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C H A P T E R S I X T E E N
Patents and Intellectual Property

EXHIBIT 16-1
Hot beverage insulating sleeve by David W. Coffin Sr. (U.S. Patent 5,205,473).

331

David Coffin, an individual inventor, developed a product concept and prototype for an insulating sleeve that would make a hot beverage cup more comfortable to hold (Exhibit 16-1). The product opportunity arose in the 1980s after many food vendors had aban- doned polystyrene foam hot beverage cups in favor of paper cups. The inventor was in- terested in commercialization and/or licensing his invention and sought protection of the intellectual property that he had created. This chapter provides an overview of intel- lectual property in the context of product development and provides specific guidance for preparing an invention disclosure or provisional patent application.

Within the context of product development, the term intellectual property refers to the legally protectable ideas, concepts, names, designs, and processes associated with a new product. Intellectual property can be one of the most valuable assets of firms. Unlike physical property, intellectual property cannot be secured with lock and key to prevent its unwanted transfer. Therefore, legal mechanisms have been developed to protect the rights of intellectual property owners. These mechanisms are intended to provide an incentive and reward to those who create new useful inventions, while at the same time encourag- ing the dissemination of information for the long-run benefit of society.

What Is Intellectual Property?
Four types of intellectual property are relevant to product design and development. Exhibit 16-2 presents a taxonomy of types of intellectual property. Although some areas overlap, and all four types of intellectual property may be present in a single product, a particular invention usually falls into one of these categories.

· Patent: A patent is a temporary monopoly granted by a government to an inventor to exclude others from using an invention. In the United States, a patent expires 20 years from the filing date. Most of the balance of this chapter focuses on patents.

· Trademark: A trademark is an exclusive right granted by a government to a trademark owner to use a specific name or symbol in association with a class of products or services. In the context of product development, trademarks are typically brands or product names. For example, JavaJacket is a trademark for an insulated cup holder, and companies other than Java Jacket, Inc., may not make unauthorized use of the word JavaJacket to refer to their own cup-holder products. In the United States, registration of a trademark is possible, but not strictly necessary to preserve the trademark rights. In most other countries, the rights of a trademark are gained through registration.

· Trade secret: A trade secret is information used in a trade or business that offers its owner a competitive advantage and that can be kept secret. A trade secret is not a right conferred by a government but is the result of vigilance on the part of an organization in preventing the dissemination of its proprietary information. Perhaps the most fa- mous trade secret is the formula for the beverage Coca-Cola.

· Copyright: A copyright is an exclusive right granted by a government to copy and distribute an original work of expression, whether literature, graphics, music, art, en- tertainment, or software. Registration of a copyright is possible but not necessary. A copyright comes into being upon the first tangible expression of the work and lasts for up to 95 years.

( 332 Chapter 16 )

( Patents and Intellectual Property 333 )

( Intellectual Property Patents Utility Patents Design Patents Plant Patents Trademarks Copyright Trade Secret )

( 21 )24

2

Fig 10

200

1. Useful

2. Novel

3. Nonobvious

Ornamental Design Only

New Plant

Word or Symbol

Original Work of Expression

Proprietary and Useful

( requires formal application ) ( may be registered, but not necessary ) ( not registered )

EXHIBIT 16-2 Taxonomy of types of intellectual property relevant to product design and development.

This chapter focuses on patents. Appendix A to this chapter briefly discusses trademarks. We do not devote substantial attention here to copyrights and trade secrets, but several references to other resources appear at the end of the chapter.

Overview of Patents
For most engineered goods, two basic types of patents are relevant: design patents and utility patents. (A third type of patent covers plants.) Design patents provide the legal right to exclude someone from producing and selling a product with the identical or- namental design described by the design patent. A design patent can be thought of as a “copyright” for the ornamental design of a product. Because design patents must be lim- ited to ornamental design, for most engineered goods, design patents are of very limited value. For this reason, the chapter focuses further on utility patents.

Patent law in most of the world evolved from English law and so patent laws in differ- ent countries are somewhat similar. This chapter uses U.S. law as a reference point, and so readers with intentions to obtain patents in other countries should carefully investigate the laws in those countries.

Utility Patents
United States law allows for patenting of an invention that relates to a new process, ma- chine, article of manufacture, composition of matter, or a new and useful improvement of one of these things. Fortunately, these categories include almost all inventions embodied by new products. Note that inventions embodied in software are sometimes patented, but usually the invention is described as a process or machine. Exhibit 16-3 shows the first page of a patent for the insulating sleeve invented by Coffin.

