for identifying technical problems to be solved that will allow you to invent a solution. The procedure can be summarized in outline form: 1. Build a technology tree of possible solutions to a general problem. 2. Understand the technology pieces with a comprehensive literature search. 3. Determine the technology advances (problems solved) by establishing a time line. 4. Ask yourself, What is the next problem needed to be solved to advance the technology further? I hope this outline will assist you in identifying problems to be solved with inventions.

METHODOLOGY TO SOLVE A COMPLEX PROBLEM Scientists ask questions and then find answers by performing creative research. On the other hand, inventors look for problems and then find solutions by combining their creative ability with research. The U.S. Energy Information Administration has estimated that by the year 2020, the electricity generated by coal and natural gas will produce a combined 13.1 billion tons of CO2 worldwide. Remember,

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this does not take into consideration the amount of CO2 generated as a result of transportation (such as cars, trucks, buses, and airplanes). To put this into perspective as a scientist, 13.1 billion tons of CO2 is 2.97 × 1014 mol CO2, assuming a metric ton. This is about 49 × 10−9% as large as Avogadro’s number (6.02 × 1023). Photosynthesis— CO2 + H2O → [CH2O] + O2—reduces this amount, but what other solutions are available or not yet discovered to reduce CO2. Remember, CO2 is a thermodynamic end product of combustion. To elevate it to some other useful form, expenditure of energy is required. Without this expenditure of energy, large-scale use of CO2 is very limited outside of photosynthesis. This would suggest a shift to decreasing its production may be a better approach. However, inventors may be able to tap a source of free energy (sun, nuclear fission, futuristic nuclear fusion) to couple CO2 with another substance to drive an endothermic reaction to a useful product. Only time will tell. How do you understand a problem so that you can begin to invent solutions? Earlier in this chapter we started with developing a technology tree. Let us be more specific with another example: understanding the use of rare-earth elements. I have done some reading about rareearth elements and their projected increase demand in the future for green-energy applications. First you would perform a comprehensive literature search to understand the mining and separation technology used worldwide at this time for the rare-earth elements. With this understanding, you should be able to define the existing technology and what problems still need solving to make the rare earths cheaper and more readily available. The background for rare-earth mining and separation is presented next. Presently China supplies a 95%–97% of the rare earths, also called lanthanides. In 2010, China cut back in its exporting of the rare earths to about 35% of the export level of 2009. Because of the anticipated demand for these elements, many countries are developing their own mines outside of China. The ability of these mines to compete with China will depend on mining costs and costs associated with the separation of the rare earths into individual elements. I believe rare earths will be an important commodity, just like gold, platinum, palladium, and other precious metals, although I hope not as expensive. The rare-earth elements are tabulated in Table 8.2. One property of importance to their separation is their decreasing atomic radius of the ion in the +3 oxidation state, even though the atomic number from La to Yb is increasing (57–70). This is known as the lanthanide contraction and allows for their separation by ion-exchange chromatography. We’ll return to this property later.

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TABLE 8.2

99

Selected Rare-Earth Elements

Element lanthanum cerium praseodymium neodymium europium terbium dysprosium ytterbium

Symbol

Radius of M+3(Å)

