Preserving Your Patent Rights
Below are three memos written by our staff to familiarize MIT inventors with and answer the most common questions about the patent process.
Protecting Your Ability to Get a Patent: What Counts as a Bar to Patenting
The Patent Process: Claiming your invention
Protecting Your Ability to Get a Patent: What Counts as a Bar to Patenting
1. What are the rules if I want only a U.S. patent?
The U.S. patent law system is among the most lenient in the world with regards to prior disclosure of your invention. It allows you to publish your invention or offer it for sale prior to filing a patent application, provided that you file your patent application within one year of the publication or offer for sale. If you wait longer than one year, your patent rights are forfeited. The one-year period is a "grace period."
2. What if I also want patent coverage in Europe and other countries?
Most countries are stricter than the U.S. They require that a "priority patent application" be filed before the first public written or oral disclosure.
3. Do I have to file in all the countries before I disclose the invention publicly?
No. You only have to file a patent application in one country before you make the public disclosure. You then have another 12 months after that "priority filing" to file in all the other countries (or regional territories) in which you want patent protection. (Usually, the first filing for Americans is in the U.S., but any of about 130 other countries could do.)
4. What type of medium counts as a public disclosure that bars a patent?
"Public disclosure" is not confined to publications in books and technical journals. Poster sessions, slides, lectures, seminars which are open to the public, letters, even conversations can count as a bar to patentability--depending on the country.
In particular:
- Any written or oral disclosure, even to a single person, counts as a "public disclosure" in most countries--unless the recipient agrees that the information was conveyed in confidence. Disclosures to employees
are not considered to be "public disclosures."
- In the U.S., the "public disclosure" must be a "publication"--that is, in writing. However, do note that slides at meetings and poster sessions are "publications"--as is private correspondence, advertisements, etc.
- An "offer for sale" counts as a bar to patenting (after the one year "grace period") in the U.S. Showing your product at a trade show may very well count as such.
5. What content counts as public disclosure?
Simply announcing that you have made an invention is not a "public disclosure" of the invention. In order to act as a patent bar, the disclosure must be "enabling"--that is, it must teach someone "of ordinary skill in the art" how to actually duplicate the invention.
An offer for sale, even if it does not teach someone how to make the invention, is a bar to patentability (after the grace period) in the U.S., but is not a bar in Europe if it does not "enable".
6. What if I want to discuss my invention with others, outside my institution, before I have filed a patent application?
You should have the person (or company) sign a confidentiality agreement, agreeing to keep your invention in confidence, before you have the discussion.
7. Is there any forgiveness if I accidentally make a public disclosure?
In the U.S., as stated above, you have a one year grace period after the publication in which to file the patent.
In Europe, a public disclosure is an absolute bar to patentability.
Japan gives a six month grace period for filing a patent if the public disclosure was a presentation at a scientific meeting.
Check with a patent attorney before despairing or deciding not to try for a patent. Your "public disclosure" may not have been enabling, or there may be some residual valuable, patentable information that you did not disclose.
The Patent Process: Claiming your invention
Introduction
A patent application cannot, and should not, be written without your contribution as the inventor. The patent attorney needs your assistance in understanding the essence of your invention and in finding the words to describe it. The perfect patent claims the essence of your invention, no more, and no less.
The purpose of this memo is to suggest ways in which you, the inventor, can help the patent attorney find the words to describe this essential idea. Following are a number of examples, some purely imaginary and others that have arisen over the years at MIT, that illustrate various patenting situations.
What are claims?
Claims in a patent can be understood as a written boundary describing exactly what part of the practical arts the holder of the patent has the right to forbid others from practicing (see previous memo on the definition of a patent). A helpful analogy might be to imagine the claims as a real estate map, delineating proprietary rights; or as verbal Venn Diagrams.
After completing your literature search, you should have a good idea of what you can't claim, because it has already been published by others. How do you figure out what you can claim?
Example A
If you have a patent on a three legged chair, you have the right to forbid others from making, using or selling all such chairs, whether they have improvements, such as backrests or coats of paint, or not.
Example B
If you have a patent on all anti-fuse structures which consist of a sandwich of layers of metal, insulator, and metal, such that a voltage through the two metal layers will break down the insulator and create a permanent current path, then you have the right to forbid others from making any such device, regardless of the specific types of metal, or insulator, of the specific thicknesses of layers called out in subsequent improvement patents.
These subsequent patents may have extremely important practical innovations in them, and it might be necessary to practice the particular "recipe" they describe in order to mass produce practical and robust anti-fuses, but the first case would dominate, and a person would require a license from the "broad," or, in legal terms, "dominant," patent holder in order to practice the practical improvements. Happily, though, it works both ways, and the holder of the dominant patent also needs a license from the holder of the "improvement" patents in order to practice those improvements.
What can't be claimed?
