When you conceive of a idea for a new product, service or business model, how do determine its initial value and whether it should be pursued? When you sell, license, or buy a patent or the rights to patent an idea, how do you determine its commercial value? We believe the true value of a patent depends on several factors: (1)the commercial value of the underlining commercial value of the invention disclosed in the patent; (2) how the patent is written and prosecutred, and how the invention is described and claimed in the patent:, and, (3) whether external factors or events occurred before filing the patent application, during the prosecution stage, and after issuance of the patent that can or may effect its commercial value.
- What is the ‘commercial value’ of the invention?
The commercial value of the invention depends on the invention’s ‘value proposition’. An value proposition is defined as the real or potential profitability of products or services that incorporate the underlining an invention’s ‘point of novelty’. The ‘point of novelty’ is the technological breakthrough or advancement over the prior art that addresses an important problem or issue confronting others. In a patent application is it important to clearly identify the invention’s ‘point of novelty’. Drafting good ‘problem solving statement’ is one tool you can use to identity the ‘point of novelty’
2. The Claims in th patent determine the value of the patent.
In a utility patent, the claims include a preamble, a transition, and elments. The premamble is like teh subject of a sentence, the transition is like a linking verb, and the elements are like direct objects. Preabmles that are specific limit the scope of the claim. Transitions can be open which means that claim is not limited to the following elments or closed which means the claims is limited to these elements. The more elements the claim recites and the more specific the elments are, the narrower the scope fo the claims.
3. How do you determine if the invention as been properly described and claimed in a patent?
A typical utility patent application is made up of the following parts : Title, Background, Summary, Brief Description of the Drawings, Detailed Description of the Invention, Claims, and Abstract. The goal is to write a patent application that fully describes the invention and the point of novelty so the application is ‘enabling’ to an ordinary person skilled in the technical area of the invention but is not limited to the specific embodiment(s) described in the application.
The most important section of a patent application is the claims section. The claims set out the metes and bounds of the invention. The claims recited in the Claim section must find support in the other sections in the application. Only the claims in a patent application can be substantively altered after filing. The typographical and grammatical errors can be corrected in the other sections but no new matter can be introduced without changing the filing date of the invention.
During prosecution, the application is assigned to an Examiner. The Examiner sends an Office Action rejecting the claims and the patent attorney files a response (called an Amendment) challenging the rejection and offering changes to the Claims. The process continues back and forth until the claims are acceptable to both the Examiner and the patent attorney. If acceptable claims cannot be found, the application is abandoned or an appeal is filed asking for reconsideration by the Patent Board.
Because the goal of the claims is to protect the ‘point of novely’, the application should be written around the ‘point of novelty’. Therefore is it important that you identify the invention’s ‘point of novelty’. After the ‘point of novelty’ is identified, the key words that have clear and unambiguous meaning must identified to describe the point of novelty’.
A common error is unnecessary limitations in the written description.
The use of unambiguous key words in the claims is one of the most common mistakes and can reduce the value of the patent. Sometimes unambiguous key words reduce the broadness of the claims allows others to avoid the claim (ie. the claim is still valid but se. Sometimes unambiguous key words can invalid the claim altogether.
A claim consists of a preamble, a transition, and elements. The preamble should be short ( 3 to 5 words). The transition should be opened (‘comprising’) and not closed (‘consist of ‘). The elements should be general and few as possible. The key words used to described the ‘point of novelty’ should be used in the claim elements. Claims that use preambles too long or too specific are more susceptible to being challenged. Claims that recited a lot of elements are also more susceptible to being challenged. Claims that recite ambiguous key words are also more susceptible to being challenged.
A patent should recite different claims that protect 3 aspects of the invention – apparatus, system, or method. A patent should also recite a good mixture of independent and dependent claims that protect each aspect. Patents that do not protect different aspects of the invention and do not have good mix of independent and dependent claims may not fully protect the invention.
A common error is improper use of claim differentiation, improper claim mixture, and improper mix of elements within a claim.
When writing a patent application identifies who an infringing party may be. A direct infringer is an infringer who executes all of the elements of the claims. An indirect infringer is an infringer who ‘contributes’ to another party’s direct infringement or who ‘induces’ another party to directly infringe. The patent should include a different mix of claims that cover both direct and indirect infringers.
4. Are there external factors that can effect the validity of the patent?
Yes. Errors in the application are known as ‘internal errors’. All other errors that may occur by the inventor before the application is filed, or by the patent attorney during prosecution are known as ‘external errors’. Both types of errors, that are often discovered after the patent is granted, can invalid the patent. Such errors may include: (a) statutory bar prohibited acts: (b) deliberately failure identify the inventors in the patent application; (c) failure to inform the USPTO of known prior art; and (d) submitting misleading material statements to the Examiner during prosecution.