La Ce Pr Nd Eu Tb Dy Yb

1.061 1.034 1.013 0.995 0.950 0.923 0.908 0.858

Rare-earths, such as those in Table 8.2, are used today in car batteries, electric motors, magnets in windmills, lasers, disc drivers, and radar equipment to name a few. Even though there is an ionic contraction going from La to Yb, the difference is small, and therefore, separation of these elements from one another is difficult. Rare earths are mined as an ore consisting of bastnasite and monazite. The latter is a rareearth phosphate. To be cost competitive, a mining facility must have a low production cost, minimum waste output, efficient rare-earth extractions, and very efficient separations. Historically, the ore is crushed and then digested with hot concentrated H2SO4. The rare earths dissolve into solution as sulfates. At this time, the thorium and cerium sulfates are extracted from the solution by an immiscible solvent. The remaining lanthanide sulfates are precipitated with NaOH to form lanthanide hydroxides. The hydroxides are redissolved into HNO3. These rare-earth elements, all in the +3 oxidation state, are separated by a chromatographic technique called ion exchange. This chromatographic technique uses a cation-exchange resin in a long, cylindrical column. The reader can see that liberation of the rare earths from the ore requires several acids and bases, such as H2SO4, NaOH, HNO3, an immiscible solvent, cation-exchange resin, and solvents required to affect separation on the chromatographic column. It has been reported that Molycorp in the United States and researchers in China are actively involved in simplifying the mining and separation processes.8 Molycorp has reduced the mining process to the use of only HCl and NaOH. The principle byproduct of the mining process is NaCl. In the same cited reference, it was reported that the NaCl is used in a chlor-alkali plant to produce NaOH, Cl2, and H2 by the following equation: 2 NaCl + 2H 2O → 2NaOH + Cl 2 + H 2

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If, as mentioned, the Cl2 is used to make sodium hypochlorite from NaOH and Cl2 by the equation Cl 2 + 2NaOH → NaCl + NaOCl + H 2O then Molycorp has a cash credit when sold into the marketplace. The latter can also be accomplished by selling one the raw ingredients, Cl2. It should be pointed out in the sodium hypochlorite production, NaCl is produced not HCl as mentioned in the reference. I think building both a chlor-alkali and sodium hypochlorite plant on site would be getting away from the main objective: competitive pricing for the separated rare earths. The other byproduct from the chlor-alkali plant is H2, which could be used as a fuel or sold. Molycorp has apparently simplified the mining process from the historical process last discussed to the consumption of only HCl and NaOH. All the innovation has been kept as a trade secret and not patented. A patent may be difficult to obtain because of all the existing prior art in the public domain. The obviousness factor probably plays an important role here. However, the integration of the mining process with a chlor-alkali plant, sodium hypochlorite plant, and H2 for fuel or selling into the market, I believe, is novel. The key to make high-tech products from the individual rare-earth elements or salt is first to efficiently separate the +3 lanthanide ions. Because of the lanthanide contraction (Table 8.2), the size of the +3 ion decreases, going from La to Yb. Chromatograph uses this contraction to its benefit because large ions are more firmly held by the cationexchange resin. Therefore, the smaller ions will move down the column faster, and lutetium will elute first. Any chromatographic technique however will require large volume of eluting reagents like ammonium citrate, and other solvents, followed by solvent removal to obtain the rare earths. In addition, the chromatographic column, which is now in the ammonium ion form, must be reactivated back to the original proton or acid form. The separated rare earths in the citrate form must be converted to the final salt form desired. Therefore, the application of separation science toward the isolation of the individual rare earths ought to be an inventor’s dream come true. For example, porous materials that have a very specific pore size may allow selective removal of the rare-earth +3 ions because of the lanthanide contraction discussed previously. This may then lead to less eluting reagents and solvent handling. Last, in the mining of the phosphate ore, the phosphate will end up in the form of various oxyacids of phosphorus, like H3PO4. The phosphates will require a market such as fertilizers.

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POSSIBLE INVENTIONS FROM OUR EVERYDAY READING

It is hoped by researching a problem such as rare-earth mining and separation, the inventor will understand the state of the science and then will be in better shape to think about novel and useful solutions.

POSSIBLE INVENTIONS FROM OUR EVERYDAY READING Those of us who are technologists often come across reports in newspapers, trade journals, and scientific journals about an idea covering an invention. We usually read about a workable model or the reduction to practice. While writing this book, I saved selected ideas that have appeared in print, and these are listed in Tables 8.3 and 8.4. It is assumed in some of these examples that the inventor has applied for a patent and is waiting for the patent examiner to either reject or allow the TABLE 8.3 Announced Patentable Inventions Basic Idea

