JEFFREY B. POWERS
Capturing the value of time and money invested in R&D is the goal of every person that files a patent application. Success or failure frequently depends on the precision and completeness of the document and may hinge on the meaning of a single word or phrase.
So, it is important to realize that pitfalls can manifest themselves in the patent claims (where the applicant sets forth the boundaries of his/her protected invention) or in the patent specification (where the applicant fulfills his/her obligation to teach how to make and use the claimed invention). A failure to clearly yet broadly specify the invention in the claims and specification can result in failure to obtain a patent or diminish the value of the patent that is obtained.
As an application is prepared, it is important to have the relevant audiences in mind. Although the applicant’s legal obligation when writing a patent application is to teach "one of ordinary skill in the art" how to make and use the invention, it is essential to consider the following: 1) before a patent is granted, it is an examiner (who may not be as extensively trained on a particular technology as the inventors) who will make determinations about how one of ordinary skill in the art would understand the application, and 2) when a patent is enforced, it is individuals who are likely non-technical (i.e., a judge and/or jury) who will make determinations about how one of ordinary skill in the art would understand the application.
Additionally, during the process of claim drafting, it is important to take a step back and consider how competitors might design around your claims and to address any deficiencies in your claims. Ultimately, as shown in the figure, the goal of a patent is to keep competition away from not only the best solution to a problem, but also away from the second- and third-best solutions, etc., thereby providing the maximum competitive advantage in the marketplace. Pitfalls in achieving the above goals come in many guises.
Avoiding pitfalls
Here are several examples of pitfalls and types of pitfalls for patent applicants to consider and avoid when preparing patent applications for optical technologies:
Naming and measurement conventions should be clearly identified. Photonics/optics is notorious for having multiple naming and measurement conventions, and while members of a given design team (i.e., the preparers of a patent application) may well understand the intended meaning of a term in an application, an objective outsider (i.e., one of ordinary skill in the art) may be left with questions. A failure to teach him/her about your invention can be fatal.
For example, use of the terms "radiance" and "irradiance" have different meanings to different individuals, and without a clear indication of the meaning in a given patent application, clarity issues may arise. Similarly, specifying an aberration in terms of a number of wavelengths of light without precisely specifying that the measurement represents a coefficient of a particular Zernike polynomial or another aberration measurement convention may result in a fatal lack of clarity.
Measurement conditions should be specified. As with the matter of conventions discussed above, numbers and ranges may be unclear, particularly if measurement conditions are not specified. At the time a patent application is prepared, consideration should be given to the type and configuration of laboratory equipment and/or computer software that will be used to measure an alleged infringer’s product or process to determine if it is within the scope of the claimed invention. Such information should be captured in the specification and possibly in the claims. While it may be readily apparent that you need to identify the configuration of laboratory apparatus, in the field of optics many experiments are performed using laboratory equipment and design software having parameters that were set years ago and are now assumed by the design team. These parameters can have significant effects on measured results and a failure to identify these parameters may make your invention unclear. Examples of such parameters include wavelength ranges, wavelength weightings, and temperatures, but there is a myriad of parameters that might be significant in any given circumstance.
Theoretical constructs should have real-world meaning. Many theoretical constructs (e.g., point sources, single wavelengths) that are convenient for design purposes may have unclear meanings when a court is analyzing the competitor’s product to determine if it meets the limitations of your claim. Clearly specifying the boundaries of the meaning of theoretical terms, as they are to be applied to the real world, may be essential to determining if the competitor is infringing your claim. For example, in the case of a point source, the specification could state that a point source is any source having a size less than the diffraction-limited spot size of the relevant system or could specify any other suitable and concrete definition.
How supporting data has been generated should be identified. When generating data for inclusion in a patent application (or when generating data to support an argument to be made to an examiner during examination of an application), it is important to clearly specify how the data was generated, including whether the data was obtained in a laboratory or computer-generated.
Whether to present any mechanism of action should be carefully considered. While inventors frequently pride themselves on understanding the science behind their inventions, a patent is granted for a machine, manufacture, process, or composition of matter that is novel and non-obvious, independent of why it works (i.e., the mechanism of action). While including a mechanism of action may not impede patentability, it typically does not help and may harm prospects of enforceability against a would-be infringer, particularly if it is later discovered that the assumed mechanism of action was incorrect.
Inclusion of a mechanism of action should generally be avoided in a claim and should be added to a specification with an indication that aspects of the invention "may" work according to a specified mechanism or an indication that it is "believed to" work according to a specified mechanism. For example, if a patented apparatus causing a given optical effect on a material recites in the claim that it causes the effect because of an interaction with free electrons in the material, and it is later discovered that the effect is caused by another mechanism of action, it could affect enforceability of the claims.
