Timelines in a Patent that Claims a Method

A picture is worth a thousand words.  Various figures may be included in a patent application for aiding the  description of the invention.  In a patent application claiming a control system method or process, a flow chart showing the steps of the method is usually necessary.  In addition to the flow chart, it may be beneficial to include a timeline figure illustrating the operation of the actuators and/or sensors, and the change in parameters when implementing the method. 

Though there may be some overlap of coverage between the flow chart and the timeline, the two figures are complimentary to each other, and may be utilized during prosecution to aid the application from different perspectives.  For example, the flow chart may emphasize the actions, such as the action of opening a valve, turning on a component, or reading a sensor, while the timeline may emphasize the other aspects of the action, such as increased air flow responsive to the opened valve.  The flow chart may emphasize the sequence of the steps, while the timeline may emphasize of the timing of the steps.  The flow chart may be used to delineate various embodiments of the method, while the timeline may be used to show a specific embodiment that can achieve certain advantages.   

When drawing a timeline, it is important that each axis of the timeline is defined as complete as possible.  If possible, information such as the range of the values, zero value, and the trend of changes (increasing or decreasing) should be clearly marked on the axis. This information may become important to overcome some unforeseen prior art or rejections constructed based on the broad interpretations by patent examiners or defendants in litigation.  For example, when claiming closing the valve positioned in a coolant passage, an Examiner may interpret the valve to be either completely closed with no coolant flow through, or partially closed with decreased coolant flow rate.  If timelines showing the value of coolant flow rate and the valve position are included in the application, the claim may be amended and clarified based on the timeline. 

So, when preparing your patent application, consider including timelines of system methods and operation as they might make the difference in the end.

 

 

 

 

What is Public Disclosure? Impacts of Public Disclosure On IP Protection

As mentioned in our post “IP Prep Before a Big Event”, public disclosure may impact your intellectual property rights.

            The U.S. patent system encourages sharing of intellectual property to help facilitate technological advances and in turn provides limited protection of this intellectual property.

            In the spirit of encouraging people to share information via the patent system, there is a limited window of time that you are eligible to apply for patent protection of an idea. For the U.S., this window of time is a one year countdown that starts from when an invention is publicly disclosed, though the rules vary from country to country.

            What counts as public disclosure? Well, public disclosure broadly refers to some form of communication that makes your intellectual property accessible to the public. Public disclosure comes in many forms—from printed publications to the Internet to offers of sale. Basically, unless invention information is communicated in a private and confidential manner, it may be considered public. 

            In view of the above, one strategy to avoid a filing time crunch is to simply file for patent protection before public disclosure.

            By filing for patent protection prior to public disclosure, it will be clear that this public disclosure of the invention cannot be used against the patent application during prosecution. Moreover, filing for patent protection can be a selling point for both customers and investors, and may ward off potential copy-cats, among other benefits.

            So, when preparing for a big event where you will be discussing a new product or idea, consider the benefits of filing for patent protection ahead of time. Filing ahead of time can give you an ease of mind when discussing your ideas and may make prosecution of the patent easier down the road.

IP Prep Before a Big Event

                This is it—the big industry event you have been waiting for all year. You paid admission, you have a booth, prototypes, and all the swag anyone could ask for. You have told everyone and their mother to come see you pitch your new product. You cannot wait!

            Before posting your product bio on the event website and loading up the company van to get going, make sure to touch base with an IP attorney. Those prototypes, the product bio, and your big public pitch all put your intellectual property (IP) into the public sphere, impacting options for IP protection.

            With several exciting events coming up this summer, such as IFT18: A Matter of Science + Food in July, we will be tailoring several posts to IP preparation before public product launches. So stay tuned for later discussion on what to know before you go with regards to industry event product launches.

             

Innovation and Utility Model Patents

In the US, we have two types of patents relevant to most industrial clients (putting plant patents aside for now) - utility patents and design patents. Both have different uses and any virtually every industrial business should have a strategy on how to effectively use them. However, US-based companies often do not even realize, let alone make a part of their strategy, so-called utility model (or innovation) patents that are available in most of the important non-US countries.

