October 23, 2021

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Top 10 prosecution mistakes that impact enforcement of patent

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This article is written by Shriya Pandey who is pursuing a Certificate course in Intellectual Property Law and Prosecution from LawSikho.

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It is a commonly known fact that patents are the most expensive form of intellectual property.  In addition, the process of obtaining a patent can take up to 10 years for certain industries. According to a 2016 report by The Center for the Protection of Intellectual Property, the average pharmaceutical patent granted in Thailand in 2015 was 16 years old. In Brazil, patents in mobile technology fields are averaging more than 14 years old. Even in India, where the Government of India opened a special window to process patent applications within 6-12 months against the usual of 5-7 years, patent pendency is a long term issue.

According to a December, 2017, Economic Times article, 2.32 lakh patent applications were pending with the Indian Patent Office as of November 30 of that year. These numbers while different across jurisdictions and countries are still troubling with many IP scholars wondering about the feasibility and relevance of obtaining patents taking into account the long wait time. The long wait time is one aspect of the puzzle deterring applicants from applying for patent protection. The costs for obtaining patents in India are elsewhere are higher than obtaining other intellectual property rights protections like trademark and copyright.

All this brings to light the importance of strong and effective patent prosecution so that the time and financial investment in patents is not wasted and to avoid risk of technology becoming obsolete. A strong and effective prosecution also ensures enforcement of patents is smooth and speedy.

Drafting patent claims involves a delicate balance between including too broad claims or too narrow claims. There are advantages to deciding upon a broader claim strategy and equally significant advantages to drafting narrow claims. The issue crops up when the extremes are taken into consideration meaning claims drafted are too broad or too narrow.

In general, conventional wisdom suggests drafting broadest claims protection. The reasoning for this is simple. In patent applications, claims are essentially defined as language that lays down the scope of protection afforded by a patent. A broader set of claims would consequently increase the scope of protection and reduce the chances of infringement by competitors. The language used also becomes extremely important in this case.

For instance, if the claims are otherwise drafted broadly but the specification is drafted carelessly, it may unnecessarily limit the claims. Some of the patent drafting no-nos which can significantly impact enforcement actions or even invalidate your patents are vague terms in claims, inconsistent claims language across the application, using ordinary words that limit claims etc. The ideal scenario for claim drafting is that the claims should be sufficient to avoid competition and narrow enough to not infringe on prior art. Simple words switch between “At” and “To” can affect your case during enforcement as was the case in Chef America, Inc. v. Lamb-Weston, Inc. (Fed. Cir. 2004).

In this case, Chef America Inc. was the owner of the patent in question and lost an infringement action it brought against Lamb Weston due to language used in the claims that was interpreted against Chef America Inc. The plaintiff could have requested an amendment to the claims but relied upon the fact that a person ordinarily skilled in the art would read the claim the way they had intended. It becomes absolutely essential therefore to use unambiguous clear language as a mere difference between an “At” and a “To” can lead to misinterpretation of your patent during the stage of enforcement. Any statements that limit the scope of your invention like “is” instead of “maybe” must be avoided at all costs.

The use of “maybe” vs. “is” or the “the invention may include” vs. “is” is preferable. For example, a claim could read as “the mechanical clicker may be fabricated from a plastic material” rather than “is fabricated from a plastic material”. The first claim wording opens the claim to the possibility of being construed as being produced by other materials too and not just plastic materials whereas the second wording limits scope.

It is essential during patent prosecution to avoid making premature arguments. It is advisable to let the examiner make the case for rejection and then attack the basis for rejection and make requisite amendments. When making the arguments, it is essential to be concise and ensure that the most valuable embodiments remain covered by the claims. 

One of the big mistakes made by inventors is being too narrow-minded in their approach to patent prosecution. Patent prosecution is an admittedly long and expensive process. However, patent rights are also territorial in nature. Therefore, the scope of international protection should be undertaken right at the time of filing. Small new startup tech companies for example decide to establish their credentials in the national market, build reputation, market share and commercial success before seeking protection for their patents globally.

However, the timeline for patent protection is restricted and foreign protection must be filed within a year of national filing. Moreover, most foreign countries don’t have a “grace period” for public disclosures, so you have to plan for foreign protection even before your U.S. filing. If your business plan and eventual goals involve international exploitation and funding for your patents, it is ideal to secure patent protection in your chosen target markets at the same time.

This also eliminates the risk of your patent being infringed internationally. Enforcing a patent in foreign waters involves hiring foreign attorneys and heavy financial investment. In the absence of a patent application filed in your target foreign countries, you have no recourse at all to fight against infringements. With the ease of technology, it is easier than ever for infringing parties to get access to confidential information. The only way to then maximize your patent investment is to seek protection in multiple countries. Depending on the scale of your business and type of product you seek protection for, the economies of scale may work in your favor. The two most commonly used international treaties for seeking protection internationally are the Patent Cooperation Treaty and the Paris Convention.