Reference

Bright water for enhanced oil recovery: at cool water temperatures a polymer particle is tightly held together, but when exposed to heat, the polymer expands about 10-fold, stopping water flow into layers of rocks not containing oil Photobioreactor designed for better light distribution to enhance algae growth Deuterated versions of drugs could be metabolized more slowly because deuterium chemical bonds are stronger than their hydrogen analogs New curing process for tobacco to reduce carcinogens like nitrosamines

TABLE 8.4

10 11

12

Possible Patentable Inventions

Basic Idea Contrary to accepted belief, super-thin plastic films reduce better than thick films the permeability of oxygen and carbon dioxide Circumventing the rules of electrophilic aromatic substitution for electron-donating groups with a meta-selective substitution process A unique ruthenium complex enables a net equation of water splitting into hydrogen and oxygen through a combination of two halfreactions: H2O + H2O → H2 + H2O2 and H2O2 → 1/2O2 + H2O A spiropyran mechanophore undergoes ring opening through mechanical stress to produce a visually colored merocyanine when incorporated as a cross-linker in the copolymerization of a di-methylmethacrylate derivative of the spiropyran and methyl methacrylate

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9

Reference 13 14 15

16

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patent claims. If the 18 months have not yet passed from the filing date, then we will not see the published patent application at the USPTO. Each one of the basic ideas in Table 8.3 has been reduced to practice, and patent applications have been filed. Passing the useful, novelty, and nonobvious test used by the patent examiners is probably still ongoing for some of the other inventions. If these inventions produce worthwhile and profitable products in the marketplace, then litigation by competitors may follow. I think all four would be challenged by someone who is in the same business as the invention. This is especially true for the deuterated versions of drugs. In my general reading of drug-related patents, a deuterium substituent usually is not listed under R! Algae growth, in my opinion, will be the next explosion of patent applications and issued patents. A few start-up companies claim to have engineered algal cells that can directly secrete hydrocarbons in pure form without splitting the cells open to obtain their oils. If this is true, and coupled with novel photobioreactors designed for better light distribution to enhance algae growth, many inventions ought to be forthcoming. Back in 2007, $1 billion or more had been spent on algaeto-energy research and development. I believe algal-biofuel has a very high prospect to succeed if laboratory experiments can be scaled to commercially viable processes. However, getting past the hype may take some time. The unique ruthenium complex and spiropyran mechanophone mentioned in Table 8.4 are shown in Figures 8.3 and 8.4, respectively. We will use some of the references in Table 8.4 to draft an outline for a patent application. You will not find this outline in the references provided at the end of the chapter. PATENTABILITY REQUIREMENTS Before wiring an outline for a patent application and then the patent application itself, patentability requirements should be the paramount P(tBu)2 H N

Ru

CO

OH NEt2

Figure 8.3. Ruthenium with hydrido and hydroxo ligands.

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CIRCUMVENTING THE RULES OF ELECTROPHILIC AROMATIC SUBSTITUTION NO2

Polymer Polymer O O O

NO2

-

N

O

O

+

CH3

N O

Polymer

CH3

Polymer

(Colorless spiropyran)

(Reddish color)

Figure 8.4. Spiropyran and ring-opened merocyanine.

consideration. In previous chapters, the following six were discussed. The invention must be novel and nonobvious over the prior art, and must be useful; the patent application must contain a written description of the invention. The written description also must contain enablement and the best mode to practice the invention as the last two requirements. Therefore, as you begin to write your patent application, these six requirements must be met for the patent examiner to allow your patent.

CIRCUMVENTING THE RULES OF ELECTROPHILIC AROMATIC SUBSTITUTION As organic chemists, we are taught that the aromatic substitution pattern on an R-substituted aromatic ring depends on the steric and electronic nature of the R group itself. The orientation of the substitution pattern is illustrated in Figure 8.5 with several different types of R groups. If the R group is electron donating, it is an ortho, para director. If the R group is electron withdrawing, it is a meta director. The positions next to the R group are called ortho, while the positions next to the ortho location are called meta. In monosubstituted benzene rings, there are two ortho and two meta positions. The position next to meta going around the ring is called para. Alternative nomenclature is the 2- and 6-positions for ortho, 3- and 5-positions for meta, and the 4-position for para. Therefore, based on this set of principles, one would predict that an electron-donating group such as –NHCOR′ would be an ortho, para director. To generate a meta product is an unmet objective for chemical synthesis of –NHCOR′-substituted aromatic rings.