Some of the advantageous aspects of utility model patents is their lower cost and quick timing. While they often have reduced term (e.g., 10 years rather than the more typical 20 years), often they can exist in combination with regular invention and design patents (although not always, such as in China). Companies that have world-class patent portfolios invariably make strategic use of utility model filings and if your current US IP counsel gives you a blank stare when you ask them, consider reaching out to some other experts for help.

One country where utility model patents can be extremely valuable in protecting IP is in Australia. Recently there was a push to eliminate these patents (likely fueled by large companies that prefer to absorb others' IP at no cost). However, recent reports indicate that the bill that has included a measure to eliminate these tools has been modified. Thus, the proposed elimination of utility model (innovation) patents in Australia seems to have been averted due to concerns over its harm to small and medium sized growing technology firms.

COMMENT ON CLAIM LANGUAGE

It’s not something typically on the forefront of the minds of most people, but it surely strikes fear in anyone seriously contemplating it: the idea of being lost in space.  Poor George Clooney in the movie Gravity, just floating away into the abyss, without any means to return to safety!  If he only had some way…some “return home button” of sorts….

Astronauts and the public alike can rest easy, as engineers have recently filed a patent US 20170192425 A1 for a spacesuit self-return system to ensure spacewalking astronauts are safe, even in the event that none of their crewmates can rescue them.

Upon seeing this news, my first thought was that such a suit would of course need sensors, a navigation system of some sort, some *safe* means of propelling the person through space, etc.  With the recent advancements in autonomous vehicle technology, I was especially curious as to how such a spacesuit self-return system might be claimed in a patent filing, to differentiate it from something like an autonomous vehicle which similarly needs to be able to “return” to a particular destination without the help of a vehicle operator. 

Looking at the first independent claim of US 20170192425 A1, what is claimed is an EVA (extravehicular activity) self-return system comprising a sensor configured to monitor a parameter of a suit, a navigation module in communication with the sensor and capable of determining a current location of the suit in relation to a fixed reference point, a guidance module in communication with the navigation module configured to compute a trajectory from the current location of the suit, an interface configured to be in communication with a propulsive system, and a control module in communication with the guidance module configured to transmit instructions to the propulsive system to propel the suit to the fixed reference point along the computed trajectory.

While the claim language of US 20170192425 A1 is directed towards a suit and states that the self-return system is for “extravehicular activity”, in all other aspects the system essentially reads on the types of systems described in patents filed for autonomous vehicles, which invariably include one or more sensor(s), a navigation module in communication with said sensor(s) (e.g. GPS), a guidance module, a propulsive system (e.g. engine), etc.  Thus, this represents an example where, in attempting to utilize broad claim language, the resulting language essentially describes a known system, in this case an autonomous vehicle.  Therefore, the take-home message is that while it is preferable to try and get broad claims for a particular invention, it is equally important to include language in the specification that can be used in prosecution, to further differentiate the invention from prior art, especially in a case where the claim language may likely be interpreted as reading on other, similar systems.  In practice, we encounter such issues frequently in prosecution, where language used to claim a particular invention reads on another (sometimes only remotely-related) patented invention.   Thus, something we highly recommend is that when drafting a specification, one should draft alternative claim language and include such language in the specification as separate embodiments of the invention.  In this way, you are not limited to one approach if a first attempt at claim language is interpreted as reading on other prior art systems.  For example, we recommend drafting anywhere from one to three or four alternative independent claims, each with unique language that can readily be relied upon in prosecution.  Including such alternative language can make the difference between getting an invention allowed and being forced to abandon the application altogether.  

So, in light of these issues, US 20170192425 A1 should be a particularly interesting case to follow to see how examiners interpret the claim language and how the language is modified in prosecution to differentiate from other prior art systems.

The Producer

The job of a patent is to protect an invention and create business value.  The job of a patent professional is to help draft the patent application to maximize this value. They can do this by making sure the invention is explained as clearly as possible through words and figures.  They can also do this by reasonably broadening the invention (for example, if the invention pertains to a glass, can it also pertain to a mug? a jug? any other liquid container?).

Another way patent professional can add value is by using their creativity to help the inventor springboard their idea to new levels, similar to how a music producer helps a musician take their songs to new heights. Often, inventors (engineers, designers, etc.) suffer from tunnel vision: they becomes focused on a single aspect of their invention. This may serve them well when they are focused on a specific product geared towards a specific function with a specific deadline. That’s where a patent professional can help them broaden their horizon by focusing on the hidden layers of the invention and by trying to pry out potential synergies.