In addition, the law requires that patented inventions be:

· Useful: The patented invention must be useful to someone in some context.

· Novel: Novel inventions are those that are not known publicly and therefore are not evident in existing products, publications, or prior patents. The definition of novelty re- lates to disclosures of the actual invention to be patented as well. In the United States, an invention to be patented must not have been revealed to the public more than a year before the patent is filed.

· Nonobvious: Patent law defines obvious inventions as those that would be clearly evi- dent to those with “ordinary skill in the art” who faced the same problem as the inventor.

Usefulness is rarely a hurdle to obtaining a patent. However, the requirements that an invention be novel and nonobvious are the most common barriers to obtaining a patent.

About two-thirds of applications filed for patents result in issued patents. However, an issued patent is not necessarily valid. A patent may be challenged in a government court by a competitor at some point in the future. The validity of a patent is determined by, among other factors, the adequacy of the description in the patent and the novelty of the invention relative to the prior art. A tiny fraction of patents—a few hundred per year in the United States—are ever challenged in court. Of those challenged in recent years, just over half have been found to be valid.

An inventor associated with a patent is a person who actually created the invention individually or in collaboration with other inventors. In some cases the inventor is also the owner of the intellectual property. However, in most cases, the patent is assigned to some other entity, usually the inventor’s employer. The actual intellectual property rights associ- ated with a patent belong to the owner of the patent and not necessarily to the inventor. (Appendix B to this chapter provides some advice to individual inventors interested in commercializing their inventions.)

A patent owner has the right to exclude others from using, making, selling, or import- ing an infringing product. This is an offensive right, which requires that the patent owner sue the infringer. There are also defensive rights associated with patents. Any invention described in a patent, whether part of the claimed invention or not, is considered by the legal system to be known publicly and forms part of the prior art. This disclosure is a de- fensive act blocking a competitor from patenting the disclosed invention.

Preparing a Disclosure
This chapter is focused on a process for preparing an invention disclosure—in essence a detailed description of an invention. This disclosure will be in the form of a patent appli- cation, which can serve as a provisional patent application and with relatively little addi- tional work could be a regular patent application. It is possible, even typical, for a patent

United States Patent [19] [11] Patent Number: 5,205,473

Coffin, Sr. [45] Date of Patent: Apr. 27, 1993

[54] RECYCLABLE CORRUGATED BEVERAGE CONTAINER AND HOLDER

[75] Inventor: David W. Coffin, Sr., Fayetteville, N.Y.

2,969,901 1/1961 Behrens . . . . . . . . . . . . .229/1.3 B

3,237,834 3/1966 Davis et al.. . . . . . . . . . .229/1.3 B

3,779,157 12/1973 Ross, Jr. et al. . . . . . . . . . . 53/527

( [73] Assignee: Design By Us Company, Philadelphia, Pa. 3,890,762 6/1975 Ernst et al. [21] Appl. No.: 854,425 3,908,523 9/1975 Shikays . . . . . . . . . . . . .229/1.5 B [22] Filed: Mar. 19, 1992 4,080,880 3/1978 Shikay . . . . . . . . . . . . . . . 493/296 4,146,660 3/1979 Hall et al. [51] Int. Cl.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .B65D 3/28 4,176,034 11/1979 Kelley. . . . . . . . . . . . . . . . . . 209/8 [52] U.S. CI. . . . . . . . . . . . . . . .229/1.5 B; 206/813; 220/441; 5,009,326 4/1991 Reaves et al. 220/DIG. 30; 229/1.5 H; 229/DIG. 2; 493/296;493/907 5,092,485 3/1992 Lee. . . . . . . . . . . . . . . . .229/1.3 B )3,785,254 1/1974 Mann

[38] Field of Search . . . . . 229/1.5 B, 1.3 H, 4.5, 229/DIG. 2;

220/441, 671, 737–739, DIG. 30; 493/287,

296, 907, 908; 209/8, 47, 215; 206/813

[56] References Cited

U.S. PATENT DOCUMENTS

1,732,322 10/1929 Wilson et al. . . . . . . 220/DIG. 30

1,771,765 7/1930 Benson. . . . . . . . . . . . . . . 229/4.5

OTHER PUBLICATIONS

“The Wiley Encyclopedia of Packaging Technology”, John Wiley & Sons, pp. 66-69, 1986.

