News
Intellectual Property
Jun. 17, 2002
Protecting Patent Portfolio Requires a Strategic Plan
Focus Column - By Edward Van Gieson - Companies are increasingly recognizing the need to develop a strategic patent portfolio. One important aspect of patent strategy is ensuring that the legal requirement for enablement is met.
Focus Column
By Edward Van Gieson
Companies are increasingly recognizing the need to develop a strategic patent portfolio. One important aspect of patent strategy is ensuring that the legal requirement for enablement is met.
U.S. patent law requires that an applicant include a written description of the invention. 35 U.S.C. Section 112. The written description must support the claims, which define the metes and bounds of legal protection.
Specifically, the written description must disclose how to make and use the claimed invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or which it is most nearly connected, to make and use the same." Section 112. This requirement is commonly known as the "enablement requirement."
Under U.S. law, the applicant must satisfy the enablement requirement at the time that the application is filed. See, e.g., Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367 (Fed. Cir. 1986). The applicant must have a good faith belief that the patent satisfies the enablement requirement at the time of filing. Additionally, the applicant should consider the risk that a court might invalidate one or more claims of the patent for nonenablement during future litigation.
To better understand these strategic issues, consider how a court will review the enablement requirement in a patent lawsuit. The burden is on a defendant seeking to invalidate a patent to prove by clear and convincing evidence that undue experimentation is required to make and use the claimed invention. See, e.g., Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990).
The courts have interpreted the enablement requirement to require that a patent enable "those skilled in the art to make and use the full scope of the claimed invention without 'undue experimentation.'" See, e.g., Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361 (Fed. Cir. 1997).
The Federal Circuit case of In re Wands, 858 F.2d 731 (Fed. Cir. 1988), set forth some of the factors used to determine whether there is undue experimentation. They include the quantity of experimentation necessary, the amount of direction or guidance present in the patent, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims. See, e.g., Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362 (Fed. Cir. 1999).
A company needs to determine how best to meet the enablement requirement while also achieving other business objectives. The patent strategy that a company selects will determine, in large part, the level of effort required to satisfy the enablement requirement.
Consider a hypothetical company deciding between several different patent strategies: "improvement" patents, "pioneer" patents and "crown jewel" patents.
One strategy that a company may use is to file improvement patents for incremental technical improvements over the prior art. Companies commonly file these patents just before or after a product launch such that the patent is directed to present-generation products. An improvement patent strategy is typically backward looking; e.g., the company analyzes the final product design to determine patentable features.
A second strategy is a forward-looking pioneer patent strategy. The objective is to file a patent early enough and with a sufficient description and claims to support broad claims covering a wide range of products. A pioneer patent strategy might include analyzing the market space of a proposed new product or service, determining a patent portfolio protecting the market and filing a patent having claims and a written description sufficient to exclude others from the market.
There are important benefits to filing a pioneer patent early in a product design cycle: It reduces the potential scope of prior art, such as publications and products of competitors, which might limit the scope of the patent. Consequently, some companies file pioneer patents while the invention is still in the late-design or early-prototype phase.
A third strategy is to file a small number of crown-jewel patents designed to cover key aspects of a product, market segment or service, potentially for a number of years. The value of a crown-jewel patent does not necessarily depend on its claim scope. Even a patent with narrow claims can be valuable if the patent is difficult for other companies to design around. Crown-jewel patents that protect multiple product cycles typically are crafted with extraordinary care to increase the likelihood that they will survive litigation.
Each patent portfolio strategy tends to raise its own special enablement issues. One way to analyze these issues is with the Wands factors. Consider an improvement patent. For an incremental improvement patent, there are typically several favorable Wands factors. The claims are likely to be comparatively narrow. The invention probably can be characterized as being only a minor improvement over the prior art, such that one of ordinary skill in the art would be presumed familiar with many elements of its technology.
If the patent is filed close to, or after, product launch, a working example can usually be described in the patent. For such an improvement patent, satisfying the enablement requirement may require comparatively little technical description of each claimed element.
In contrast, consider the case of a pioneer patent filed early in the design cycle, such as 12 months before product launch. For this case, many of the Wands factors are unfavorable. In a pioneer patent, the claims are intended to be broad. It is likely to be for a major technical advance over the prior art. The inventors are likely to have a skill level higher than the industry average. There may be no working examples available at the time of filing. Also, in some cases, a pioneer patent may be in a highly unpredictable art. Thus, for a pioneer patent filed early in the design cycle, greater efforts to clearly, fully, concisely and exactly explain all aspects of the claimed invention are typically warranted.