Under the Paris convention, inventors must file their application in foreign countries within a year of filing their national applications. The original filing date and original application is treated as a priority date and a priority document or filing respectively. This gives the inventor a time lag to collect funding, perform market research etc.

The Patent Cooperation Treaty on the other hand involves a much longer procedure of 30 months (31 months in some countries) after the priority date of the PCT application to file an application in the targeted foreign countries. This is called the national phase. One of the benefits of the PCT over the Paris Convention is that before entering the national phase, the patent application goes through an international search and an international examination procedure and a positive result during both can be used by the applicant during national phase in the targeted countries patent offices. 

As discussed earlier, extremes are best avoided when drafting a patent application. When drafting claims, care must be taken to ensure that your claims aren’t drafted too broadly. The reasoning behind this is obvious. The broader your claims, the broader will be the scope of prior art thereby increasing the chances for your application to be rejected. Broader claims also open your application up to challenges based on invalidity, obviousness and written description.

Consider this example: you file a patent claim for your car which has a Lincoln Y-Block V-8 engine, a 12.0:1 compression ratio and a few other technical features. On the face of it, it is clear that this patent has a narrow scope. Now consider if your patent claims “a car operable to go from 0 mph to 60 mph in less than 4.0 seconds.” Again on the face of it, this claim seems like a case of advantageous drafting as the broad scope covers a variety of cars and also great for enforcement. However such broad claims are likely to face invalidity challenges based on a lack of enablement and/or a lack of written description.

Patents as we all know is a quid pro quo relationship where for the privilege of acquiring the patent, the inventor discloses to the public how to make, use, or perform the invention. A lack of enablement challenge in the case of a too broad claim would then mean that a person of ordinary skill cannot practice the invention by reading the patent. The chances of an enablement challenge increase in the case of broader claims as the broader the claims, the more enabling disclosure that is required in your application.

A lack of written description essentially refers to a situation where the scope of the claims drafted are not supported by patent specification. Good patent drafting involves providing quality examples of the claimed invention. Another potential issue with filing too broad claims is that the examiner might reject the application on the basis that your claim is too abstract or just an abstract idea. Finally, it must be noted that the more extensive and long the prosecution process of a patent, the harder it will be to defend one’s patent during enforcement where the arguments submitted would be used to question your patent validity. 

It is advisable to not define your invention or draft your application too narrowly. A too narrow application opens your patent up to infringement by competitors who can find ways to circumvent the protection offered by your narrow patent to create versions of their own. This may make enforcement and resulting litigation much too complex. A narrow patent also affects monetization of your patent by reducing the scope of protection and the range of markets you can license your invention in.

It is important to consider a variety of potential applications of your patent in a variety of industries before even beginning to draft your patents. Your patent application should ideally include alternative embodiments the invention could have. In order to achieve a balance between specificity and giving your patent a broad applicability, consider starting with a general description and then giving examples of applicability.

For example, say you are inventing a new kind of fabric for tights that improves performance, instead of patenting “waterproof performance running tights” would limit the use of your invention only to running tights. To avoid this and open the scope of your invention which is a special kind of athletic fabric, consider patenting the fabric and give examples of the possible uses which could include tights, jackets, shorts, etc. 

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 The importance of confidentiality during the patent prosecution stage cannot be underscored enough. The fact is that an idea is not patentable. However, the germ of an actual patent begins with an idea. In order to translate your idea into an invention worthy of being granted patent protection, you will need the assistance of numerous parties who will receive access to this confidential information which is not yet in public domain.

If you don’t plan for and adequately protect the confidentiality of your invention at this stage, you risk a leak of your invention to competitors who may even get a patent before your. Early-stage advantage is what every inventor aims for. And it’s all about who gets their first. The number of parties who may have access to your confidential information may vary depending on circumstance. If your invention requires heavy funding, you are likely going to share pretty elaborate details about your invention to investors.

This issue cropped up in a case of partnership between companies for development of patent in Sionyx LLC v. Hamamatsu Photonics K.K. where the US court concluded that the party who discloses confidential information pursuant to a NDA would be entitled to ownership of U.S. and foreign patents filed by the receiving party if the said patents arise from confidential information disclosed by the disclosing party. In the instant case, the terms of the NDA provided that the disclosing party would have ownership of the patents resulting from the development of the confidential information disclosed by the disclosed party irrespective of the receiving party’s involvement in the patent development process.