Primary Examiner—Gary E. Elkins

Attorney, Agent, or Firm—Synnestvedt & Lochner

[57] ABSTRACT

2,266,828

12/1941

Sykes . . . . . . . . . . . . . . .229/1.5 B

Corrugated beverage containers and holders are which

2,300,473

11/1942

Winkle . . . . . . . . . . . . . . . 229/4.5

employ recyclable materials, but provide fluting structures

2,503,815

3/1950

Harman

for containing insulating air. These products are easy to

2,617,549

11/1952

Egger

hold and have a lesser impact on the environment than

2,641,402

6/1953

Bruun . . . . . . . . . . . . . . . 229/4.5

polystyrene containers.

2,661,889

12/1953

Phinney . . . . . . . . . . . . . . 229/4.5

18 Claims, 8 Drawing Sheets

( 1 11 100 12 )4
EXHIBIT 16-3 The first page of U.S. Patent 5,205,473.

attorney to do much of the work described in the chapter. However, our belief is that hav- ing the inventor draft a detailed disclosure is the best way to communicate the inventor’s knowledge, even though in most cases a patent attorney will revise the disclosure to prepare the formal patent application. Although many readers will be able to complete a provisional patent application from the guidance provided here, this chapter is not a sub- stitute for competent legal advice. Inventors pursuing serious commercial opportunities should consult with a patent attorney after preparing their disclosure.

The steps in the process are:

1. Formulate a strategy and plan.

2. Study prior inventions.

3. Outline claims.

4. Write the description of the invention.

5. Refine claims.

6. Pursue application.

7. Reflect on the results and the process.

Step 1: Formulate a Strategy and Plan
In formulating a patent strategy and plan, a product development team must decide on the timing of the filing of a patent application, the type of application to be filed, and the scope of the application.

Timing of Patent Applications
Legally, a U.S. patent application must be filed within one year of the first public disclo- sure of an invention. In much of the rest of the world, a patent must be filed before any public disclosure or within one year of filing a U.S. application, so long as the U.S. appli- cation is filed before public disclosure. In most cases, public disclosure is a description of the invention to an individual or group of people who are not obligated to keep the inven- tion confidential. Examples of such disclosure include: publication of invention details in a magazine or journal, presentation of a product at a trade show, display of the invention on a publicly accessible Web site, or test marketing of a product. (Most experts agree that a student’s class presentation of an invention is not public disclosure, as long as the class members have agreed to preserve the confidentiality of the invention and as long as mem- bers of the general public are not present.) We strongly recommend that inventors file pat- ent applications before any public disclosure. This action ensures that the option to file an international patent is preserved for one year. Fortunately, a provisional patent application may be filed at relatively little expense to preserve these rights.

Although we recommend that filing precede public disclosure, the inventor usually benefits by delaying the application until just before such disclosure. The principal advantage to waiting as long as possible is that the inventor has as much knowledge as possible about the invention and its commercialization. Very often what the inventor be- lieves are the key features of an invention early in the innovation process turn out to be less important than refinements developed later in the innovation process. By waiting, the inventor can ensure that the most important elements of the invention are captured in the patent application.

The U.S. patent system grants priority among competing patent applications based on the date of invention, whereas the patent systems in much of the rest of the world grant priority based on the date of the patent application. Therefore, in the United States, inventors should carefully document the date of their inventions. This is best done by describing an invention in a bound notebook and then having a witness sign and date each page.

Type of Application
A team faces two basic choices about the type of patent application to be pursued. First, the team must decide whether to file a regular patent application or a provisional patent appli- cation. Second, the team must decide whether to pursue domestic and/or foreign patents.

A regular patent application was the only option available to an inventor in the United States until substantial changes were made to patent law in 1995. Under current U.S. patent law, an inventor may file a provisional patent application. A provisional patent application needs only to fully describe the invention. It does not need to contain claims or comply with the formal structure and language of a regular patent application. The principal advantage of a provisional patent application is that it requires less cost and effort to prepare and file than a regular patent application, but it preserves all options to pursue further patent filings for a period of one year. Once a provisional patent application has been filed, a company may label its products “patent pending,” and it retains the right to file a foreign patent applica- tion and/or a regular patent application. The only fundamental disadvantage of a provisional patent application is that it delays the eventual issuance of a patent by up to one year, as the process of examining a patent application does not begin until a regular patent application is filed. Another possible disadvantage is that the preliminary nature of a provisional pat- ent application may lead to the use of less care in preparing the description of the invention than might be the case with a regular application. The description of the invention must be complete in a provisional patent application, and the regular patent application that follows cannot contain features that were not described in the provisional application.