You can't claim what others have already published, either in patent or scientific article form, or a design for an object which has been available for sale (hence the importance of a literature search). You also can't claim what you have absolutely no idea how to make. You can't claim anti-gravity paint, or perpetual motion machines for example.
Can I only patent something that I have actually built?
No, you don't have to have built it. The patent office says that you have to do at least a "constructive reduction to practice". A patent application constitutes a "constructive reduction to practice" provided that, in the application, you show that by the generally accepted laws of nature, your invention should work in theory, even if you have not yet built it. Incidentally, idea patents alone (no experimental reduction to practice) tend not to be very commercially valuable, and in general, our office discourages them. Preferably, you, the inventor, have done an experiment to demonstrate feasibility.
Commercial Uses of Patents
First, recall that the right to forbid others from practicing something can attract investment to forward-looking commercial ideas (such as superconducting wire), which might not otherwise have been attracted. This is so because investors are more willing to put large sums of money into uncertain ventures if they know that, should they in fact succeed in working out all the technical bugs, they will have some period of time during which they will have a monopoly, and can keep their competitors from copying their design.
Therefore, sophisticated investors and potential licensees will calibrate as accurately as they can the position of your invention relative to the prior art. Does it dominate most of the inventions in the field, or are there some basic patents which dominate your invention?
Investors and licensees, like good engineers, also search for alternate ways to accomplish what your invention accomplishes. How is your invention better, not just different from the prior art? Please contrast and compare your invention with the prior art for your attorney, who will use this material for the section of the patent entitled "background of the invention".
Finally, investors and potential licensees may try to imagine methods for "engineering" around your invention. Can they practice your invention without, technically, infringing the claims of the patent?
Therefore, in order to increase the commercial value of their patents, MIT inventors need to help us identify the prior art, explain the relevance of this art to their patent attorneys, and explain the essence of their invention to the attorneys so that it is virtually impossible to engineer around their invention without infringing the claims.
Specific Hints for Inventors on How to Broaden Claims
- Is anything in the patent unnecessarily specific?
Example A
A particular material (like GaAs) is called out, where such a material is unnecessary. Could the invention be practiced just as well with any III-V material, with any direct bandgap semiconductor? Is it an electronic invention, where the optoelectronic properties are irrelevant? Alternately, if it is an invention that specifically requires the presence of arsenic, then maybe it has to be written to any III-V compound containing arsenic.
Example B
A particular dimension is called out. Does the layer really have to be 100nm thick? Is that an essential feature of the invention? Could it be between a range of values, say 75nm-150nm? Does it have to be an integral multiple of 100nm? Does it have to be an integral multiple of a wavelength of light times the refractive index of the layer in question? Is the actual dimension actually irrelevant?
Example C
A particular means is given for creating something, but the means that is used is irrelevant.
- Do you specifically need an MBE machine to make the multi-quantum well laser that is at the heart of the invention? Could it be done with MOCVD, by LPE? If it really doesn't matter, don't specify the means at all, at least not in the broadest claims.
- Do you specifically need to make a certain structure by etching (subtractive means), or could it just as well have been built up by deposition (additive means)? If it doesn't matter, don't specify.
Example D
A particular property is specified, but it is unnecessarily, or incorrectly specific.
- "Hydroscopic" replaced by the broader "electrostatically repulsive".
- "Transparent", replaced by the more correct and also flexible "Transparent to the lasing wavelength".
By focusing on specific examples, have you neglected to express the true essential idea? By going through the check-list of the previous examples, you hope to have arrived at the most abstract, algorithmic, yet still correct formulation of your invention.
Example A
The essence of the invention was an electronic energy level filter for selecting beams of electrons within a narrow energy bandwidth. It was important to specify the energy structure of the materials used to make the filter, and the algorithm used to specify how many layers of what types of material were needed to produce the desired filtering effect. Calling out specific materials and specific layer thicknesses would have been unnecessarily limiting.
Example B
The essence of the invention is a means for independently engineering both the gain profile and the numerical aperture of a lasing medium by distributing a gain medium in a (non-lasing, and transparent to the lasing wavelength) medium of preselected refractive index. Calling our particular wavelengths and particular numerical apertures would have been unnecessarily limiting.
Help the Attorneys Write Good Dependent Claims Too
In the dependent claims, it is completely appropriate to call out the specific material, dimensions, designs, and tools you used to reduce your invention to practice. Good dependent claims make the patent easier to understand, easier to enforce, and easier to license.
Summary
- Limit the scope of your patent by thorough and determined literature searches. Anticipate the references that savvy investors and potential licensees will probably find, thus saving time and money.
- Broaden the scope of your patent by testing your ability to formulate the most general, yet still correct algorithm which explains the essence of your idea.
- Clarify your patent by giving specific examples to the attorney for the dependent claims.
- Do all this, and you will have the clearest, most commercial valuable patents possible.
