Determining the Invention

 Once you have consulted with your client and he has given you all the details of his invention it is advisable that you start with the drafting of the claims. To draft the claims you must establish what the invention is. In general, people think of an invention as something tangible. However, inventions are concepts. 

FIG. 1:Inventions are Concepts

What must be done is to determine the inventive concept contained in the inventor’s embodiments. Once the inventive concept is determined, it must then be captured in the patent claims. If this is not done an infringer may be able to take advantage of the inventor’s invention without being liable under the patent (Slusky, 2012, p. 5). It is not always easy to determine the inventive concept. What is suggested by Slusky is that one must begin with the problem that the inventor solved (Slusky, 2012, p. 8).

Until the problem solved is not fully appreciated, the solution cannot be fully appreciated either. Many claim drafters focus on the solution. They start by drafting a claim to an embodiment. The claim is then subsequently broadened through a process of “pruning and distilling.” Narrow terms are made more general. For example “screw” becomes “fastener”. The pruning and distilling will result in a claim having a wider scope than what was initially started with. However, the inventive concept may involve functions and relationships not present in this claim. This can result in significant infringement loopholes (Slusky, 2012, p. 12). Drafting a broad claim that captures all the inventor’s embodiments is relatively simple. It is much more difficult to draft a claim that will capture future products before they have been invented (Slusky, 2012, p. 17). 

The Problem-Solution Statement

FIG. 2: Problem-Solution Statement To Determine Inventive Concept

The problem-solution statement is used as a tool to determine the inventive concept of the invention. It is a one-sentence statement of the invention. It states as broadly as possible 

(a) the problem the invention solves, and 

(b) the inventor’s solution to the problem. 

This is done without reading onto the prior art. It serves as a foundation for the patent application’s broadest claims. The problem-solution statement is formulated as follows:

The problem(s) of _____________ is(are) solved by ____________

For example, for the ballpoint pen invention, the problem-solution statement would read as follows:

The problem of a pen being able to write on rough surfaces 

is solved by the pen having a spheroidal marking point.

(Slusky, 2012, p. 19)

 

FIG. 3: Drawing of Ballpoint Pen Invented by J. J. Loud

Another example of the fuel-propelled rocket invention the problem-solution statement would read as follows:

The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible 

is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.

(Slusky, 2012, p. 335)

In another example for the simple invention of a seating device having legs the problem-solution statement would read as follows:

The problem of a seating device that is not readily portable because of their bulk and weight 

is solved by enhancing the portability by utilizing one or more elongated members (legs) as the support structure for the seat.

(Slusky, 2012, p. 352)

Slusky, RD. (2012) Invention analysis and claiming a patent lawyer’s guide (Second Edition) ABA Publishing. American Bar Association.

Fair Use in Copyright

 Section 107 of the Copyright Act

FIG. 1: Section 107 of the Copyright Act Defines Fair Use

The United States Code, Title 17 contains the country’s Copyright Act. In Chapter 1 the subject matter and scope of copyright is set out. Section 107 of the Copyright Act gives guidance as to what may be considered fair use.

Briefly, Section 107 states the fair use of a copyrighted work, for purposes such as criticism,

comment, news reporting, teaching, which includes multiple copies for classroom use,

scholarship, or research, is not an infringement of copyright. 

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:

(1) The purpose and character of the use, including whether such use is of a

commercial nature or is for nonprofit educational purposes.

(2) The nature of the copyrighted work.

(3) The amount and substantiality of the portion used in relation to the copyrighted

work as a whole.

(4) The effect of the use upon the potential market for or value of the copyrighted

work.

Further, the fact that a work is unpublished shall not itself bar a finding of fair use if

such a finding is made upon consideration of all the above-mentioned factors.

As far as the mentioned points are concerned:

1. Purpose Character of Use Commercial or Nonprofit.

FiG. 2: Nonprofit Educational Use Likely to be Fair Use

The Courts are more likely to find that nonprofit educational uses are fair. It does not mean that all nonprofit educational and noncommercial uses are fair, and all commercial uses are not fair. The court will balance the purpose and character against the other factors mentioned. The court will consider whether the use is transformative, meaning that it adds something new or changes the original work in some way. Transformative uses are more likely to be considered fair.