Filing patents internationally is expensive and somewhat complex. The team should therefore consult with a patent professional about international patent strategy, as patent law varies somewhat from country to country. To obtain foreign patent rights, an applica- tion must eventually be filed in each country in which a patent is sought. (The European Community, however, acts as a single entity with respect to patent filing.) Foreign ap- plications can be expensive, costing up to $15,000 per country for filing fees, translation fees, and patent agent fees.

The expense of filing for foreign patents can be delayed, generally by 30 months, by filing a Patent Cooperation Treaty (PCT) application. A PCT application is filed in one country (e.g., the United States) but is designated as a PCT application, which is the beginning of a process by which foreign patents can be pursued. A PCT application costs only slightly more than a regular patent application in filing fees, but it allows for a substantial delay before application fees must be paid in the countries in which foreign patents are sought.

The provisional patent application and the PCT application together provide a vehicle for a small company or individual inventor to preserve most patent rights with relatively little cost. A typical strategy is to file a provisional patent application before any public disclosure of the invention; then, within one year, to file a PCT application with the U.S. patent office; then, when forced to act or abandon the application at some point in the

future (usually a year or more away), to pursue actual foreign applications. This strategy allows a delay of two or more years before substantial legal and application fees must be paid. During this period, the team can assess the true commercial potential of the products embodying the invention and can estimate the value of more extensive patent protection.

Scope of Application
The team should evaluate the overall product design and decide which elements embody inventions that are likely to be patentable. Typically the process of reviewing the product design will result in a list of elements that the team considers to be novel and nonobvious. The team should focus on those elements that present substantial barriers to competition, which are typically the elements that in the opinion of the team represent a substantial im- provement over the publicly known methods of addressing similar problems.

Complex products often embody several inventions. For example, a printer may em- body novel signal processing methods and novel paper handling techniques. Sometimes these inventions fall into very different classes within the patent system. As a result, a product development team may need to file multiple applications corresponding to the distinct classes of invention. For simple products or for products that embody a single type of invention, a single patent application usually suffices. The decision about whether to divide an application into multiple parts is complex and is best made in consultation with a patent attorney. However, all intellectual property rights are preserved even if a patent application is filed that contains multiple classes of inventions. In such cases, the patent office will inform the inventor that the application must be divided.

While defining the scope of the patent, the team should also consider who the inven- tors are. An inventor is a person who contributed substantially to the creation of the invention. The definition of an inventor for the purposes of patent law is subjective. For example, a technician who only ran experiments would not typically be an inventor, but a technician who ran experiments and then devised a solution to an observed problem with the device could be considered an inventor. There is no limit to the number of inventors named in a patent application. We believe that product development and invention are most often team efforts and that many members of the team who participated in concept generation and the subsequent design activities could be considered inventors. Failing to name a person who is an inventor can result in a patent being declared not valid.

Step 2: Study Prior Inventions
There are three key reasons for studying prior inventions, the so-called prior art. First, by studying the prior patent literature, design teams can learn whether an invention may infringe on existing unexpired patents. Although there is no legal barrier to patenting an invention that infringes on an existing patent, if anyone manufactures, sells, or uses a product that infringes upon an existing patent without a license, the patent owner may sue for damages. Second, by studying the prior art, the inventors get a sense of how similar their invention is to prior inventions and therefore how likely they are to be granted a broad patent. Third, the team will develop background knowledge enabling the members to craft novel claims.

In the course of product development efforts, most teams accumulate a variety of refer- ences to prior inventions. Some of the sources of information on prior inventions include:

· Existing and historical product literature.

· Patent searches.

· Technical and trade publications.

Several good online reference sources can be used for searching patents. Simple keyword searches are often sufficient to find most relevant patents. It is important for the team to keep a file containing the prior art they are aware of. This information must be provided to the patent office shortly after filing the patent application.

In the Coffin patent for the cup holder shown in Exhibit 16-1, references to 19 other

U.S. patents are cited along with a reference to a book. (The references cited by the inven- tor and by the patent examiner are listed on the first page of a patent. The first page of the Coffin patent is reproduced as Exhibit 16-3.) Among the prior art for the Coffin patent, for example, is a 1930 patent by Benson (1,771,765; “Waterproof Paper Receptacle”) in which a corrugated holder insulates a paper liner cup. The Benson patent describes a cup holder that fits underneath and into the bottom of the liner cup. This is one reason that the inven- tion in the Coffin patent is described as a tube with an opening at the top and bottom.