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R group

R

Ortho

Electron-donating group

Electron-withdrawing group

-NH2, -OH

+ -NR3, -CN

-OR', -NHCOR'

-NO2, -CO2H

Meta -halogen Para For o, p substitution

For m substitution

Figure 8.5. Substitution pattern on aromatic ring with R group.

The authors in the cited Science article use a combination of Cu(OTf)2 and ϕ2IOTf, which under reaction conditions lead to a highly electrophilic Cu(+3)-aryl triflate reagent that substitutes uniquely at the meta position. The reductive elimination of the Cu(+3) substituted acetanilide intermediate produces the meta phenyl–substituted acetanilide and a Cu(+1) species, which can further react with ϕ2IOTf in an oxidative addition reaction to form the electrophilic Cu(+3)-aryl triflate reagent to repeat the C-H bond arylation step. The next order of business a researcher should take after the reductive to practice step is to conduct a prior art search to determine the novelty of their invention. In this example, the prior art search should include the technology field and how the invention works. The technology field is a process to make meta-substituted acetanilides by C-H bond arylation. How the invention works requires bringing together acetanilides, copper(+2) triflate, bisarylated hypervalent iodine salt, solvent, and the correct reaction conditions. Based on the background of electrophilic aromatic substitution chemistry, the prior art search should not uncover many references for meta substitution in electronrich aromatic substrates. If the prior art did not uncover references that anticipate your invention, you should proceed with the next decision: whether to keep the invention as a trade secret, publish it as a scientific article, or file a patent application. The choice between publishing a peer-reviewed scientific article or filing a patent application is usually a business decision. Many academic researchers would rather publish a scientific article. Remember, only 3%–5% of all issued patents actually make money. You may ask yourself the following questions: Does this invention open up a whole new technology area? Is this a very specific invention for which a patent estate would be difficult to build? Someone in industry may decide to

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TABLE 8.5

Process to Make Meta-Substituted Acetanilides

Patent Format title of the invention background of the invention

brief summary of the invention

examples

105

Information Outline Synthesis of Meta-Substituted Acetanide Derivatives Summarize references found in “prior art” search; state problem (researchers are looking for synthetic methodology to prepare meta-substituted products from electron-rich aromatic starting materials) Short history of electrophilic aromatic substitution chemistry; definition of acetanilides and the structures of aromatic compounds that have this parent structure; variation of the NHCOR group, where R = Me and tBu; Cu(+3) generated from Cu(OTf)2, and φ2 IX where X = OTf , BF4 and PF6 ; range of reaction conditions; types of solvents Experimental procedures on how the copper-catalyzed aromatic substitution reaction was performed; how the active Cu(+3) species is actually made; comparative Pd catalyst example demonstrating ortho substitution

keep it as a trade secret, on the other hand. If the synthetic methodology is key in an overall synthesis to a pharmaceutical intermediate, then filing a patent application may be appropriate. Having selected the patent application approach, you next must start to formalize an outline to assist you in beginning the patent application. This outline could take the form represented in Table 8.5. In the results reported in the Science article, only the solvent 1,2-dichloroethane was mentioned. If only chlorinated solvents are necessary, this should be pointed out. Most likely, polar solvents able to coordinate to the electrophilic metal center are the important ones. However, this point should be demonstrated with examples. This reported reaction is probably run as a single homogeneous phase in which the active catalyst is soluble. The researchers did not mention the possibility of anchoring the active Cu(+3) or precursor Cu(+2) or Cu(+1) catalyst onto a heterogeneous polymer support such as Nafion®, a perfluorosulfonic acid resin made by DuPont®. This would add another dimension to the scope of the chemical process: filtering off the catalyst. WATER SPLITTING VIA RUTHENIUM COMPLEX The next illustration for a patent application outline is the reaction chemistry centered around the ruthenium complex mentioned in Table 8.4 and shown in Figure 8.3. The net chemical reaction is:

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H 2 O → H 2 + 1 / 2O 2 However, the novel concept is to add water to both sides of the chemical reaction: H 2 O + H 2 O → H 2 + 1 / 2O 2 + H 2 O Then break the new reaction into two half-reactions: H 2O + H 2O → H 2 + H 2O2 H 2 O 2 → 1 / 2O 2 + H 2 O Now comes the question, how can one carry out these reactions? The second half-reaction is known—the catalytically disproportionation of hydrogen peroxide into O2 and water. The first reaction is more novel and requires the availability of a metal center to make a hydrogen atom to behave as a hydride. Then water acting as an acid would protonate the hydride to generate H2 and co-produce a metal dihydroxo complex, which can eliminate hydrogen peroxide. Upon generation of hydrogen peroxide, the reduced form of the metal is ready for the inventor to add water to generate back the hydrogen atom as a hydride. This then regenerates the active metal center and allows for a catalytic cycle. This is what the researchers accomplished and reported on in the Science reference.15 I hope the authors of this Science article have protected their novel invention with a patent filing and that, it will later be allowed and issued as a patent. In terms of generation of H2 from water, I believe this invention has merit for further study to determine if the technology is feasible on a larger scale. The reader must, however, remember that the thermodynamics of the overall desired net reaction has not changed. The Gibbs free energy of the net reaction is +54.64 kcal/mol at 25°C. This means that the net reaction is endothermic, or requires energetic input. The source of this energy must be free to drive the energy intensive reaction uphill for the overall net reaction to be practical. To put this into perspective, the reverse reaction of hydrogen and oxygen to water is energetically downhill, or exothermic. After the researchers have proven their idea or concept with a reduction to practice, it is time for the prior art search. The field of the invention is a process for water splitting with a unique reaction of H 2O + H 2O → H 2 + H 2O2 What makes the invention work is the reaction of water with water where one of the water molecules is held as a hydride and hydroxo

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TABLE 8.6 Water Splitting via Ruthenium Complex Patent Format title of the invention background of the invention brief summary of the invention

examples

Information Outline H2 and O2 Production from Water Mediated by Ru(+2) Complexes Summarize references found in prior art search; state problem (researchers are looking for alternative methods to split water into H2 and O2) Summary of methods presently known to split water into H2 and O2; background on Ru complexes used in this study; definitions of terms (oxidative addition, reductive elimination, photolysis, catalyst, and pincer ligand) Experimental procedures on how the Ru(+2) complexes are prepared; demonstration of the two-step reaction for H2 and O2 generation

anions on a cationic metal center. This search is actually more complicated because one of the metallo intermediates is a cis dihydroxo complex that photochemically produces hydrogen peroxide from the cis complex. It is my guess that the prior art search will not uncover references that anticipate this invention. As in the previous example, you should start to formalize an outline to assist you in beginning the patent application. A typical outline is shown in Table 8.6. Also, in the brief summary of the invention section, the two half-reactions of H 2O + H 2O → H 2 + H 2O2 H 2 O 2 → 1 / 2O 2 + H 2 O must be emphasized. It should be pointed out that the stoichiometric water reacting with water reaction, facilitated by Ru(+2) complexes, is novel in the generation of H2. The photochemical liberation of hydrogen peroxide from a Ru(+2) complex may also be novel. However, there could be thermal elimination of hydrogen peroxide known for non-Ru-based complexes. In these two examples, I have attempted to show an outline of a procedure to help the patent writer put pen to paper. After you have an idea for an invention with reduction to practice, you now can begin to describe what makes your invention work. This allows you to set up your searching strategy to establish any prior art. Armed with your technology field defined by the invention itself, and the steps to make