2. Nature of Copyrighted Work

FIG. 3: A Composed Song Less Likely to Support a Claim of Fair Use

A more creative or imaginative work, such as a novel, movie, or song, is less likely to support a claim of fair use than using a factual work, such as a technical article or news item. This is because the law generally recognizes a greater need for the free use of factual works to promote the progress of knowledge and understanding, while recognizing that creative works have a greater need for protection against unauthorized use.

The use of an unpublished work is less likely to be considered fair. The reason why the fair use of unpublished works is generally disfavored is because the author’s right to control the first public appearance of their work is recognized as an important aspect of copyright law. However, the fair use of unpublished works may be allowed in certain limited circumstances, such as for scholarly research or news reporting.

3. The Amount and Substantiality of the Portion Used

FIG. 4: If a Large Portion (Horse and Chariot in Figure) of 

Copyrighted Work Included Fair Use Less Likely to be Found

If the use includes a large portion of the copyrighted work, fair use is less likely to be found. A large portion would be for example the horse and chariot in Figure 4. On the other hand, if the use employs only a small amount of copyrighted material, fair use is more likely. However, some courts have found the use of an entire work to be fair under certain circumstances. In other contexts, using even a small amount of a copyrighted work was determined not to be fair because the selection was an important part or the “heart” of the work. In other words, when considering the substantiality of the portion used, the court will look at the qualitative significance of the portion taken in relation to the work as a whole. Using the “heart” or the most important part of the work may weigh against a finding of fair use, even if the amount used was relatively small. Conversely, using an insignificant portion of the work may weigh in favor of a finding of fair use, even if the amount used was relatively large.

4. The Effect Upon the Potential Market for or Value of the Copyrighted Work.

FIG. 5: Court Considers Effect on Potential Market 

When Considering Fair Use

The court considers to what extent the unlicensed use harms the existing or future market for the copyright owner’s original work. The court takes into account whether the use is hurting the current market for the original work. It may be that the unlicensed use, for example, is displacing sales of the original. The court also considers whether the use could cause substantial harm if it were to become widespread.

Put another way, if the use of the copyrighted material is likely to significantly reduce the demand for the original work or cause economic harm to the copyright owner, this factor may weigh against a finding of fair use.

Similarly, if the use of the unlicensed material is likely to harm the potential market for derivative works based on the original work, this may also weigh against a finding of fair use. For example, if a movie studio were to create a parody of a copyrighted work, but the parody was so well-done that it would substitute for the original work in the marketplace, this would weigh against a finding of fair use.

Ultimately, the determination of whether a particular use is fair use will depend on the specific facts and circumstances of the case and will be made on a case-by-case basis.

Reference

“U.S. Copyright Office Fair Use Index.” Copyright.gov | U.S. Copyright Office. February 2023. Accessed April 3, 2023. https://www.copyright.gov/fair-use/

Attribution

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Plascon-Evans Paints Limited v Van Riebeeck Paints (Proprietary) Limited

(Appellate Division) 

Coram: Corbett, Miller et Nicholas, JJA, Galgut et Howard, AJJA.

Date of hearing: 27 February 1984.

Date of judgment: 21 May 1984.

Judgment

Corbett JA:

1.

Appellant With Trade Mark Micatex

Appellant, a company dealing in paints and allied products, is the proprietor of a trade mark registered in terms of the Trade Marks Act 62 of 1963 ("the Act"). The trade mark in question consists of the word "Micatex". It was registered on 13 September 1971 in respect of the following goods falling within class 2 of the fourth schedule of the Trade Marks Regulations, 1963 (the regulations current at the time of registration):

"Paints, varnishes (other than insulating varnish), enamels (in the nature of paint), distempers, lacquers, preservatives against rust and against deterioration of wood and anti-corrosives, all containing mica".

FIG. 1: Plascon Paint Container with Micatex Trade Mark.

2.

Respondent

Respondent is a company also carrying on business as a dealer in paints and allied substances.

Paragraphs (1-3)

3.

Ingredients of Micatex

The texture coating sold by the appellant under its Micatex trade mark contains the silicate known as mica. The mica ingredient in the texture coating constitutes approximately 9 % by weight of the texture coating as a whole. It is what is termed a "filler". The other ingredients of the appellant's texture coating are pigment and other fillers (not including mica) plus-minus 34 percent; emulsion (resin) 19 %; and water 38 %. The use of mica as an ingredient is confined to specialty paints, such as texture finishes, to which it imparts additional strength and resistance to checking and cracking. Another filler substance that Micatex contains is marble.

