February 20, 2020
Targeting the scope of protection for a method incorrectly can turn a patent into a mere wall ornament. The wrong choice of words, in turn, can at worst result in the patent being rejected. Patent attorneys Kati Leinonen and Kati Vesterinen explain how to recognise a good patent application.
A patent is expressly a right to prohibit others, not a permission to do something.
“What information is presented and how is significant in terms of the protection afforded by the patent. A professional is able to consider different perspectives and prepare for the future. Without a patent attorney’s assistance, it is easy to describe the invention in the application in your own words as it is at the time of conception, without refining the idea from the point of view of patenting. Then you may not notice that it is possible to circumvent the patent with very small changes”, Vesterinen says.
The patent office’s rejecting statements, such as “the invention is not novel or inventive”, or otherwise unfavourable official actions may also seem hopeless to a layman.
“A private person may throw in the towel at that point, but a patent attorney will notice the possibilities hiding beneath the rejections. With minor changes, the invention can suddenly be novel and inventive”, Leinonen says.
A good application is able to withstand examination in different countries. Patent offices and courts have their own practices in each country, and they can vary widely.
“What is good writing in Europe may be really bad in the United States, for example. In order to include support in the patent application such that different practises of various jurisdictions are taken into account, the countries in which the customer wants to protect the invention should be considered in advance”, Vesterinen says.
“Patenting should be done to cover at least Europe if the operations of the applicant will not be focused solely on Finland over the next 20 years. For this reason, the applicant should understand where their market is and have a clear image of the geographic area that is of interest”, Leinonen adds.
Being careful with geographic borders is necessary, especially when patenting cloud-based solutions.
“A patent provides protection only in the geographic area of the jurisdiction in which it has been granted. If the patent is granted in Germany and a service that operates partly in the cloud is used there, in what geographic area do the operations and possible infringement take place? This, too, needs to be taken into account in the application, and good writing can be used to prevent these problems already when the application is drafted”, Leinonen says.
Two basic questions must be considered in the patent application: what is it about the invention that competitors also want to do? And what will the customer do with the invention? For example, protecting the method works well especially in pharmaceutical manufacturing and the process industry, but can be misleading for devices sold to users.
Leinonen and Vesterinen illustrate the targeting of the scope of protection using an application example: a phone application connected to a certain type of scale measures the user’s weight and uploads it into a service in which the user can track the data.
“If the patent protects the method of stepping onto the scale and obtaining the weight, it is easy to end up in a situation where the patent’s scope of protection targets actions done by the customer, not by competitors. In that case, a competing party may manufacture, import or sell equipment that can be used to implement the method but the actual implementation of the method is done by the customer”, Kati Leinonen says.
“This can be avoided, for example, by including device claims in the application. Certain scales on shop shelves could then infringe the patent. When the scope of protection is not limited to the actions of the customer, the patent holder can be entitled to compensation or can prevent the manufacture and import of equipment”, Kati Vesterinen adds.
The incorrect targeting of the scope of protection may only come to light years later when a competitor’s operations cannot be prevented when it would be necessary. It is also easy to circumvent an overly narrow scope of protection.
“In the worst case, the applicant has spent money on patenting costs and disclosed ideas without any corresponding benefit. Applications are published 18 months after the filing of the first application, so the invention is then public. You cannot stop others from copying your idea with a patent that has the wrong scope of protection”, Vesterinen points out.
The patent office will not comment on whether the scope of protection of a patent application has been targeted correctly, for example. Also, patent applications are examined strictly in accordance with patent law, and the decision to grant a patent may depend on the choice of words.
“If you write in the application that the functionality to be protected takes place by pressing the touch screen, the scope of protection will not extend to a voice command or swipe leading to the same result. With such a patent, a competitor could do practically the same thing with a very small change”, Leinonen says.
A well-drafted description is a particularly critical part of the application, as it forms the basis for all work.
“Writing the description means dealing the cards that you will be playing with for a long time after the application has been filed. A good description includes many different alternative embodiments and explains the invention from many different angles”, Vesterinen says.
Many applications can be saved by a thorough definition of terms.
“Even if the examiner in the patent office knows what is meant in the application, the patent may not be granted due to a lacking or incomplete definition. In certain areas of technology, such as user interfaces, the adequacy of the technical aspects should be ensured in the application. Otherwise, the application may be interpreted as simply providing information”, Vesterinen says.
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