Why You Need A Patent Attorney (Part II)

Posted Friday, February 27, 2015.

As I wrote last time, technically anyone can represent themselves in obtaining a patent. For a variety of reasons, however, this is usually a bad idea. Nevertheless, I see a lot of documents written by individual inventors intended to serve as an application for a patent. And, in every single one I can identify vulnerabilities in the application which will either make it more difficult to persuade an examiner to issue the patent or limit the value of the patent which might eventually issue.

If you look at patents of yesteryear (and pro se inventors – those that attempt to obtain patents on their own – often use such patents as a template), you will often see a section titled “Background,” in which the pro se inventor discusses problems existing with a current product, for example. There may be a discussion of other attempts to solve the problems, and a list of shortcomings of each attempt as determined by the inventor. There are usually also a number of statements which read, “it is an object of the invention to…” followed by a description of an advantageous function of the invention disclosed by the patent application. In fact, the pro se inventor has a tendency to expound in great detail on the problems seen in prior inventions and provide numerous statements of the advantages of the new invention.

It is understandable that a pro se inventor is justifiably proud of the invention and wants to make a strong case to the patent office how much better the invention is than what came before it. That usually results in several paragraphs or pages with discussion of what the inventor labels “prior art” (which later becomes “Applicant-Admitted Prior Art” in prosecution), downsides to the “prior art,” and how the new invention solves the shortcomings. What many do not realize or account for is that such statements become a part of the public record, and are later used in courts during infringement proceedings.

If you write, “it is an object of the invention to …,” then courts are later going to limit use of your invention to exactly that and no more. Remember, the whole reason to have a patent is to be able to prevent others from using the invention while you hold the exclusive right. If a competitor comes out with a product similar to yours, and you want to prevent them from distributing it because you believe it infringes your patent, you will need to go to court to do so. Those statements of advantage you wrote in the patent application are now going to work against you. You can be certain that the accused infringing defendant is going to point to your statement of the object of the invention and twist their own invention to something outside of that.

This scenario played out just last week when the Court of Appeals for the Federal Circuit (CAFC), the appellate court tasked with hearing all patent appeals, issued its opinion in Pacing Technologies, LLC v. Garmin International, Inc. Patentee Pacing Technologies was attempting to assert its patent against Garmin fitness watches. The claims in question recited a system for “pacing a user” including a playback device. Garmin’s accused fitness watch is capable of displaying, for example, “100 steps per minute.”

Pacing Technologies’ patent made a whopping 19 statements of the “it is an object of the invention” variety, for example, “link[ing] the service to athletic training programs customized to meet users’ personal fitness goals,” or “determin[ing] information including, but not limited to, the distance traveled, speed, pace, stride length, and geographic location of the user.” However, none of the 19 statements of “object of the invention” expressly connected the display of the steps per minute with “pacing a user.” The CAFC called this omission a “clear and unmistakable disavowal” of that particular aspect as a part of the patent, and ruled that Garmin therefore did not infringe.

Pacing Tech v. Garmin is merely the latest in a series of cases in which courts have ruled that express statements of advantages in a patent application are admissions that any other advantages which may be present, but weren’t expressly disclosed, are not covered by the patent. One can see that in most instances (and not all – in rare circumstances I might in fact provide the description of prior art and statements of how the invention being disclosed is advantageous), statements like “it is an object of the invention to …” do not belong in the application and are going to cause trouble down the road.

Further, many patent attorneys today refrain from such statements because they provide an examiner the very justification needed to reject the invention as obvious. The most difficult rejection to overcome is an obviousness rejection, where the examiner says it would have been obvious to take previous invention A and combine it with previous invention B to arrive at the applicant’s invention. In writing such a rejection, when explaining why an inventor would have been motivated to combine A and B to solve the problem to which applicant’s invention is directed, the examiner has to look no further than the pro se applicant’s own application which explains the motivation in detail in the Background section.

So, can an inventor prepare an application for a patent and file it pro se? Yes, the patent office will receive it, and an examiner will review the application and contact the applicant with the results of the examination. But is it a good idea for an inventor to prepare the application? No, it’s not a good idea. The individual inventor, without the training and experience that comes from shepherding multiple applications through the patent office, is likely to make crippling admissions in the application which preclude the patent from issuing and/or substantially limit its value if it does issue.

You don’t want to be in a position where you have spent significant time and money obtaining a patent, and then the cost associated with litigating your patent, only to find that the patent doesn’t give you the protection you need because a statement you made in the application left the patent vulnerable. Don’t take a chance with your valuable invention. You need a patent attorney.

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