Paragraphs (11-13).

FIG. 2: Mica Silicate Mineral.

4.

Respondent Selling Texture Coating Under Mark Mikacote

In about April 1979, the appellant became aware of the fact that the respondent was selling and offering for sale in the Cape Province a texture coating under the mark Mikacote. 

Paragraph 16.

5.  

Ingredients of Mikacote

With regard to the use by the respondent of the mark Mikacote, it is relevant to note that the respondent's texture coating does contain mica, the breakdown of this product, shown as a percentage by weight, being the following: pigment and other fillers (not including mica) 32,97; mica 8,72; emulsion (resin) 19,44; water 36,39; additives 2,48. Mikacote does not, however, contain marble, one of the ingredients of Micatex.

Paragraph 19.

6.

Purchasers of The Products

The goods in relation to which the marks Micatex and Mikacote were being used were offered for sale in hardware stores, multiple stores, general dealer's stores, and similar outlets. They were purchased, inter alia, by word of mouth, either over the counter or over the telephone, or by selection by appearance. The purchasers included not only persons skilled in the paint trade, but also persons having no specialized knowledge and merely wanting to perform painting work themselves or by means of unskilled employees. It is averred by respondent that such purchasers nevertheless "generally have a more than rudimentary knowledge of the products and the substances contained in them".

Paragraph 20.

FIG. 3: Paint Offered for Sale.

7.

Trade Marks Containing Mica

Prior to launching the notice of motion proceedings appellant caused a search to be made in the records of the Registrar of Trade Marks in regard to all trade marks containing the word "Mica". There were at the time five such marks. None of them was registered in the same class as Micatex. Moreover, there was no other trade mark registered in class 2 of the fourth schedule, other than Micatex, which incorporated the words "Mica" or "Mika". In fact, there is no evidence of any use in South Africa in respect of paint or allied products of any trade mark containing the word "Mica", save for the use by appellant of the trade mark "Micatex" and the use by the respondent of the marks "Mikadek" and "Mikacote".

Paragraph 22.

8.

Test

In an infringement action, the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every person interested or concerned (usually as the customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered mark, i.e. the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection.

Paragraph 35.

FIG. 4: Likelihood of Deception or Confusion.

9.

Comparison Between Mark Used by Defendant and Registered Mark

The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences between the two marks. 

10.

Impact Made Upon Average Customer

An assessment must be made of the impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied. 

Paragraph 36.

11.

The Notional Customer

This notional customer must be conceived of as a person of average intelligence having proper eyesight and buying with ordinary caution. 

Paragraph 36.

12.

Sense, Sound and Appearance of Marks

The comparison must be made with reference to the sense, sound, and appearance of the marks. 

Paragraph 36.

13.

Marks Viewed as Encountered in Market Place

The marks must be viewed as they would be encountered in the market place.

Paragraph 37.

14.

Against the Background of Relevant Surrounding Circumstances.

Marks must be viewed against the background of surrounding circumstances. Marks not only considered side by side but separately.

Paragraph 37.

15.

Purchaser has Imperfect Recollection.

It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this.

Paragraph 37.

16.

Dominant Feature

If each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by some significant or striking feature than by a photographic recollection of the whole.

Paragraph 37.

17.

Manner in Which the Marks are Likely to be Employed.

Finally, consideration must be given to the manner in which the marks are likely to be employed as for example, the use of name marks in conjunction with a generic description of the goods.

Paragraph 37.

18.

Not Notional User

The Court stated it had some difficulty, however, in applying the notional user approach to the use by the defendant of his mark, especially as regards the type of goods to which the mark is applied. If the actual proven user by the defendant falls outside the ambit of the plaintiff's monopoly, then the Court failed to see how it can be said to infringe merely on the ground that a notional fair and normal user of his mark – which had not in fact occurred - would trespass upon the plaintiff's monopoly. To take a pertinent example: suppose the respondent, in this case, had used a mark which was deceptively similar to the plaintiff's mark in relation to an insulating varnish (an item specifically excluded from the goods in respect of which the appellant's mark was registered). The Court doubted whether the suggestion that the respondent's mark might also fairly and normally be used in relation to other varnishes would establish infringement on the respondent's part.