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your invention work, your search should generate references. Some of these references will not be relevant. Going back to, Table 7.4, you should be able to develop a spreadsheet summarizing the literature search findings. The prior art references should tell you the status of the current research findings. From this information, you should be able to state the problem to be solved to move the technology to the next level, or if there is no or little prior art, then you may be able to start a paradigm shift. Having established the problem to be solved, you then narrate how your invention solves the problem. As shown in Tables 8.5 and 8.6, you begin to educate the patent examiner and one who has ordinary skill in the art about your invention in the brief summary of the invention section of the patent application. Remember, in this section, you attempt to give a high-level summary of your invention. In the detailed description of the invention section, you expand on the explanation given under brief summary and present much more detail. You should also define technical terms that are key to the understanding of your invention. Never let someone else set the definition. If three scientists were asked to define pincer ligand, you will probably get back at least two different definitions. You never want this to happen, especially during litigation. Therefore, err on the side of caution and define important terms, especially technical terms that are used in your claims to define your invention.

DETECTING MECHANICAL STRESS WITHIN A POLYMER Another possible patent from Table 8.4 is the visual recording of a mechanical stress within a polymer. The spiropyran bonds, when broken, are responsible for the color change, as shown in Figure 8.4. This visual sensor could detect stress damage on materials consisting of polymers before the material actually fails. The spiropyran is known as a mechanophore. This is the first time a mechanophore has been put into a solid polymer. Presently, the spiropyran with vinyl groups can be copolymerized with methyl acrylate or methyl methacrylate. Other mechanophores are known to have their bonds broken when put into a polymer dissolved in a solvent by using ultrasound, which produces the shear forces. It is assumed that the polymer bond breakage occurs only at the mechanophore linkage. A possible outline to assist you in beginning to write the patent application is shown in Table 8.7. But first consider how you would structure the prior art search. The technology area is polymers contain-

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TABLE 8.7

Ring Opening of a Spiropyran Mechanophore

Patent Format title of the invention background of the invention brief summary of the invention

examples

109

Information Outline Mechanical Stress Rupture of a MechanophoreContaining Polymer Summarize references found in prior art search; state problem (material science researchers are looking for methods to detect mechanical stress within polymers) Many patent examiners may not be completely familiar with mechanophores and polymers containing mechanophores, therefore, defining terminology is important (spiropyrans, merocyanines, mechanophore, covalent bond breakage, stress-induced chemical reaction, polymer chain scission, and cross-linking) Experimental procedures on synthesis of the mechanophore; copolymerization of vinyl terminated mechanophore with other vinyl monomers; testing of bulk polymer samples

ing mechanophore groups. This also tells us that the statutory class for the utility patent could be composition of matter. How the invention works is to have a polymer consisting of mechanophore groups in the backbone of the polymer where the mechanophore group has chemical bonds weaker than the chemical bonds within the polymer chain. Therefore, when a force-induced stress is applied to the polymer, the mechanophore selectively opens up, and because of its chemical composition, it produces a chromophore that has color for visualization. A prior art search with these criteria should give you many references. These will include polymers in solution, polymers in the solid state, and types of mechanophores. Since certain polymers with mechanophore groups are known, you may want to include in the search potential applications such as visual and nonvisual stress indicators, stresscontrolled drug release, mechanophore release of monomer, and/or initiators to heal itself. The latter is an example of a smart material. There exists a possibility that the body of prior art knowledge may be sufficiently large so that an individual skilled in the art may be able to render this invention obvious. However, construction of the spreadsheet discussed in Chapter 7 may help pinpoint which elements of the invention are sighted in other references. The spiropyran is just one of several families of compounds that undergo ring-opening reactions under light, heat, or—as in this case— force-induced activation. Other ring-open families include spirooxazine and chromene.17 It must be remembered that the open form can

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be closed either photochemically or by heat. The closed form can also be activated by heat or light. I believe that it may be difficult to write this patent application and to convince the patent examiner that the claimed invention is not obvious. Therefore, serious thought should be given to build arguments that stress that related mechanical failure within a bulk polymer by a mechanophore is a new research area.