Merely abstract ideas should be avoided. The courts (and consequently patent examiners) are currently struggling with the scope of protection for inventions where an abstract idea, a law of nature, or a natural process is involved. The courts are trying to discern the threshold question(s) to determine what types of inventions are protectable by patents when such concepts are involved. Although abstract ideas, laws of nature, and natural processes, by themselves, are not patentable, applications of such ideas may be patentable. While the matter of minimizing the likelihood of issues related to such ideas is a legal issue to be addressed by a patent attorney, it is desirable that inventors and managers grasp the limits of patentability when strategizing, and set expectations appropriately.
For example, putting aside the novelty issue, a claim purporting to cover all machines operating according to the thin lens equation
1/l1 + 1/ l2 = 1/f
would fail the threshold question as a result of being a law of nature. However, an apparatus implementing the thin lens equation, such as a claim to a system comprising an image sensor positioned relative to an object and a lens so as to receive the image of the object, would pass the threshold question. (Of course, after being deemed a type of invention that can be protected by a patent, the subsequent question of novelty would present altogether different issues.)
While the above example was a simple one involving a law of nature, algorithms and processing techniques may be subject to rejection or invalidation as abstract ideas if not claimed properly.
Alternative ways of achieving a result should be considered. In the field of optics and photonics, there are many ways of achieving a similar function. Care should be taken to note in the specification of a patent application different apparatus or methods for achieving a same result and, where possible, care should be taken to be sure that the broadest claims cover all ways of achieving the same result.
For example, while a simple refractive lens can be used to provide optical power, similar results can be achieved with diffractive or gradient components. Accordingly, terms in a claim should be inclusive of all known technologies and, where appropriate, terms such as "lens" should be defined in the specification to include one or more refractive, gradient, and/or diffractive elements.
System vs. Subsystem and Method vs. Sub-method should be appropriately claimed. A competitor infringes your patent if he/she practices each element of one of your claims. Accordingly, when writing a claim, consideration should be given as to how various manufacturers, purveyors, and end users will use the invention in the marketplace. Likewise, with method claims, care should be taken such that one entity performs all steps of a given method claim.
For example, if a claim directed to an inventive lens system for shaping a laser beam includes the laser source itself as a component of a system, the inclusion of the laser may increase the difficulty of enforcing the patent and may, at worst, miss some would-be infringers. In particular, if a certain manufacturer provides the lens system without selling the laser, the manufacturer would not be a direct infringer of the claim. Instead, the direct infringer would be the end user of the system who adds the laser. The end user may be a potential customer of the patent holder and a very undesirable defendant in a lawsuit because sales to that potential customer may be lost. Furthermore, while in such a situation, the manufacturer may be liable as an indirect infringer, the lawsuit to prove that he is an infringer would be unnecessarily more difficult and expensive, and it may still involve the end user, when a properly drafted claim could have simply omitted the laser or indicated that the lens system is "adapted to receive light from a laser source" and thereby avoided inclusion of the laser in the claim.
Similarly, claiming an inventive method of processing light to include both steps that a manufacturer would perform (e.g., positioning a lens system relative a laser source) and steps an end user would perform (i.e., steps of operating the lens system) may lead to increased difficulty in enforcing a patent and potentially will miss some would-be infringers because a single infringing entity may not perform all of the steps of the claim. Note that issues for method claims can be further compounded if some of the steps (e.g., the manufacturing steps) are performed by a competitor who is overseas.
In conclusion, it is important to consider who will need to understand your application (e.g., a judge and/or a jury) and how they will know that somebody is practicing your invention, as well as to be sure that your claims cover not only the best way of accomplishing your invention, but all ways competitors may practice your invention. It is also important to remember that, while an optically knowledgeable patent attorney can assist you in identifying and achieving your patent goals, you remain the technical authority responsible for making sure that your application is technically accurate, complete, and strategically desirable.
Jeffrey B. Powers is a patent attorney in the Rochester, NY area and is counsel with the firm of Simpson & Simpson, PLLC. He has an MS in Optics from the University of Rochester, as well as a BS in Electrical Engineering from SUNY Buffalo and J.D. from the University of New Hampshire. He has practiced patent law for more than 15 years in Boston, MA, and Western New York in a wide range of technical areas, including optical, electrical, mechanical, and medical device technologies. E-mail: [email protected].