Paragraphs (40-41).

19.

Comparing Micatex and Mikacote

Both Trisyllabic

They are both trisyllabic; they both have as their first two syllables the word "mica". (Though in the respondent's case this is spelt "mika", phonetically the words are identical.) On the other hand, the only similarity between the suffix "cote" and the suffix "tex" is that they are both monosyllabic.

Paragraph 42.

20.

Transport to the Market Place

The Court stated it must notionally transport itself to the market place and consider whether the average customer is likely to be deceived or confused. And here the Court must take into account relevant surrounding circumstances, such as the way in which the goods to which the marks are applied are marketed, the types of customers who would be likely to purchase the goods, matters of common knowledge in the trade and the knowledge which such purchasers would have of the goods in question and the marks applied to them.

Paragraph 43.

21.

Purchasers Having no Specialized Knowledge

As already mentioned, the goods to which the Micatex and Mikacote marks were applied were offered for sale in hardware stores, multiple stores, general dealer's stores and similar retail outlets. Potential purchasers included not only persons skilled in the paint trade, such as building and painting contractors, but also persons having no specialized knowledge and wanting merely to perform painting work themselves or by means of unskilled employees. It is doubtful whether the former, ie persons skilled in the paint trade would be deceived or confused by respondent's mark Mikacote, but the position of the latter, ie persons having no specialized knowledge, is by no means so clear.

Paragraph 44.

FIG. 5: Purchasers can be Skilled or Unskilled in the Trade.

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22.

Dominant Impression “Mica”

In the Court’s opinion, the dominant impression or idea conveyed by each of the marks centers on the word "mica". "Mica" constitutes in each case the first two syllables of the mark. It is the portion of the mark that makes the initial impact and on which stress is laid in pronunciation. It is a known word for a known substance. In the painting trade appellant's use of the word "mica" in its registered trade mark was unique among trade names, until the respondent commenced using the mark Mikacote. The suffixes "tex" and "cote" make less of an impression, particularly as they appear to be derived from the term "texture coating" or, at any rate, would be understood by a substantial number of interested customers as being so derived.

As the evidence shows, the term texture coating is one generally used in the trade to denote the products to which the marks Micatex and Mikacote were applied. Consequently, a potential customer, with no specialized knowledge in this field and an imperfect recollection of the appellant's trade mark, would tend to recall it as "Mica-something" or "a word starting with mica". At any rate, in the Court’s view, a substantial number of such customers would probably have this type of recollection. A person with such an imperfect recollection who went, say, to a hardware store to purchase the appellant's product and encountered, or was offered, a tin of Mikacote could well, in my opinion, be deceived into thinking that this was the product he was seeking; and it is likely that this could occur on a substantial scale. Moreover, the Court was of the opinion that a substantial number of such persons, knowing that the product they were seeking was a "texture coating"; would be likely to be confused between "Micatex", the suffix being the first syllable of "texture", and "Mikacote", where the suffix is a phonetic transcription of the first syllable of "coating". At the very least, consider that the resemblance between the marks is sufficient to cause a substantial number of such customers to be confused as to whether or not there was a material connection between the respondent's goods, bearing the mark Mikacote, and the proprietor of the Micatex mark.

Paragraphs (46-47).

FIG. 6: Dominant Impression Mica.

23.

Court a quo Verbal Comparison

The Court a quo, which decided the infringement issue adversely to the appellant, appears to have based its decision mainly on a verbal comparison of the two marks and upon the conclusion (thereby differing from the Judge of first instance) that in practice the two marks would not be used in conjunction with the generic description "texture coating". The Court is inclined to agree with this latter conclusion, but in the Court’s view, a purely verbal comparison is not enough. As the Court has said, in cases such as this the Court must transport itself to the market place and try to visualize how customers of the goods, in relation to which the marks are used, would react.

Paragraph 48.

24.

Case Not an Easy one.

The case is not an easy one. This is shown by the division of judicial opinion which has occurred in this case and in the parallel case in the Orange Free State Provincial Division (see Decro Paint and Hardware (Pty) Ltd v Plascon-Evans Paints (Tvl) Ltd, 1982 (4) SA 213 (0) ), the matter which came before the Court on appeal immediately after the present one. Having carefully considered the matter, however, the Court is of the view, for the reasons stated, that the appellant established an infringement of its registered trade mark Micatex by the use by the respondent of its mark Mikacote.