They can help expand concepts while taking advantage of all the resources available to them: what all was being done in the prior art? What were the factors that were being considered in the prior art? What was the context of the invention in the prior art? If the patent professional came across inventions in other art that have a similar base concept, there may be features or trends learned there that could be applied to the current invention.

Consider an invention where a gas turbine is being transitioned from using one fuel to another fuel. Maybe the inventor has focused on the general idea of transitioning in a step-wise manner to reduce disturbances. The patent professional can then delve into the layers of this invention.  How many steps are to be used? What is each step size based on? Is each step the same size or do they increase/decrease over time? Is the increase/decrease linear or non-linear? What is the rate at which steps are applied? What parameter would the step affect to cause an engine disturbance? Would that parameter be different for one type of aircraft or another? Would that parameter be different if the turbine was in a conventional aircraft versus a hybrid-electric aircraft?

In essence, the patent professional can use the patent drafting exercise as an excuse to engage in a mini-brainstorming session with the inventors. They can ask the right questions, or even hazard a guess.  The latter approach is a win-win…if they guess it right, everyone is happy that the invention was correctly understood. If they guess it wrong, the inventors will fix it, allowing the patent professional to gain a better understanding of the thought process…something that they can use when the next invention comes along.

Functional Language in Claims of a Chinese Patent Application

One way to draft claims for a method or a device is to describe the method or device by its function, in the form of means (or steps)-plus-function language.  However, one may want to avoid such an approach in US applications because once a claim is determined to include the means or step for language, the claim coverage is confined to the specific embodiments and examples disclosed in the specification, and equivalents thereof.  As such, claims drafted with purely functional language may have a more limited scope.  Further, the claim may have a higher likelihood to be considered invalid if the structural disclosure in the specification is not adequate. 

Specific terms in the claim language may indicate that the claim has a high likelihood to be considered having means-plus-function language.  For example, the U.S. patent office lists terms including “means”, “step”, “for”, “configured to”, and “so that”.  See MPEP 2181.

In China, patent claims drafted in the functional language face similar treatment as in the U.S.  For example, in 2014, the Shanghai High People’s Court determined that claim 7 in Nokia’s patent included technical features defined by functional language (“terminal configured to…”).  The Court further determined that the claim is invalid because a person skilled in the art cannot implement the technical features based on the inadequate disclosure in the specification. 

However, in Chinese patent applications, the specific terms indicating functional claim language are not exactly the same as in the U.S.  For example, the term “configured to/for” has a high likelihood to be treated as functional language.  The term “step”, on the other hand, is less likely to be treated as functional language.  Further, it is probably a good idea to avoid “function” or “functional” in the claim.  Notably, in the latest amendments to the Chinese “Patent Examination Guideline” (implemented 2017.4.1), the term “functional module” is replaced with the term “program module” in the section regarding claim drafting for software related inventions.

Strategies for Patenting Solutions to Scaling Challenges

            Whether your business has large- or small-scale production challenges, it is important to consider your intellectual property portfolio when developing solutions. There are a couple of strategies that may be helpful to improve the chances of success for applications geared towards production challenges.

            One strategy for a patent application that is directed towards a solution for a large or small production scale related problem is to describe how the solution in the application may address issues associated with that particular production scale.

            Another strategy may be to describe how a particular production scale enables the solution to work so that the production scale is intertwined with the solution in the application. An example of an application that intertwines the scale of the production with the solution may be found at U.S. Patent No. 4,906,578, which relates to temperature control of large tanks for the cultivation of microorganisms.

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            U.S. Patent No. 4,906,578 recognizes that the large size of industrial-scale cultivation tanks may be leveraged to circulate liquid media throughout the tank. In particular, U.S. Patent No. 4,906,578 describes strategically cooling certain regions of large volume cultivation tanks to cause circulation within the tank.

            By jacketing the tank with a coolant jacket and including a cooling tube in a center of the tank, liquid media in contact with the cooling tube in the center of the tank and in contact with the walls of the large tank may be cooled to a lower temperature than a remainder of the liquid media in the large tank.

            As the liquid media in contact with the cooling tube and in contact with the tube in the center of the tank is cooled, this liquid media increases in density and sinks to a bottom of the tank, forcing circulation of the liquid media within the large tank. Such circulation may result in temperature consistency, as well as efficiently aerate the tank.