Finally, consider the case of a crown-jewel patent. A crown-jewel patent may be repeatedly litigated to exclude competitors. However, litigation is filled with uncertainties.
For example, a particular District Court might accept unreasonably pessimistic assumptions on one or more factors, such as the level of ordinary skill in the art. Consequently, for a crown-jewel patent, it is desirable to draft the patent to satisfy the enablement requirement assuming even unreasonably pessimistic assumptions may be used in the Wands factors.
There are, of course, other strategic aspects in crafting patents to satisfy the enablement requirement. A patent portfolio is part of a larger intellectual property strategy that includes trade secrets. Companies have to make a strategic choice in regards to which aspects of their technology are described in their patents and which aspects are preserved as trade secrets.
In some cases, the business objective is to craft a patent portfolio that creates enforceable patents while also preserving as many trade secrets as possible. However, Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001), demonstrates the dangers of not properly considering the enablement requirement when attempting to preserve trade secrets.
In Union Pacific, the claims required comparing information from the borehole and an offset borehole to determine the location of the borehole. The patent did not disclose important details needed to rescale, correlate and compare information from the two boreholes. In particular, the function of a software program used to perform a critical rescaling step was not described in the patent but was instead kept as a trade secret, resulting in the patent being invalidated for nonenablement.
As a final consideration, there is simply no substitute for clear, accurate technical writing. Patent attorneys and inventors need to work together to create as clear a description of the invention as practical given other constraints.
For example, in Crown Operations Int. v. Solutia Inc., 2002 U.S.App.LEXIS 9173 (Fed. Cir. May 13, 2002), the rules of an important algorithm included grammatical ambiguities, and key boundary conditions were not specified. As a result of the "wide range of possibilities" for using the algorithm to calculate an important parameter, the court held that a genuine issue of material fact arose as to whether undue experimentation would be required to make and use the invention.
In summary, a well-planned patent strategy includes considering what steps may be taken to avoid a patent being invalidated for nonenablement. Moreover, the patent strategy may be used to determine the appropriate level of effort required to satisfy the enablement requirement.
Edward Van Gieson is a patent attorney in the Intellectual Property Group of Fenwick & West in Palo Alto. His practice includes strategic development, deployment and enforcement of patents.
By Edward Van Gieson
Companies are increasingly recognizing the need to develop a strategic patent portfolio. One important aspect of patent strategy is ensuring that the legal requirement for enablement is met.
U.S. patent law requires that an applicant include a written description of the invention. 35 U.S.C. Section 112. The written description must support the claims, which define the metes and bounds of legal protection.
Specifically, the written description must disclose how to make and use the claimed invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or which it is most nearly connected, to make and use the same." Section 112. This requirement is commonly known as the "enablement requirement."
Under U.S. law, the applicant must satisfy the enablement requirement at the time that the application is filed. See, e.g., Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367 (Fed. Cir. 1986). The applicant must have a good faith belief that the patent satisfies the enablement requirement at the time of filing. Additionally, the applicant should consider the risk that a court might invalidate one or more claims of the patent for nonenablement during future litigation.
To better understand these strategic issues, consider how a court will review the enablement requirement in a patent lawsuit. The burden is on a defendant seeking to invalidate a patent to prove by clear and convincing evidence that undue experimentation is required to make and use the claimed invention. See, e.g., Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990).
The courts have interpreted the enablement requirement to require that a patent enable "those skilled in the art to make and use the full scope of the claimed invention without 'undue experimentation.'" See, e.g., Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361 (Fed. Cir. 1997).
The Federal Circuit case of In re Wands, 858 F.2d 731 (Fed. Cir. 1988), set forth some of the factors used to determine whether there is undue experimentation. They include the quantity of experimentation necessary, the amount of direction or guidance present in the patent, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims. See, e.g., Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362 (Fed. Cir. 1999).
A company needs to determine how best to meet the enablement requirement while also achieving other business objectives. The patent strategy that a company selects will determine, in large part, the level of effort required to satisfy the enablement requirement.
Consider a hypothetical company deciding between several different patent strategies: "improvement" patents, "pioneer" patents and "crown jewel" patents.
One strategy that a company may use is to file improvement patents for incremental technical improvements over the prior art. Companies commonly file these patents just before or after a product launch such that the patent is directed to present-generation products. An improvement patent strategy is typically backward looking; e.g., the company analyzes the final product design to determine patentable features.