Paragraph 49.

Filing a Patent Application Online in the US

The Electronic Filing System (EFS) of the United States Patent and Trademark Office (USPTO), is also referred to as EFS-Web. It is a web-based system for submitting patent applications and other relevant documents electronically online.
You must have your specification and drawing files prior to filing ready for uploading in pdf form.
You must also first download and fill in the files you want to submit and upload as part of the filing process using the electronic filing system. The files can be downloaded from https://www.uspto.gov/patents/apply/forms
Right-click on the link to the form and select “Save link as” or equivalent.
The forms that are going to be uploaded together with the specification and drawings of the patent in this example are:
1. Application Data Sheet or aia0014.
2. Oath or Declaration filed or aia0001.
3. Certification of Micro Entity (Gross Income Basis) or aia0015a.

To start filing your patent application online, go to:
https://www.uspto.gov/patents/apply
The file online links can be seen in figure 1:

Fig. 1: The File Online Links of the United States Patent and Trademark Office (USPTO).

Click on EFS-Web for Unregistered eFilers.
A first new window for unregistered efilers opens as shown below in figure 2:

Fig. 2: Top First Window for an Unregistered E-filer.

Complete last, first name, and e-mail address. Under Main Functions select New application/processing. Figure  expands as shown in figure 3 below:

Fig. 3: Bottom First Window for an Unregistered E-filer.

Under Select Type of New Application/Processing, select Utility and then Nonprovisional Application under 35 USC 111(a).

Click Continue.

A new second window opens as shown below in figure 4:

Fill in the top half of the second window by selecting Application Data. Fill in Title of Invention, First Name, and Last Name. It should look as follows:

Fig. 4: Top Part of Second Window Showing Applicaton Data Selected and Title of Invention, First and Last Name Filled In.

Select Correspondence address.

Complete as follows:

Fig. 5: Bottom of Second Window Showing Correspondence Address.

Click Continue.

The following third window opens as shown in figure 6 below showing the application data:

Fig. 6: Top of Third Window Showing Captured Application Data.

As mentioned, you must download and fill in the files you want to submit and upload. 

To unload files to be submitted first click on the Choose File button under the heading Files to be Submitted. Then navigate to the file on your computer. Then under the Category heading from the drop-down list select the category. The under the Document Description heading from the drop-down list select the document description. 

In more detail do the following:

1. Click on Choose File. Navigate on your computer and select for example Specification.pdf. Under the Category heading from the drop-down list select the category Application Part from the drop-down list. Under the Document Description heading from the drop-down list select Specification from the drop-down list.

2. Click on Add File.

3. Click on Choose File. Navigate on your computer and select for example Drawings.pdf. Under the Category heading from the drop-down list select the category Application Part from the drop-down list. Under the Document Description heading from the drop-down list select Drawings-only black and white drawings from the drop-down list.

4. Click on Add File.

5. Click on Choose File. Navigate on your computer and then select for example ApplicationDataSheetaia0014.pdf. Under the Category heading from the drop-down list select the category Application Part from the drop-down list. Under the Document Description heading from the drop-down list select Application Data Sheet from the drop-down list.

6. Click on Add File.

7. Click on Choose File. Navigate on your computer towards and then select 

Declarationaia0001.pdf. Under the Category heading from the drop-down list select the category by choosing Application Part from the drop-down list. Under the Document Description heading from the drop-down list select Oath or Declaration filed from the drop-down list.

8. Click Add File.

9. Click on Choose File. Navigate on your computer towards and select for example 

MicroEntityGrossIncomesb0015a.pdf. Under the Category heading from the drop-down list select the category Entity Status Correspondence from the drop-down list. Under the Document Description heading from the drop-down list select Certification of Micro Entity (Gross Income Basis) from the drop-down list.

After submitting the files it should be as shown in figure 7 below.

Fig. 7: Bottom Part of Third Window Showing Files to be Submitted, Category, and Document Description.

Click Upload & Validate.
The upper or top part of the 4th new window is shown below in figure 8.

Fig. 8: Top Part of the Fourth Window Showing Application Data.

The lower part of the 4th new window is shown below in figure 9. It shows the files uploaded.

