Enforcing and Challenging Intellectual Property Rights

Peter. K. Hess

1. Introduction and Aim of the Session “Patent Drafting Strategies”

Inventions are intellectual property, which may be turned into cash. One of the ways to profitably exploit inventions is the application of a patent or utility model (The following mainly addresses patents. However, mutatis mutandis, the further considerations also apply to utility models.).The first step is drafting a patent application.

Drafting a patent application is one of the most important and simultaneously one of the most difficult steps on the way to turning an invention into cash. Both in law offices and in industry, patent applications are often drafted by younger and hardly experienced employees.

A patent attorney dealing with infringement litigation or license contracts is often held in higher esteem than he who drafts patent applications. This assessment is economically wrong. Drafting a patent application is as difficult a task as drafting a patent infringement complaint; often it even sets higher requirements on creativity and technical understanding. Generally, a patent application starts on an empty sheet of paper. The finished product, however, is the decisive basis for all further steps of the invention's economic exploitation, from license and know-how contracts to infringement litigation. In contrast, an infringement suit is based on an existing patent, i.e. its basis is defined.

Analogously, this is true for a license agreement.

There is no "perfect patent application". This ideal would require to completely know both the invention with all its conceivable examples and modifications, and the prior art, as well as to have the ability to foresee future developments. This, however, is neither possible, nor is the work affordable to completely optimize a patent application even with regard to only one of said partial aspects. No-one can review the entire relevant prior art of a patent application. It is also impossible to gather and record all variations of an invention and all possible forms of use. Therefore, the present seminar can only communicate approaches for getting closer to this ideal and for avoiding cardinal errors, which will be rued bitterly at the latest when trying to assert the granted patent. This approximation to the optimum can always only be done within the framework given by the company, respectively client, both with regard to the available time and costs.

In this seminar, the legal background against which a patent application is drafted will not be discussed in detail. Explanations of the Patent Act's details can e.g. be found in the relevant literature and are not this seminar's focus. Also, the following explanations should not be understood as being a manual for successfully passing Part A of the Qualifying Examination as representative at the European Patent Office.

Instead, based on the experience of a multitude of infringement procedures and application procedures, this seminar aims to supply detailed hints for obtaining an optimized protection for the inventor's intellectual property with a patent application, considering the limited possible input.

For the purpose of deepening, the following considerations are accompanied by the detailed example “goal keeper glove”. During the seminar, this is to enable the seminar participants to perform the individual steps of drafting the patent application and in particular for wording the independent claims along an invention from the field of simple mechanics. This example is based on an actual patent which is to be asserted against various “copies” of the underlying invention. The comparison between the patent claims drafted by the seminar participants and real embodiments which appeared on the market makes it possible to exemplarily examine the strengths and weaknesses of the chosen claim wordings.

2. First questions

It is a patent application's aim to formulate an individual technical idea or a technical complex of ideas such that the patent application may lead to a maximal protection for the covered invention (or inventions) in each and any country or region of the world. Whether this is actually successful depends on the course of the examination procedure(s), in particular on the prior art. The patent application, however, is the foundation on which all further developments are based (cf. e.g. Art. 123 (2) EPC).

Decades of experience led to the sequence of thoughts and reviews, questions and answers, tests and examinations suggested in the following. Generally, drafting the patent claims and the patent description starts way too early. In particular, it is often overlooked to check whether an application is possible or desirable at all.

2.1 Is it possible to apply?
It is a deadly sin to treat this chapter stepmotherly. Entire companies have been built on foundations of clay since this question's relevant components had not or not sufficiently been examined. In brief: Is it (still) possible at all that the applicant is granted a legally valid patent for the technical idea or complexes of ideas to be protected under a given situation? 

The important first examination, whether legal obstacles make it impossible to obtain a patent, comprises two entirely different complexes:

• Has the invention already been published by the inventor (directly or indirectly)? Is there therefore a lack of novelty or at least unobviousness?
• Is the applicant entitled to apply at all?

The aspects connected to these two complexes will be explained in the following:

Prior publication or prior use

Has the invention been published by the inventor (directly or indirectly)? For every invention, the inventor and - in the best case - also the employees and co-inventors of the inventor have to be asked this question. This is often ignored.

Examples of aspects which absolutely ought to be clarified in the conversation with the inventor(s):

i) Oral or written prior publication
Has the application been published anywhere by the inventor or a third party, both in writing or documents? May it have been published in the inventor's doctor thesis (Protective rights are not seldomly destroyed by such prior publications)? 

Has the invention been published anywhere by the inventor or a third party orally, e.g. in a lecture? Has a manuscript been handed out at this lecture? Is there an older application disclosing the invention?

It is particularly important for the examination of this kind of prior publication that the inventor, respectively his team, are prompted to communicate to the attorney also all such prior publications which are very close to the invention since these are often the closest prior art of the invention. The inventor must never examine on his own whether a prior publication leads to a lack of novelty or is only close to the invention and only relates to the evaluation of the inventive step.