A second strategy is a forward-looking pioneer patent strategy. The objective is to file a patent early enough and with a sufficient description and claims to support broad claims covering a wide range of products. A pioneer patent strategy might include analyzing the market space of a proposed new product or service, determining a patent portfolio protecting the market and filing a patent having claims and a written description sufficient to exclude others from the market.
There are important benefits to filing a pioneer patent early in a product design cycle: It reduces the potential scope of prior art, such as publications and products of competitors, which might limit the scope of the patent. Consequently, some companies file pioneer patents while the invention is still in the late-design or early-prototype phase.
A third strategy is to file a small number of crown-jewel patents designed to cover key aspects of a product, market segment or service, potentially for a number of years. The value of a crown-jewel patent does not necessarily depend on its claim scope. Even a patent with narrow claims can be valuable if the patent is difficult for other companies to design around. Crown-jewel patents that protect multiple product cycles typically are crafted with extraordinary care to increase the likelihood that they will survive litigation.
Each patent portfolio strategy tends to raise its own special enablement issues. One way to analyze these issues is with the Wands factors. Consider an improvement patent. For an incremental improvement patent, there are typically several favorable Wands factors. The claims are likely to be comparatively narrow. The invention probably can be characterized as being only a minor improvement over the prior art, such that one of ordinary skill in the art would be presumed familiar with many elements of its technology.
If the patent is filed close to, or after, product launch, a working example can usually be described in the patent. For such an improvement patent, satisfying the enablement requirement may require comparatively little technical description of each claimed element.
In contrast, consider the case of a pioneer patent filed early in the design cycle, such as 12 months before product launch. For this case, many of the Wands factors are unfavorable. In a pioneer patent, the claims are intended to be broad. It is likely to be for a major technical advance over the prior art. The inventors are likely to have a skill level higher than the industry average. There may be no working examples available at the time of filing. Also, in some cases, a pioneer patent may be in a highly unpredictable art. Thus, for a pioneer patent filed early in the design cycle, greater efforts to clearly, fully, concisely and exactly explain all aspects of the claimed invention are typically warranted.
Finally, consider the case of a crown-jewel patent. A crown-jewel patent may be repeatedly litigated to exclude competitors. However, litigation is filled with uncertainties.
For example, a particular District Court might accept unreasonably pessimistic assumptions on one or more factors, such as the level of ordinary skill in the art. Consequently, for a crown-jewel patent, it is desirable to draft the patent to satisfy the enablement requirement assuming even unreasonably pessimistic assumptions may be used in the Wands factors.
There are, of course, other strategic aspects in crafting patents to satisfy the enablement requirement. A patent portfolio is part of a larger intellectual property strategy that includes trade secrets. Companies have to make a strategic choice in regards to which aspects of their technology are described in their patents and which aspects are preserved as trade secrets.
In some cases, the business objective is to craft a patent portfolio that creates enforceable patents while also preserving as many trade secrets as possible. However, Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001), demonstrates the dangers of not properly considering the enablement requirement when attempting to preserve trade secrets.
In Union Pacific, the claims required comparing information from the borehole and an offset borehole to determine the location of the borehole. The patent did not disclose important details needed to rescale, correlate and compare information from the two boreholes. In particular, the function of a software program used to perform a critical rescaling step was not described in the patent but was instead kept as a trade secret, resulting in the patent being invalidated for nonenablement.
As a final consideration, there is simply no substitute for clear, accurate technical writing. Patent attorneys and inventors need to work together to create as clear a description of the invention as practical given other constraints.
For example, in Crown Operations Int. v. Solutia Inc., 2002 U.S.App.LEXIS 9173 (Fed. Cir. May 13, 2002), the rules of an important algorithm included grammatical ambiguities, and key boundary conditions were not specified. As a result of the "wide range of possibilities" for using the algorithm to calculate an important parameter, the court held that a genuine issue of material fact arose as to whether undue experimentation would be required to make and use the invention.
In summary, a well-planned patent strategy includes considering what steps may be taken to avoid a patent being invalidated for nonenablement. Moreover, the patent strategy may be used to determine the appropriate level of effort required to satisfy the enablement requirement.
Edward Van Gieson is a patent attorney in the Intellectual Property Group of Fenwick & West in Palo Alto. His practice includes strategic development, deployment and enforcement of patents.
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