Fig. 9: Bottom Part of the Fourth Window Showing Files Uploaded with No Validation Errors.

As can be seen, all the files were uploaded and there were no validation errors found.

Click Continue.

A 5th window opens. The top part of the 5th window is shown in figure 10. Click on Micro Entity. The filing, search and exam fees for a micro-entity are displayed. Select the Filing, Search and Exam fees for a micro entity.

Fig. 10: Top Part of 5th Window, Select Micro Entity, Filing, Search, Exam.

The bottom part of the 5th window is shown in figure 11.

Fig. 11: Bottom Part of 5th Window, Click Calculate.

Click Calculate and the utility patent application fees are calculated.

Then click Continue.

A 6th window opens. The top part of the 6th window is shown in figure 12 below.

Fig. 12: Top Part of 6th Window.

The bottom part of the 6th window to review the document is shown in figure 13 below.

Fig. 13: Bottom Part of 6th Window To Review Document.

Click on Submit.

The seventh window is displayed in figure 14. It states in this example the total fees that are due is $455.00.

Fig.14: Seventh Window Showing Application Number, Confirmation Number, EFS ID and Total Fees Due.

It states the application number, confirmation number EFS ID and the total fees due.

Select YES! I want to pay now

Then select, for example, a credit card as a payment method.

Complete the credit card details as shown in figure 15 below.

Fig.15: Complete Credit Card Details.

Click on Confirm charge information for this Credit Card transaction.

When you are finished the following options become available as in figure 15.

Fig.16: Can Print or Save Receipt.

From the actions available you can print the receipt or save the receipt.

Patent Application Preparation

Inventions Are Concepts
Firstly, one may ask what are inventions? People, generally think of inventions as tangible things that can be seen. They see the invention as the new more fuel-efficient internal combustion engine, the newly manufactured substance such as a more cost-effective cleaning agent or the battery having a higher energy density and storage capacity. These, however, are mere embodiments of the invention. The invention is not something physical, but a concept. The invention is not something tangible but an abstraction. To protect an invention has to be defined. Definitions are always abstractions. The abstraction is referred to the inventive concept. It is the patent drafter’s task the define the inventive concept present in the embodiment of the inventor. The inventive concept should then be set out in the patent claims. (Slusky, 2012 (2nd ed.)) on page 3.

FIG. 1: More Fuel-Efficient Internal Combustion Engine

Patent Application to be Completed as Soon as Possible 

The patent drafter should try to complete the patent application as soon as possible. Undue delay may result in a third party filing a patent application for an invention similar to or close to the client inventor's invention. This can completely knock out or limit the scope of the patent of the client inventor as it may no longer be new or obvious in certain respects as when the client inventor initially approached the patent drafter. Also, prior art may become available that can be used against the client inventor’s invention. Patent drafting is an iterative process between the inventor and the patent drafter. In the case where there are several inventors, it is useful to have only one “contact inventor”. This contact inventor is someone who knows most of the details of the invention or can obtain the necessary information from the other inventors. He is also someone who can spend the necessary required time with the patent drafter.

FIG. 2: Patent to be Drafted Soon as Possible.

Grace Period and Provisional Patent Applications

It should be kept in mind that in many countries like the United States there is a grace period of one year from the first disclosure of the invention by the client inventor. A patent drafter should be mindful of this if the client inventor previously disclosed the invention at for example a scientific meeting. In the US provision is made for provisional patent applications. A provisional patent application must disclose the invention however, it does not have to have claims. A provisional application on filing establishes a priority date for the invention of the client inventor. A provisional application will come to an end one year after filing. A provisional patent application serves as a placeholder so that a nonprovisional utility patent can be filed within one year without losing the priority date established by the provisional patent application.

Sources Of Technical Information

The patent drafter will need to gather technical information and ideas about the invention from the client inventors. Business considerations may come from other sources, such as the applicant’s managers or marketing executives. The technical information can mainly be provided in writing. This can be invention disclosures, that are contained in sketches, technical drawings, laboratory reports, manuscripts of (unpublished) papers, and prototypes. (WIPO, 2022) on pages 28-30.

FIG. 3: Invention Contained in Technical Drawings.

