What Does It Mean for a Patent to Be Defined as ‘Quality’?
Posted on Jan 28, 2015 in Articles
This article originally appeared in the January 28, 2015 edition of The Legal Intelligencer.
Ask any client what he or she expects from the lawyers who are handling his or her work, and invariably the answer you receive is that the work must possess “quality.” Everyone wants to know that when they purchase legal services, they will get quality in return. But in the patent realm, what does it mean for a patent to have quality?
The U.S. Patent and Trademark Office has explained that a patent has quality when the patent meets the statutory requirements of patentability. That, however, is only part of the story because in addition to meeting the statutory requirements, a patent should be drafted with claims that can be successfully asserted against a potential infringer. That may not be an easy goal to accomplish. Yet, that is the objective that should be sought when obtaining patent protection.
Meeting the Statutory Requirements
It may be surprising to many, but not all patents meet the statutory requirements of patentability. How is that possible? It is because the process of granting a patent is far from perfect. As a result, when a patent is litigated, the validity of the patent is typically called into question, and if the court finds that the statutory requirements of patentability have not been met, then the patent is deemed invalid and unenforceable.
One of the statutory requirements of patentability is that the invention needs to be new or “novel” (i.e., not previously disclosed by another person). Another statutory requirement is that the invention must not be “obvious” (i.e., again, based on what another person has disclosed). Patent Office examiners try to determine whether these statutory requirements have been met by scouring databases and publications (such as issued patents, published patent applications and journal articles) in a process called “performing a search.” Their goal is to try to find evidence that someone else has already disclosed the invention described in the patent application being examined. If the search does not find a publication similar to what the applicant is trying to patent, then the examiner concludes that the invention is novel and not obvious.
Searching through references to find evidence of whether an invention has been “done before” can be challenging. Some evidence may be difficult to find because it was published in a foreign country, published in a foreign language, or simply obscure because distribution of the publication was limited. Sometimes an important reference will be missed because of the choice of keywords used during a database search. Other times, an examiner may not have a good understanding of the invention, and as a result, may not adequately perform the search.
Examiners are also under time pressure and typically have substantial backlogs of patent applications that need to be examined. As a result, there are limits to the amount of time examiners can devote to performing a search.
Thus, a patent’s quality depends (in part) on how well the search was performed. All patents have searches performed on filed applications, but patents have better quality when the search is more comprehensive and accurate. The better the search, the higher the quality of the patent.
When applying for a patent, the patent applicant (and his or her attorney) can take steps to help the examiner perform a good search. If the patent application is written in a way that makes the invention easy to comprehend, the examiner will have a better understanding of how to perform his or her search and what publications may be relevant to the decision to pass the application to grant. Patent applicants also have the ability to provide the examiner with evidence (including publications) that they believe is “material” to the decision to grant the patent; in fact, applicants are required to disclose any reference that they believe is material to patentability. As patents are presumed valid in view of any reference considered by an examiner, furnishing that reference to the examiner actually makes the patent stronger.
The USPTO confirms whether other statutory requirements have been satisfied as well, such as whether the patent is being sought for patent-eligible subject matter, and whether the patent claims are clear.
Many commentators have suggested that the USPTO needs to do a better job examining patent applications. They argue that improved examination quality will lead to improved patent quality. They are right—to an extent. Certainly, one way to gauge the quality of a patent is based on the extent to which the patent satisfies the statutory requirements of patentability. And certainly, the better the examination, the higher the probability that the statutory requirements for patentability have been satisfied. That, however, is only part of the story.
Another difference between a patent and a quality patent lies in the skills of the attorney drafting the claims at the end of the patent. Claims describe with tremendous precision the invention that is protected by the patent. How the claim is drafted, however, completely controls whether and how the patent may be asserted. The ability to articulate what the invention actually is, using claim language, requires significant experience, as well as an understanding of the invention from multiple perspectives. It is important to identify the perspectives that would optimize assertion of the patent rights being sought, and to then capture those perspectives in the claims. A patent includes claims that describe an invention. A quality patent includes claims that describe an invention with an eye toward assertion of the claims (in a possible infringement suit). It may be useful to illustrate this concept with a real-world example.
In 1999, Amazon was granted a patent on its 1-Click checkout feature. The 1-Click feature allows a person using Amazon’s website to complete a purchase with, as the name implies, one mouse click. As the shipping and payment options have been prestored using Amazon’s website, a buyer simply hits the 1-Click button next to an item and, without any further action on the buyer’s part, the product is paid for and shipped.
An experienced attorney will see the 1-Click feature from different perspectives, and he or she will typically write patent claims that protect the 1-Click feature from each of those perspectives. The Amazon 1-Click patent indeed protects the Amazon 1-Click feature from several carefully identified perspectives in order to impart quality to the patent.
For example, the 1-Click feature can be understood to be a method (i.e., performing certain steps in order to accomplish a 1-Click purchase). Alternatively, the 1-Click feature can be understood to be an apparatus (i.e., a computer that implements the 1-Click feature). As another example, the 1-Click feature can be described from the perspective of the customer placing the order (i.e., with only a single click, a customer buys a product). Alternatively, the 1-Click feature can be described from Amazon’s perspective (i.e., Amazon sells a product after receiving instructions with only one click). The Amazon patent has quality because of the multitude of perspectives with which the claims have been drafted. The multiple perspective claims imbue the patent with quality by enhancing opportunities for enforcement of the patent.
While patent quality is important, patent quality should not be confused with patent value. Patent value is based on what a patent is worth, or to what extent the patent is (or could be) monetized, and while the quality of the patent can affect its value, the quality can also be irrelevant to its value. If tomorrow an inventor convinced the USPTO to grant a patent covering a technology relating to VHS video or 8-track tapes, the patent would not have any value because there is no market for the product that it would cover. Patent value comes down to its monetary value, whether as a result of selling and profiting from a product or process that others are precluded from (by virtue of the patent), selling or licensing the patent rights, increasing the value of the business that owns the patent, recovering damages in a patent infringement suit, etc. The patent may absolutely satisfy the statutory requirements of patentability, and it may include great claims, but if it has no ability to generate revenue then it has no value.
Beauty is in the eye of the beholder—and quality is as well. Quality will not provide a revenue stream for an invention when no market exists. If the underlying idea has value, however, improving the quality of the patent will result in numerous advantages, including expedited licensing and facilitated enforcement. Understanding what imparts quality to a patent helps to understand how to obtain these advantages.
– by Lawrence Ashery