The Brevard Technical Journal

The three steps to successful patenting

[Step no. 1]

I should have said “inventing” instead of “patenting.” The numbered “steps” are universal, like the numbered “habits.” “Success,” is an essential part of the formula. However, patenting is different. It’s controlled by laws made by reason, a bargain made without full satisfaction, while the steps and habits are what you get at Borders and Barnes and Noble, with firm promises of life change. No such promise is made for patents, a step in a unique process preceded by invention. Not unlike the chicken and the egg, the invention comes first. Most skip this and go right to the patent. However, without a description of the invention, there remains no record of the invention, and no way to write a patent application.

Some basics: Everything derived by human ingenuity and an industrial result, is an invention. That’s the good news. The bad news is not every invention is a patentable invention, sometimes leaving the inventor without legal protection. It sounds simple, but it isn’t, and if it was, there wouldn’t be attorney’s specializing in patents to tell you about the three steps.

Patenting Step 1: Is the invention a product of human ingenuity?
For an invention to become a “patentable invention,” it must pass through the “three steps for patentability.” That brings us to test No. 1 in the patenting process. Let’s jump ahead and assume a patent attorney has prepared and filed a patent application, which, in our narrative, is being read by the patent examiner. Some might think the examiner starts with abstract and logically proceeds to the background and then the summary of the invention. I suggest the examiner starts with the drawings, sees something of interest and then looks to the detailed description of the invention for an explanation. The examiner ’s method is not madness, but a time honed efficient process to first determine if the invention measures up to the test for utility. This test is set out in Title 35 U.S. Code Annotated §101, aptly named “Inventions Patentable,” and limits patentable inventions to what is new and useful in a machine, manufacture, composition of matter or material or process for using any of the forgoing. This means anything existing in nature or as mental process, even for the first discoverer, is not patentable. Therefore, a new orchid discovered in the wild can not be patented and a Royal Patent was the best Columbus could get for his trip to America.

As explained by the courts, what appears by natural selection, is not machine, manufacture, or composition, and therefore is not an invention patentable. This rule has been distilled into the single phrase, “an industrial result.” While natural law can explain an industrial result, it requires human ingenuity for its application to a new machine, manufacture, composition, or process of using any of the foregoing.

It is the inventor who explains the invention to the patent attorney, who prepares the patent application. This is a significant in the patenting process, as it otherwise happens an inventor may present his invention and ask the attorney to “find the invention.” That is where we have the chicken and the egg problem again, or maybe it’s the cart before the horse. Only the inventor can determine what he has that is inventive, namely, what new knowledge our inventor has brought forth for which the United States will grant a patent. The patent attorney then considers the invention in terms of the three steps.

What the attorney does for the inventor, as a first step, is determine whether there is an industrial result and second and third, whether the new inventive functions are novel and not obvious. However, without some description of what the invention is, explained in physical terms, and even better, using the natural laws of science and math, something the patent attorney understands very well, it is impossible to determine if the invention is a product of nature and unpatentable or an industrial result, produced by human ingenuity using the natural law of math and science, and qualifying for steps two and three.

Patenting Step 2: Is the invention novel?
Once having satisfied the requirement of utility, the invention must be shown to be novel. I said the patenting process is not like improvement books read in airports. The patent process is rational and sometimes favors the cause of the inventor’s attorney. In terms of the patent law, it is not the inventor who has to demonstrate the invention is novel. The patent law says every invention is patentable unless shown not to be novel or is shown to be obvious. That means it is up to the examiner to show why the patent should not be granted.

Novelty is a test patent lawyers should like. It is a strict fact analysis of the claimed invention, measured element by element, against a single disclosure of a prior art device. The examiner, tasked to demonstrate the invention is not novel, searches the patent library or any other public source of information, for a single publication, older than the patent application’s filing date by at least one year. Then if the examiner can show every claimed element of the invention and its functions are disclosed in the publication, there will be no patent. If the examiner cannot find that single disqualifying prior art publication, the invention goes on to step three, the test of obviousness.

Patenting Step No. 3: Is the invention obvious?
This is a mixed test of law and fact, where the inventor’s attorney may finally have a clear advantage over the examiner. Some say that mixed question could only exist in the patent law but those who read last months IP column, would know mixed fact and law is very much the process of non complete agreements.

For this third step of obviousness or lack thereof, the examiner must ask whether there are two or more publications (each again at least a year old), that in combination, discloses all of the inventions claimed elements. For example, an instrument is claimed for measuring voltage and current using a galvanometer (a coil mounted for rotation within a magnetic field) that rotates proportionally under a voltage or current. The examiner finds a patent to a galvanometer for measuring voltage and a separate patent to a galvanometer for measuring current. In rejecting the combined voltage - current galvanometer, the examiner shows the two devices operate in the same way as the combined device. The voltage meter is the same as the current meter, with the addition of a voltage divider to bring the current down to within the limits of the galvanometer coil current carrying capacity.

The formal statement rejecting the volt current meter, as written by the examiner, would be “combining the two into a single meter would be obvious to one skilled in the art of galvanometers for measuring voltage or current.” However, that statement as a conclusion is not enough to make a convincing argument, in the patent or any other kind of law. There must be record facts and reasons connecting the facts to the legal conclusion. To make this linkage, the examiner must show that not only are the claimed elements of the invention separately disclosed in the two prior art patents, but the patents teach, suggest or disclose how to combine the separate elements in the respective separate publications, to make the volt - current meter invention.

It’s not that reasons would be lacking in an obviousness rejection. Examiners are an educated, clever and imaginative. Where the examination process fails the examiner is typically at the board of appeals. While the board may, as a matter of discretion, side with the examiner for the “reasons,” the board may have no choice but to side with the inventor on the lack of relevant record facts. On the issue of facts, as my father always said, “Love is blind.”

On this point I‘ll leave the patenting process until next month when we will discuss the ways of a well prepared patent application.

Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the e commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Certified Approved Mediator for Computer Law Disputes, and is admitted to the Northern, Middle, and Southern, U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: (321) 821-1922 or by email to jirosenblatt@earthlink.net. Past articles may be viewed at http://www.joelirosenblatt.com

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