The facts were as follows- Hamamatsu entered into a NDA with SiOnyx LLC for joint development of a patented technology for marking silicon. The NDA specified that ownership of all patent rights arising from the confidential information would lie with the disclosing party which in this case happened to be SiOnyx LLC. It was later discovered that Hamamatsu independently continued development work using SiOnyx’s confidential information and also applied for and obtained patents for the photodetector devices developed using such confidential information in the U.S. and several other countries.

A case was eventually brought before appeal where the Federal Circuit decided in favor of SiOnyx LLC and transferred ownership of the U.S. patents from Hamamatsu. The court additionally clarified that modification of claims contribution from Hamamatsu employees did not warrant denial of the equitable remedy.

This case and many others connected to confidentiality show the importance of signing an NDA at the patent prosecution stage itself to avoid any issues that may crop up from sharing confidential information and ensure better and more timely enforcement of patents. It also becomes extremely important to maintain the novelty of your invention, if you intend on availing patent protection in multiple countries.

In order to protect the absolute novelty of your invention, a confidentiality agreement becomes must. This also means that you must ensure that you do not sell, offer for sale or publicly use your invention prior to filing a patent application. The law in many countries, including India and the United States follow the first to file system. This makes it even more crucial to limit disclosures of your invention before filing. Some potential partners may be reluctant to sign an NDA as it opens them up to liability irrespective of whether the invention is even useful or something they may want to assist you in bringing to completion or monetizing. NDAs involve clauses that put duties on the parties receiving confidential information.

However, you can circumvent this issue with partners being reluctant to sign an NDA by only sharing the basic information and not the exact technical requirements that will enable them to work the invention on their own. Remember, an NDA is not the same as a patent application where full and comprehensive disclosure is required. 

It is absolutely imperative to be circumspect during the search for prior art. Patents are an absolutely invaluable asset for an organization that is R&D focused. Therefore due diligence at the prosecution stage and disclosing references and citations discovered during your novelty search will make your case stronger during a possible litigation as your competitors will be unable to use the disclosed references as a challenge against your patent. There are certain prior art searches that are conducted after grant of a patent.

For example, a validity or invalidity search which helps to authenticate the enforceability of a patent. This kind of patent search is especially important if you plan on buying, selling or licensing your patents. Newly discovered prior art after the patent is issued can impact enforcement of the patent. This is why it becomes important to conduct a detailed prior art search and have fallback positions and dependent claims in place. In order to understand this better, let’s explain what are dependent and independent claims in a patent application. Independent claims are the broadest claims in a patent with each having a set of dependent claims that narrow the scope of the independent claims.

Thus, if the independent claim is novel, then the dependent claims would usually be also considered novel. In a situation where the prior art invalidates your independent claims, the dependent claims being narrow may still remain valid which essentially indicates the importance of including dependent claims. If your dependent claims include additional elements that don’t infringe the prior art and are not obvious in view of the prior art, then it would remain valid. Essentially, one or more claims being invalidated don’t invalidate the entire patent as each claim in a patent application is assessed on its own merits.

For example, the independent claim refers to an object comprising components A and B, and the dependent claim adds component C. If the prior art only describes component C wouldn’t not invalidate all the claims. It would need to describe component A and B too. Any statement explicitly referred to prior art in application is an admission and can later be used against your patent while deciding anticipation and obviousness. Therefore choose your words carefully. A prior art search can assist you with drafting your claims. A detailed prior art search should include all public sources of information. If the arguments for prior art are included at the prosecution stage itself, you can avoid issues that may crop up during patent enforcement or patent litigation filed against your patent claims.

Another way to avoid issues related to prior art is filing your provisional patent application at the earliest, especially if you intend to seek international protection of your patent. An application is evaluated against all known prior art as of the date of your application. Therefore any delay leads to more prior art that you may have to examine. This is an especially useful consideration when you are in an industry where there are multiple companies working on similar inventions. 

In order for a patent to be valid, one of the requirements is that it must meet the enablement requirement which essentially means that the patent must be drafted in such a manner as to enable any person skilled in the art to which it pertains to make the same. A lack of adequate enablement is used during patent litigation to invalidate a patent. However, this enablement must be balanced against a rejection on the basis of obviousness. This was brought to light in a 2009 US case where owners of pharmaceutical method-of-use patents had their patents are attacked simultaneously on enablement and obviousness grounds.

In the case of Eli Lilly & Co. v. Actavis Elizabeth LLC, et al., No. 07-3770-DMC (D.N.J. 2009) the defendants sought to invalidate the patent for both lack of enablement and obviousness and that the claimed methods were not enabled because the patentee had not properly established that the claimed methods had utility. In defense, Lilly made the mistake that a person ordinarily skilled in the art would have inferred the utility of the invention.