Inventorship

The definition of inventorship can be simply stated that the threshold in determining inventorship is who conceived the invention. It can be said conception is the complete performance of the mental part of the inventive act, and then the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice. An inventor is a person, or persons in United States patent law, who contribute to the claims of a patentable invention.

A person has to contribute to the conception of the invention, otherwise, he is not an inventor. Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant. One must contribute to the conception of the invention to be an inventor. Similarly, a person who shares in the conception of a claimed invention is a joint inventor of that invention. With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. General knowledge regarding the anticipated biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds. One who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a coinventor. (uspto.gov The United States Patent and Trademark Office, 2020)

FIG. 4: The inventor is the Person Who Conceived the Invention.

Slusky, R. D. (2012 (2nd ed.)). Invention Analysis and Claiming A Patent Lawyer's Guide. Chicago, Illinois: ABA Publishing, American Bar Association.

uspto.gov The United States Patent and Trademark Office. (2020, 06 25). uspto.gov The United States Patent and Trademark Office. Retrieved 10 15, 2022, from Manual of Patent Practice Procedure (MPEP): https://www.uspto.gov/web/offices/pac/mpep/s2109.html.

WIPO. (2022). WIPO Patent Drafting Manual (Second ed.). Geneva, chemin des Colombettes, Switzerland: World Intellectual Property Organization. doi:10.34667/tind.44657.

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Utility In Patent Law

 

Title 35 of United States Code section 101 (35 U.S.C. 101) states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, ….”

Thus, 35 U.S.C. 101 serves to ensure that patents are granted on only those inventions that are "useful." Further, Article I, Section 8 of the Constitution authorizes Congress to provide exclusive rights to inventors to promote the "useful arts."

Figure 1: United States Capitol That Houses Congress That Has to Promote The Useful Arts.

Specific and Substantial Utility

According to the manual for patent examining procedure (MPEP) of the United States Patent and Trademark Office (USPTO) an invention has a well-established utility if: 

(i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention, that being the properties or applications of a product or process, and 

(ii) the utility is specific, substantial, and credible.

A claimed invention must have a specific and substantial utility. This requirement excludes "throw-away," "insubstantial," or "nonspecific" utilities, such as the use of a complex invention as a landfill, as a way of satisfying the utility requirement of 35 U.S.C. 101.

An applicant in a patent application need only provide one credible assertion of specific and substantial utility for each claimed invention to satisfy the utility requirement.

If no assertion of specific and substantial utility for the claimed invention made by the applicant is credible, and the claimed invention does not have a readily apparent well-established utility, then the claim(s) is to be rejected.  The claim(s) are to be rejected under 35 U.S.C. 101 on the grounds that the invention as claimed lacks utility. The claim(s) are also to be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, the first paragraph, on the basis that the disclosure fails to teach how to use the invention as claimed. 

Figure 2: No Assertion of Specific and Substantial Utility Claims to be Rejected.

Specific Utility

A specific utility is specific to the subject matter claimed and can provide a well-defined and particular benefit to the public. This contrasts with a general utility that would be applicable to the broad class of the invention. A distinction should be made between situations where an applicant has disclosed a specific use for or application of the invention and situations where the applicant merely indicates that the invention may prove useful without identifying with specificity why it is considered useful. For example, indicating that a compound may be useful in treating unspecified disorders, or that the compound has "useful biological" properties, would not be sufficient to define a specific utility for the compound.

Figure 3: Polynucleotide Use Disclosed as Gene Probe or Chromosome Marker Not Considered Specific.

A claim to a polynucleotide whose use is disclosed simply as a "gene probe" or "chromosome marker" would not be considered to be specific in the absence of a disclosure of a specific DNA target. A general statement of diagnostic utility, such as diagnosing an unspecified disease, would ordinarily be an insufficient disclosure of what condition can be diagnosed. This is insufficient to define a specific utility for the invention. Contrast the situation where an applicant discloses a specific biological activity and reasonably correlates that activity to a disease condition. This is sufficient to identify a specific utility for the invention. 

Substantial Utility

An application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. To satisfy the substantial utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.

Figure 4: Must Show Invention Has a Significant Presently Available Benefit to The Public.

A substantial utility defines a real-world use. If the carrying out of further research is required to identify or reasonably confirm a real-world use, it is a not substantial utility. An assay is a process of analyzing a substance to determine its composition or quality. A therapeutic method of treating a known or newly discovered disease and an assay method for identifying compounds that themselves have a substantial utility define a real-world context of use. 

