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b) Unlawful usurpation
It is always worth-while to have the inventor, respectively applicant, briefly explain how the invention happened. It is not rare that one finds that the invention is somebody else's idea. In particular in supplier/ purchaser cooperations (e.g. in the motor-vehicle industry), the customers often consider the supplier's inventions as their own inventions.
It is important to elucidate the customer as the client of the situation and to explain to him that he may not be entitled to apply for a patent. However, a business solution can most often be found, be it as a license agreement, be it as a long-term purchase obligation. A transfer of the rights to the invention to the customer is of course also possible. Then, he is authorized to file.
c) Abandoned third-party invention
This is a strange but not-so-rare exception. If somebody reports an invention to someone else and says that he had abandoned said invention since he considered it not to be economically usable or since he considered it not to be inventive, the other person can still not file this invention for himself. Contrary to an abandoned chattel (the bicycle thrown into the Duna river), the third party cannot pick up the "discarded" invention and file it for himself. The legal transfer of rights or a legal possibility misses. Only if the third party has the inventor assign the rights to the invention to him, he becomes entitled to apply for a patent.
2.2 Time frame for drafting a patent application
If the above considerations have let to the recommendation of a patent application, drafting and filing the application, which naturally takes a certain time, is to be carefully coordinated with applicant's business operation.
Most countries having the first-applicant principle, i.e. he, who filed the first application is granted the patent in case of two applications for the same subject matter; therefore, the application has to be filed quickly. This also holds true in case of a first application in the U.S. where the first-inventor principle applies. All later applications for this invention in the rest of the world are subject to the first-applicant principle; the U.S. inventor only enjoys the priority of his first application date at the USPTO, not the often much earlier invention day. This is often ignored by US applicants, with fatal consequences for the legal validity of the later-dated subsequent applications. The inventor's lecture at the conference one week prior to the US filing is no prior art for the U.S., but it is for Europe and many other countries of the world.
Concluding a non-disclosure agreement with the customer can often solve the conflict between the time required for drafting a patent application and the seller's desire to present the new product to the customer tomorrow. It may only be a very brief document (two lines). However, customers, in particular large customers, are extremely hesitant to sign non-disclosure agreements. In such cases, a very shortlived non-disclosure agreement often helps. If e.g. a customer is asked to keep the subject matter and the associated information secret for three months, this also ought to be possible for a large company. The term's expiration is of course to be recorded exactly and the patent application has to be filed at the Patent Office prior to the expiration.
However, it is even better to conclude a non-disclosure agreement until the publication of the patent application.
If the customer is not even willing to sign a non-disclosure agreement with a very short term, the only resort is to only show him a "black box", i.e. only to show him the results as far as they do not disclose the invention. However, there is an increased risk of loss of rights involved. The customer may recognize the invention only from the functions' results or at least find it out with a certain amount of work. In such a case, not even the "black box" ought to be shown.
If a pre-publication of the invention cannot be avoided, e.g. because the pre-publishing Research Manager does not think much of patents and is the superior of the Patent Department's Manager, it always should be checked whether a subsequent application can be filed in countries with a preclusive period for novelty. The possibility of a utility model and the inventor-friendly regulations in the U.S. and in Japan were already pointed out.
3. The first try
3.1. Get a first understand
Now, the decision has been made to draft a patent application. Before anything is written down, the first step in drafting a patent application has to be to understand the invention. One has to understand the concrete example, the concrete drawing of an embodiment, a particular recipe, the DNA sequence, the microorganism, the particular algorithm, the steps of a process, i.e. the preferred embodiment of the later patent application. It is not yet necessary to consider extension possibilities, scope of protection or the like. Only a limited amount of time may be used to understand the invention in this sense. This time will be the shorter, the better the inventor explains his invention and the more technically educated the patent attorney is.
On the basis of this understanding, most courses start to discuss claim wordings. It is this seminar's explicit recommendation not to formulate any claims yet. Experience shows that the author of claims falls in love with his own words; he so-to-say puts himself onto fixed intellectual tracks and has not evaluated the invention earlier with an open mind. Deadly sins are often committed since categories are forgotten because initial wordings are maintained and in particular because the invention is not sufficiently considered with open results.
Instead, words, terms and contents ought to be written down in a limited time but not in whole sentences. Recommended are a confuse instead of an orderly collection of ideas, scribbling instead of writing, sketching instead of drawing. In the best case, this happens during the discussion with the inventor without a strict outline of the questions.
The result is a relatively orderless collection of words and ideas, of notes and sketches. Two particularly important approaches ought to be kept in mind from the outset:
- When jotting down a word, one always ought to think of a more generic term and a more specific term in order to deliberate the different definition depths of terms and to record them. It may be that one thinks of an ideal word in this early phase. Artificial words, i.e. words that one invents himself, are also part thereof.