In the case for assuming that:

(1) the prior art compounds disclosed in the specification were effective in treating ADHD because they inhibited norepinephrine;

(2) atomoxetine was, similarly, an active norepinephrine inhibitor;

(3) atomoxetine would therefore be successful in treating ADHD.

In deciding against the plaintiff Eli Lilly, the court summarized that  “Plaintiffs emphasizes the differences between atomoxetine and the prior art for the purposes of refuting Defendant’s obviousness argument, while at the same time asserting that the prior art and atomoxetine are in some ways similar in order to demonstrate enablement/utility.  Defendants argue, then, that the Court must find the patent invalid as either obvious or not enabled.  For example, if the Court determines that a person of ordinary skill in the art would be able to infer utility based upon the patent’s specification, Defendants’ enablement argument might fail, but its obviousness argument would presumably be bolstered. 

In essence, Defendants argue that whichever set of experts is credited, Plaintiff’s patent will be invalidated.” This case and many others like it indicate the importance of adequately drafting the patent specification and disclosing test date at the prosecution stage. Also avoid patent profanity. Patent profanity refers to words in the specification that refer to specific embodiments of the invention. Using patent profanity limits the scope of the invention and also creates complexities during future patent litigation. Words such as critical, special and peculiar are examples of avoidable words. Other examples of commonly used patent profanity are “necessary”, “essential” and “key”.

Inventors have an obligation to disclose all relevant information that might affect the grant of a patent. To avoid any action against you for withholding information, you must ensure that you disclose all material information, not submit false information or make misrepresentations of a material fact. All these will lead to your patent not being enforced. When citing examples, make sure you are using the correct tense. If the examples indicate work was done, ensure that it is correct and check if any statements made in the application are inconsistent with the results. The data must be consistent across the board.

It is extremely important to be circumspect when searching for prior art while developing your own invention. Under the patent laws of many countries, willful awareness of the existence of a competitor’s patent may affect enforcement of your own patent, invalidate your patent and apply significant damages to you or your company. Therefore as a matter of policy, companies actively involved in research and development activities revolving around patents must discourage its employees from accessing competitor’s patents. The consequences of willful patent infringement during the prosecution stage were brought to light in a case filed against biopharmaceutical company Gilead Sciences.

The facts of the case were that the drug Sofosbuvir was developed by the company Pharmasett and later acquired by Gilead. The sale of the drug resulted in huge profits and sales for Gilead. However, an infringement suit was filed by Idenix filed for infringement claiming that Pharmasset was based on their patent. As the infringement was considered willful, Idenix was awarded 2.54 billion. When developing an invention in house, an inventor may consider certain steps to ensure they will not be filed a case for willful infringement.

For example, say your invention is similar to an invention which is highly reputed and publicized in the industry. In this case, an argument that you were ignorant about the patent would be considered willful infringement if you come out with a similar invention. Say your invention refers to a competitor’s product, then again an argument against willful infringement would not work as the court would rightly conclude that you must have knowledge of patents and inventions of your industry competitors. Some of the questions you can ask to determine whether you may be at risk for a willful infringement suit is whether the prior art is known to you; whether once it was concluded that your patent could be infringing another’s, were any steps taken to amend the patent or even secure a license under the patent?

Good patent drafting can make a huge difference in adequate enforcement of a patent and also ensure speedy patent grant. The most important part of a patent application is the technical aspect for which the protection is claimed. The technical protections are called claims. As claim drafting involves technical skill and expertise, hiring a qualified patent lawyer with expertise in drafting claims for the particular field of your invention is your best chance for getting a grant of patents.

The essential idea and the goal of every inventor is to get the broadest scope of protection for their patent. However, deciding to file the invention yourself without the assistance of a qualified patent lawyer will likely affect the breadth of protection you are granted, that is you may be granted such narrow rights that they are practically useless. Words take on a much more serious meaning when drafting patent claims. In the case of America v. Lamb Weston, the issue of inadequate claim drafting was brought to light. In the matter, the Federal Circuit in the US had to interpret the meaning of the line “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.”

The mistake that was made in drafting the claim is that patent claim wordings are interpreted literally and it is extremely important to have clarity in what you intend to say and what you actually say. The patent drafter meant to refer to the temperature of the oven but instead referred to heating the dough to a particular temperature which was essentially a useless assertion as the dough would be inevitably destroyed at that temperature. What this case and many other such cases prove is that it is the inventor’s responsibility to avoid any instance of confusion or misinterpretation by drafting the claims with precision.

The court cannot be expected to make a decision based on what the inventor meant to say. It will make a decision on the exact verbiage included in the claims document and whether it is clearly understood. There is no place for ambiguity in patent claims. One important way to avoid challenges to your patents is to draft keeping in mind potential objections and to think in terms of a potential challenge to your right. 

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.

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