After over 32 years of practice, I’ve found that patent application drafting is more “art,” than science. One item I’ve particularly enjoyed is describing why the invention is significant or a “big deal.” I call this telling the “story of the invention.”
I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention. It can be quite helpful to effectively, but safely tell the “story” of the invention in a patent application.
The litigated cases are often full of interesting “invention stories” which became significant in reaching the conclusion that the invention was patentable. One great example is United States v. Adams, 383 U.S. 39 (1966) which is one of the few instances, at least in recent memory, where the United States Supreme Court affirmed the patentability of the claimed invention.
The Adams patent (U.S. 2,322,210) involved a storage stable “dry” battery comprising a magnesium anode and a cuprous chloride cathode which became operative when placed in a plain or salt water electrolyte, yet held a stable, consistent voltage. Less than a month after filing his patent, Adams brought his invention to the attention of the Army and Navy. In fact, demonstrations were arranged before experts of the United States Army Signal Corps. Interestingly, the Signal Corps scientists did not believe Adam’s battery was workable.
The plot thickened when the federal government contracted with other manufacturers to make this supposedly “unworkable” battery. When Adams sued the federal government in the Court of Claims to get compensated for this unlicensed use of his patented battery, the federal government argued it was unpatentable based on the following: (1) “wet batteries” comprising zinc anodes and silver chloride cathodes were old in the art; and (2) the prior art showed that magnesium could be substituted for zinc and cuprous chloride for silver chloride.
When the federal government couldn’t convince the Trial Commissioner of the Court of Claims that Adam’s battery was unpatentable, they then petitioned to the U.S. Supreme Court. As stated by the U.S. Supreme Court:
The Adams invention was the first practical, water-activated, constant potential battery which could be fabricated and stored indefinitely without any fluid in its cells. It was activated within 30 minutes merely by adding water. Once activated, the battery continued to deliver electricity at a voltage which remained essentially constant regardless of the rate at which current was withdrawn. Furthermore, its capacity for generating current was exceptionally large in comparison to its size and weight. The battery was also quite efficient in that substantially its full capacity could be obtained over a wide range of currents.
While acknowledging this prior art relied upon by the federal government, the Supreme Court found several flaws in its reasoning: (1) the Adams battery was “water-activated” which set it apart from the prior art; (2) as admitted by the federal government, the the Adams battery was “wholly unexpected” in providing “certain valuable operating advantages over other batteries” while those from which it was alleged to have been copied “were long ago discarded”; and (3) “at the time Adams perfected his invention noted experts [e.g., the Signal Corps scientists] expressed disbelief in it” even though [s]everal of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system.”
Legend also has it that when it came time to argue this case before the Supreme Court, Adam’s lawyer connected one of these “water-activated” batteries to a light bulb. And during this argument, as the light bulb began to “glow,” it caused a stir to ripple amongst the justices. The rest, shall we say, is history, as the Supreme Court (with one dissenting justice and one not taking part) concluded that Adam’s battery was, in fact, patentable.
So what does Adam’s battery have to do with drafting patent applications today? My response: the “story” behind Adam’s invention. Other inventions may not have “stories” as dramatic as Adam’s battery, but each invention should have some sort of “story” to tell that will be useful in arguing why that invention is patentable. Such stories have become even more important after the Supreme Court ruled recently in KSR International v. Teleflex that an invention can be unpatentable if “common sense” says it is. That means the “story” must tell why the claimed invention isn’t derivable by simply applying “common sense” or looking at the prior art. Like Adam’s battery, this story may tell you that: (1) the prior art doesn’t recognize the problem(s) solved by the invention; (2) the invention provides “unexpected” benefits or advantages relative to the prior art; and (3) the prior art would, in fact “teach away” from the invention.
So here are some “rules of thumb” for effectively, but safely telling the “story” of the invention in a patent application:
Location, location, location. This “story” about the invention needs to be told in the right place in the patent application. Previously, this “story” was told in the background section of the patent application. Unfortunately, the Federal Circuit has made it dangerous to do so any more in the background section. Any patent attorney or agent who has been confronted with an allegation of “admitted prior art” (APA) by a patent examiner based on what was said in the background section knows what I’m talking about. So the “story” about the invention should now be moved to the beginning the “detailed description” section of the patent application. In other words, the “story” doesn’t change, just its location in the patent application to avoid or minimize later allegations of APA.
Talk about the “problem(s)” solved by the invention and/or the benefits/advantages provided. Our friends in Europe know what I’m talking about here. If you want to make effective arguments for why the invention is patentable after KSR International, it’s almost imperative to point out the unrecognized “problems” solved by the invention and/or the significant benefits and/or advantages provided by it. That doesn’t mean you can’t make a case for patentability without these items. But it’s going to be much more difficult in the post-KSR International world to do so without a “story.” You also need to be careful in making direct comparisons of the “superiority” of the invention to specific prior art. If it turns out that the patent examiner doesn’t consider this specific prior art to be the most relevant to the invention, you may be stuck later with a comparison that becomes an “admission” (even APA), and worse yet, a basis for a potential “inequitable conduct” charge if it is alleged in litigation that what was said is more than just “puffery.”
Whenever possible use unique words to describe the invention. An inventor is legally entitled to be their own lexicographer, so use this advantage in the patent application. That means a “unique” invention should be described in a unique manner, including using unique words or phrases when possible for any terms used (or potentially used) to describe the invention. That also means providing a significant definition section (like in a contract) to define these unique or “coined” terms broadly, intermediately, and narrowly (you can do all three in the definition if you write it correctly). I call this technique “dictating the playing field.” Put differently, do you want to dictate the patent application’s “playing field,” or would you rather the patent examiner (or worse yet litigation opponent) dictate that “playing field?” In fact, because many patent examiners do their searching for prior art by using “word searches” (and not by using the Manual of Patent Classification as many of us did in the “old days” and still do on-line), these examiners may find themselves rudely “jolted” into thinking about the invention (and the prior art) in a new way that makes allowance of the patent application more appealing.
Spend some time thinking through the “story” to be told. In the past, it used to be standard practice, especially in the mechanical arts, to spend significant time drafting the claim set first, and then spending the remaining time afterwards drafting the specification. I’m going to suggest that you should reverse that order and emphasis. After putting together what you think the independent claims initially look like, you should then focus your energy on the “story” you will tell about the invention, including what terms you need to define to make that “story” work. Drafting an extensive claim set, but without putting together a “story” to tell about why the invention defined by that claim set is a “big deal” is likely to lead to significant patent prosecution frustration and failure.
So try to be the next Adam’s invention which tells a “story” for why the invention is a “big deal,” and you may be pleasantly surprised at how much easier patent prosecution becomes.
For more on US v. Adams see Wikipedia.
© 2010 Eric W. Guttag