Often, the jurisdiction allows the inventor to be his own lexicographer1. Therefore, he may not only define existing terms different than usual, but he may also invent entirely new words.
Sometimes, this can be very helpful if such creations automatically cause a certain association.
- Negative elements are particularly powerful means of definition. If a captain claims "Vienna", this may suffice his strategy, but it is clearly less than if a definition "not Paris" claims almost the entire world. Since the latter case grants him Vienna, but in addition almost everything else. Correspondingly, the Examining Authorities do not like negative elements. However, they are not forbidden and in rare cases, the negative elements are actually core technical features, e.g. if an alloy is to be "free of manganese".
The further important advantage of negative elements is an almost natural argumentation in favor of unobviousness. If a reference or a group of references always contains manganese in the alloy, one will hardly be able to argue that it had been obvious to leave the manganese out.
During this phase of first shaping, the patent application author's activity equals that of a minor digging for jewels. He digs through the inventor's brain, his documents and research reports. The cases in which there is actually only one invention are relatively rare.
When digging for the inventions, the jewels, one starts with the narrowest invention as one has detected and understood it. This starting point therefore comprises the specific examples, the sketch of the device, the first model. Moreover, the closest prior art is used as a reference point during the search for further or broader inventions. The following digging tools ought to be considered:
Generally, the invention in its closest sense contains a combination of numerous narrowly defined elements. Each of these elements, however, may be an invention on its own. Therefore, it is always necessary to consider whether the individual technical element in connection with a very general description of the remaining subject matter is an invention.
Early in the German practice, there were efforts according to which a patent claim had to contain a so-called "complete" teaching for technical activity. This was always an erroneous teaching. Patent claims only have to define the invention such that the core of the invention is sufficiently clear for the skilled person.
In some cases, an individual word may define the subject matter of the invention and be the claim. An example is the US patent 4,341,715 (Enclosure A1). The entire set of claims is a word for a new chemical composition. This composition appears to be relatively narrow in its protective range, yet it is the only suitable means since its particular effect is lost if one atom in one or the other substitution is changed. It is an admittedly rare case, which, however, one should keep in mind when searching for inventions and wording patent claims.
Besides individual features which may already be an invention on their own, subcombinations of the feature combination originally explained by the inventor have frequently an inventive character. These sub-combinations are found by leaving out individual features from the definition of the narrowest invention, i.e. the specific example, until only the skeleton or the core of the invention remains. Thus, too tight an adhesion to the concrete embodiment is later avoided when wording the claims.
If the invention is an article which is a commercial product of applicant, particular attention ought to be paid. There is the danger that the patent attorney and the client are both content with a claim since it describes the commercial product. Such a limitation in particular during the phase of the first shaping is particularly dangerous. As a rule, such a situation ends with too narrow a claim wording. During this collection, this digging process, one must not restrict oneself to the applicant's commercial products or corresponding feature combinations neither with regard to the different claim categories nor with regard to the feature combination.
When looking for further inventions, one may by no means allow oneself to be restricted by the jurisdiction to indirect patent infringements. This jurisdiction helps in certain situations to also catch him as a patent infringer who only supplies means for realizing the invention, yet this protection is far narrower than the protection of a patent claim directed to these means themselves. In particular the required subjective side of the indirect patent infringement and the exculpation possibility by a hint are grave limitations of the protection via indirect patent infringement. Therefore, the collection of inventive subject matters always ought to cover such ones which would be considered as indirect patent infringement of the invention in the narrower sense.
A good example for this situation is the case "Bewehrungsanordnung" (reinforcement arrangement) (German patent 973 001, Enclosure A2). Here, the reinforcement arrangement, consisting of superimposing mats according to figures 1, 2, and 3, was claimed. The individual reinforcement mat, inventively having different rod thicknesses or rod strengths at the edge, was not claimed. Of course, a claim directed to this individual reinforcement mat would have been just as patentable as the claim for the entire reinforcement arrangement.
In particular younger patent referees often lack the boldness to show their ignorance. Often, they have graduated from university with excellent certificates; maybe they even have some years of technical practice and cooperate with an inventor, mostly a technician or colleague, in drafting a patent application. Now, they do not want to reveal their ignorance to this technician and therefore avoid questions that might show that they do not understand the matter at least almost as good as the inventor himself. However, questions often trigger the inventor to think further, to develop further inventions, to conceive of further embodiments and the like. Moreover, every inventor knows or has to be told that a patent practitioner, a patent attorney or the employee in a patent department can of course not be on the same level of technical knowledge as the inventor.
Therefore, it is necessary that every patent practitioner has this boldness to show ignorance, i.e. the boldness to tell the inventor that he knows less, maybe much less, on this field than the inventor. Only then is it possible to use the entire potential knowledge of the inventor to optimize the patent application. Apparently simple questions frequently caused inventors to further creative ideas; sometimes, they even made arise what finally showed to be the invention's kick.