            Thus, the solution in U.S. Patent No. 4,906,578 is intertwined with the large size of the tank, as it is due to the large volume of liquid media in the large tank that a density disparity occurs for a long enough period of time to cause circulation within the tank. If the tank were instead a small tank, for example, including a central cooling core and coolant jacket with such a small tank would not result in a density disparity being maintained for a long enough period of time for substantial circulation to occur.

            So if you have developed a solution to a problem that is related to large scale or small scale production, describing how the solution is tied to the scale of the production (such as the large tank in U.S. Patent No., 4,906,578), may be useful to incorporate into the application for patent prosecution down the road.

             

Tricky Linguistics: Patent Claims

You keep using that word, does it mean what you think it means?

 

Words in patent claims are given their plain and ordinary meaning, except when they are not.  Patent claim terms are interpreted in view of the specification (written description of the invention), as would have been understood by one of skill in the art, and based on any definitions of the words in the specification.  At least, that is how they are supposed to be interpreted during prosecution before the U.S. Patent and Trademark Office.  In litigation, words in patent claims are interpreted based on all of the above and any arguments made during prosecution before the U.S. Patent and Trademark Office, testimony, expert opinions, and other unwritten sources.  While testimony and expert opinions cannot contradict the evidence put forward during prosecution, the combination of all of these sources still leaves a lot of room for interpretation. 

 

How many words to you know that have only one meaning? Whether it is the actual meaning or the connotation, language evolves.  Definitions change, particularly in rapidly developing fields where specific terms may be fluid.  Even in established fields, your understanding of how someone in your technology area would interpret a word and the definition the court adopts could be very different than your intended use.  New technologies can also impact the way words are interpreted as old words are adopted to cover new concepts.  The meanings of backlog, broadcast, matrix, cloud and ping have all become significantly different since the advent of the internet.

 

In In Re: Smith International, Inc., No. 16-2303 (Fed. Cir. 2017), Smith International, Inc. (Smith) appealed a decision from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (PTAB) on the interpretation of the word “body” in the context of Smith’s U.S. Patent No. 6,732,817 for a downhole drilling tool for oil and gas operations. “Body” would appear to be a relatively straightforward claim term, but the argument between Smith and the U.S. Patent and Trademark Office came down to the broadest possible interpretation vs. the broadest reasonable interpretation of the word “body”. The PTAB held that the term was generic and therefore could encompass components that were taught in the prior art.  Smith argued that “body,” if interpreted in view of the specification, provided specificity as to the physical characteristics of a “body” and that the Examiner was interpreting the term too broadly.  While the court sided with Smith, holding that the Board’s construction of “body” was unreasonably broad and stating that “the Board cannot construe the claims ‘so broadly that its constructions are unreasonable under general claim construction principles’” (Smith, Slip op. at page 13, citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)), Smith’s victory nonetheless required an expensive appeal to PTAB and litigation in the Federal Circuit in order to obtain their victory.

 

Prosecution before the U.S. Patent and Trademark Office and patent litigation can and does turn on the interpretation of a word or phrase. Often the simplest words are the ones that cause the most arguments, and the fact that the U.S. Patent and Trademark Office does not interpret claims in the same manner as the courts does not simplify matters for patent holders.  When drafting a patent application there is a balance to be struck between being too limiting and too broad, but if a term is critical to your invention, make sure your meaning is clear.  It may just be semantics, but in litigation it can change the verdict.  Whether you are in the cloud or the sandbox, you need to make sure everyone else knows where you are, too.

5 Lessons from a Disney Case to Avoid Issues Caused by the Patent Office’s Unusual Method of Interpreting Patents

Patent claims are reviewed in light of a broadest reasonable interpretation (BRI) of the claim language. Specifically, following the guidance for the BRI in the MPEP (the guidelines that govern examination procedure at the Patent Office), claim language is interpreted to have its customary meaning unless the term has been defined otherwise in the specification. The claim language must also be consistent with the drawings of the specification. Seems pretty straightforward, right?

Well, in practice the BRI can actually get pretty tricky, sometimes dictating the entire outcome of a case. A recent example illustrating the power of the BRI to impact the decision of a case is found at 13/223,062, entitled “INFANT BODYSUIT” owned by Disney Enterprises, Inc.