PLACES TO FIND FUTURE PROBLEMS I hope this chapter helps you find problems to solve and begin to think about possible solutions. One approach mentioned at a very high level is to establish a technology tree, which will allow you to understand the breath of the solutions. Each one of these solutions can be searched in the literature to establish a timeline of solutions from the past and what hurdles must still be overcome to progress the technology further. We then selected a few problems and developed an understanding of some of the hurdles. Finally we selected inventions reported in the public domain and constructed an outline that could be used to write the written description of the invention. Finding problems to solve is not as hard or complicated as you may think. Recently, you have probably read that there is a worldwide effort to ban certain chemical substances found in household products. A few of these chemical substances appear in Table 8.8. These and other chemicals have been associated with causing cancer, impairing fertility, and causing genetic damage. Why is this list important to you? The answer is these and other toxic chemicals will require a safe alternative. The chemicals listed in Table 8.8 are a monomer, a plasticizer, and a colorant. These chemicals must be replaced with nontoxic substitutes that have similar properties. Each substitute could be an invention. However, your initial procedure is the same. A literature search for the specific chemical, property, and household product. TABLE 8.8 Toxic Chemicals Chemical bisphenol A dibutyl phthalate lead chromate

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Where Found

Property

polymeric can liner food containers paint

reactive monomer plasticizer yellow pigment

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CONTROLLING MOLECULAR SIZE OF SEMICONDUCTOR QUANTUM DOTS

111

We mentioned previously that there are several challenging problems existing today. One that was not mentioned is the future shortage of drinkable water for the growing population. There is plenty of water, however, only 3%–5% of the world’s water is salt free. The other 97%–95% is found in oceans. Access to drinkable water from the oceans now relies on reverse osmosis. Reverse osmosis uses high pressure to force saltwater through a semipermeable membrane. This separates the salt from the water but the cost is high and very energy intensive. Understanding reverse osmosis will help you understand the developments leading to reverse osmosis, and alternative methods with problems yet to be solved to make the water more affordable. An alternative approach to reverse osmosis was mentioned in the Wall Street Journal.18 We remember from biological science that osmotic pressure removes water from a dilute solution to a high concentration saline solution when the two solutions are separated by a semipermeable membrane. If the high-concentration saline solution is replaced by a high-concentration ammonium salt solution, then the water migrated to the ammonium salt solution can be more easily evaporated. Before we leave this important area of safe and clean water, how do we remove the prescription drugs or other chemicals now building up in the existing fresh water supply? Many people flush their old medicines down the toilet, and chemicals seep into our underground water supply. There are ongoing efforts to collect unused prescription medicines. This helps, but the levels of unwanted drugs and chemicals continue to grow in our water supply. Some municipalities are trying oxidation technology. Advances in oxidation technology to activate the dissolved drug or chemical to further decompose into harmless materials should test the inventors’ creativity. The oxidation will probably rely on oxygen, hydrogen peroxide, or short-lived oxidation intermediates derived from oxygen or hydrogen peroxide. Whatever oxidant is selected must not add a co-product to the water that is as harmful as the drug or chemical trying to be removed.

CONTROLLING MOLECULAR SIZE OF SEMICONDUCTOR QUANTUM DOTS The following solution is theoretical; however, controlling the molecular size of quantum dots made from semiconductor inorganic material is a real problem. Most synthetic approaches involve a distribution of particle sizes. This, I believe, stands to reason because as particles grow

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through nucleation, or any other method, the particles do not grow at the same rate nor do all particles start to grow at the same time. Quantum dots fall under the broader term of nanotechnology. Some semiconductor bulk materials like CdSe emit light, depending on their bandgap. The bandgap for bulk CdSe is 1.89 eV; therefore, the light emission is about 670 nm. It turns out that particles, in particular nanoparticles of semiconductor materials, have unique properties. These properties are known as quantum confinement effects. When particles are

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