An assay that measures the presence of a material that has a stated correlation to a predisposition to the onset of a particular disease condition would also define a real-world context of use. It identifies potential candidates for preventive measures or further monitoring. 

Figure 5: Assay Measures Material Correlated to a Predisposition to the Onset of Disease Defines Real-World Context of Use.

On the other hand, the following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a real-world context of use and, therefore, do not define a substantial utility:

A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved;

(B) A method of treating an unspecified disease or condition;

(C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility;

(D) A method of making a material that itself has no specific, substantial, and credible utility; and

(E) A claim to an intermediate product for use in making a final product that has no specific, substantial, and credible utility. (United States Patent and Trademark Office agency of Department of Commerce, 2020)

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United States Patent and Trademark Office agency of Department of Commerce. (2020, 06 25). 2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement [R-11.2013]. Retrieved 09 16, 2022, from uspto.gov: https://www.uspto.gov/web/offices/pac/mpep/s2107.html

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Inventive Step or Nonobviousness

 Another requirement for patentability is that the invention must have an “inventive step” or is “nonobvious.” 

An inventive step or nonobviousness means that an invention must not have been obvious to a “person skilled in the art” or one “of ordinary skill in the art.” It can be said obviousness means that if any person of average skill in the scientific or technical field of the invention could have put together different pieces of known information and arrive at the claimed invention, then that invention is not patentable. (WIPO, 2022) (page 19 paragraph 2.2)

Figure 1: Person Skilled in the Art.

In the United States, the inventive step or nonobviousness is governed by 35 U.S. Code section 103.35U.S. Code § 103 - Conditions for patentability; non-obvious subject matter

"A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

In the United States obviousness is a question of law based on underlying factual inquiries. The factual inquiries are as follows:

(A) Determining the scope and content of the prior art;

(B) Ascertaining the differences between the claimed invention and the prior art; and

(C) Resolving the level of ordinary skill in the pertinent art.

Figure 2: Xerox Photocopy Maschine with Founder Joe Wilson. 

Xerox Machine Filling a Long-Felt Unsolved Need and being a Commercial Success.

Objective evidence relevant to the issue of obviousness must be evaluated. Such evidence, is sometimes referred to as "secondary considerations." Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence relevant to nonobviousness may be included in the specification as filed, accompanying the application on filing. The evidence may also be provided in a timely manner at some other point during the prosecution. (MPEP, 2020)

 

Figure 3: Slinky Discovered by Accident.

A Person Skilled in the Art

A person skilled in the art is a hypothetical person. He is presumed to have access to all publicly available prior art information. He has the capacity to understand all technical matters in the scientific or technical field relevant to the claimed invention. He also has the general knowledge and ordinary practical skills common to the field. This person will also have the capacity for routine experimentation to, for example, clarify ambiguities on known technology. The person skilled in the art does not, however, have inventive capabilities beyond the capacity to exercise the usual faculties of logic and reason to combine the knowledge. This person is not expected to exercise inventive imagination, or to add knowledge to the prior art and to advance the technology.

 

Figure 4: Person Skilled in the Art can be a Group of Persons.

Sometimes, this hypothetical “person” should be presumed to be a group of persons or a team of specialists, each of whom has a particular skill. The level of skill and knowledge of a person skilled in the art may vary depending on the particular technical field involved. In general, the level of knowledge and skill of the person skilled in the art is not the average of a layperson (i.e., the minimum knowledge and skill) or a leading specialist’s skill (i.e., the maximum knowledge and skill). The person skilled in the art is rather the skill expected of an ordinary, duly qualified practitioner in the relevant field.  (WIPO, 2022) (page 20 paragraph 2.2)

 Reasoning That May Support a Conclusion of Obviousness

The following may conclude that the purported invention is obvious:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of a known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. (MPEP, 2020)

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 MPEP. (2020, 06 25). 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R-10.2019]. Retrieved 08 24, 2022, from Manual for Patent Examining Procedure: https://www.uspto.gov/web/offices/pac/mpep/s2141.html

WIPO. (2022). WIPO Patent Drafting Manual (Second ed.). Geneva, chemin des Colombettes, Switzerland: World Intellectual Property Organization. doi:10.34667/tind.44657