Disney appealed the Rejection of the patent by arguing that the Patent Office was being unreasonable in its interpretation.  Disney lost, however, since the BRI gives the benefit of the doubt to the Examiner in most cases.  What is particularly interesting about this case is that the argument boiled down to the meaning of the term “line”.

In describing a closure of the infant body suit which included multiple snap features, Disney’s patent claims recited in part:

“wherein each of the curved rows follows a curve of sufficiently large radius such that there is a straight line passing between a portion of an outermost of the snap features in a given row that passes through a portion of a center snap feature in the same row; and


wherein each of the curved rows of the second closure mechanism follows a curve of sufficiently small radius such that a straight line passing between the top edge of each of the two outermost of the snap features in a given row also passes through a central portion of the center snap feature in the same row.”

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Appellant’s Annotated Figure of Feldman          Examiner’s Annotated Figure of Feldman

 

The Examiner rejected the claims based on Feldman, as a thick line could be drawn to meet the claim requirement that a straight line between the outermost of the snap features would pass through a portion of a center snap feature.

On appeal, Disney reproduced an annotated figure of Feldman alongside the Examiner’s annotated figure of Feldman, to highlight that the Examiner had purposely drawn a thick line through the figure of Feldman to support rejection of the claims.

Disney further argued that the term “line” referred to the mathematical definition which was a continuous extent of length without breadth, and that graphic representation of a line only has breadth because it is impossible to draw a line without any thickness.

Nonetheless, as the specification of the application did not require this special definition of a line, and as a dictionary definition supported that a line (in this case, a drawn line) would have at least some breadth, the Board found that the Examiner was reasonable in interpreting the claim language to include a thick line, as drawn above.

One big take away from this example is to remember during the drafting process of an application that terms used will be subject to BRI if they are not further explained in the specification. Though it is not practical to explain each and every term, below are 5 strategies to avoid the pitfall of the BRI causing claim terms to be interpreted incorrectly during patent prosecution (to the detriment of the inventor).

1.      Describe Structural Elements Relative to One Another

            Describe structural elements of the claimed apparatus relative to one another as much as possible in the specification. For example, if describing a box, describing a position of the walls of the box relative to one another and features on each wall of the box may be helpful. If the box has handles, describe a shaping of the handles, a positioning of the handle, sizing of the handles relative to one another, etc. The more detail, the better when describing structural element. Moreover, description comparing structural elements of an invention relative to one another can be very helpful during prosecution. Describing structural elements relative to one another may help to avoid situations as in the example, where an imaginary line that was not actually drawn in the figures was used in the claim language.

2.      Include Reference Elements In Drawings

 

            Actually drawing reference elements (axes, coordinate systems, planes, etc.) into the drawings can be a life saver. Since guidance in the MPEP for the BRI requires that the claim terms be consistent with the drawings, reference elements are excellent to include in the drawings to ensure clarity and avoid BRI leading to misinterpretation of claimed elements. For example, if claiming a box, include axes drawn through the box or planes of the box in the figures.

            If the straight line in question for the above case had been included in the originally filed drawings, it probably would have been much more difficult to argue that the interpretation of the claim language was reasonable.

 

 

3.       Describe Structural Features Relative To Reference Elements In Drawings

 

            In addition to including reference elements such as axes, coordinate systems, planes, etc. in the drawings, make sure to describe elements of the invention relative to these reference elements.

            Once again, the MPEP guidance for BRI is on your side if you include reference elements and utilize these reference elements in the description of the application, since a BRI of terms should be consistent with the drawings and definitions provided in the specification.

            Continuing with the box example, you might describe walls in certain planes of the box being perpendicular or parallel relative to other planes of the box.

 

4.      Describe Terms In Specification

 

            If a term that is used in the application needs to have a specific meaning, make sure to include this specific meaning in the specification. Moreover, using multiple examples and providing multiple explanations for terms that are used to describe the core concepts of the specification may be helpful tools to avoid misinterpreted claim language during prosecution.

 

5.      Check a Dictionary

            When drafting an application, do not hesitate to pick up a dictionary. Especially when having to describe temporal aspects or structural features of an invention. Often it is not technically oriented words that trip up an application but rather words like “line”!