Step 3: Outline Claims
Issuance of a patent gives the owner a legal right to exclude others from infringing on the invention specifically described in the patent’s claims. Claims describe certain char- acteristics of the invention; they are written in formal legal language and must adhere to some rules of composition. In step 5 we describe how the formal legal language works. However, at this point in the process of preparing the disclosure, the team benefits from thinking carefully about what it believes is unique about the invention. We therefore rec- ommend that the team outline the claims. Don’t worry about legal precision at this point. Instead, make a list of the features and characteristics of the invention that the team be- lieves are unique and valuable. For example, an outline of the claims for the Coffin inven- tion might be:

· Use of corrugations as insulation, in many possible forms

· Corrugations on the inside surface of the tube

· Corrugations on the outside surface of the tube

· Corrugations sandwiched between two flat layers of sheet material

· Vertical orientation of flutes

· Flutes open at top and bottom of holder

· Corrugations with “triangle wave” cross section

· Corrugations with “sine wave” cross section

· Tubular form with openings at both ends

· In shape of truncated cone

· Recyclable materials

· Recyclable adhesive

· Recyclable sheeting

· Cellulose material

· Biodegradable adhesive

· Surface to print on

· Holder folds flat along two fold lines

The outline of the claims provides guidance about what must be described in detail in the description.

Step 4: Write the Description of the Invention
The bulk of a patent application is formally known as the specification. To avoid confu- sion with our use of the word specifications in this book, we call the body of the patent application the description because this is the part of the application that actually de- scribes the invention. The description must present the invention in enough detail that someone with “ordinary skill in the art” (i.e., someone with the skills and capabilities of a typical practitioner working in the same basic field as the invention) could implement the invention. The description should also be a marketing document promoting the value of the invention and the weaknesses in existing solutions. The patent application will be read by a patent examiner, who will search and study prior patents. The description must convince the examiner that the inventors developed something useful that is different from existing inventions and that is nonobvious. In these respects one can think of the description as essentially a technical report on the invention. There are some formatting conventions for patent applications, although these are not strictly necessary for an inven- tion disclosure or a provisional patent application.

Patent law requires that the application “teach” with sufficient detail that someone “skilled in the art” could practice the invention. For example, in the Coffin patent, the inventor discloses that the adhesive to bond the flutes is “a recyclable, and preferably a biodegradable adhesive, for example, R130 adhesive by Fasson Inc., Grand Rapids, MI.” The requirement to completely teach the invention may be somewhat counterintuitive for someone accustomed to treating inventions confidentially. Patent law requires that inventors disclose what they know about the invention, but in exchange they are granted the right to exclude others from practicing the invention for a limited time period. This requirement reflects the basic tension in the patent system between granting a temporary monopoly to inventors in exchange for publication of information that will eventually be available for use by anyone.

A typical description includes the following elements:

· Title: Provide a short descriptive label for the invention, for example, “Recyclable Corrugated Beverage Container and Holder.”

· List of inventors: All inventors must be listed. A person should be listed as an inventor if he or she originated any of the inventions claimed in the application. There are no legal limits to the number of inventors and no requirements about the order in which inventors are listed. A failure to list an inventor could result in a patent eventually being declared not valid.

· Field of the invention: Explain what type of device, product, machine, or method this invention relates to. For example, the Coffin patent reads, “This invention relates to in- sulating containers, and especially to those which are recyclable and made of cellulosic materials.”

· Background of the invention: State the problem that the invention solves. Explain the context for the problem, what is wrong with existing solutions, why a new solution is needed, and what advantages are offered by the invention.

· Summary of the invention: This section should present the substance of the invention in summarized form. The summary may point out the advantages of the invention and how it solves the problems described in the background.

· Brief description of the drawings: List the figures in the description along with a brief description of each drawing. For example, “Figure 10 is a perspective view of a pre- ferred embodiment illustrating internal flute portions in breakaway views.”

· Detailed description of the invention: This section of the description is usually the most comprehensive and contains detailed descriptions of embodiments of the inven- tion along with an explanation of how these embodiments work. Further discussion of the detailed description is provided below.

Figures
Formal figures for patents must comply with a variety of rules about labeling, line weight, and types of graphical elements. However, for an invention disclosure or provisional pat- ent application, informal figures are sufficient and hand sketches or CAD drawings are perfectly appropriate. At some point after filing a regular patent application, the patent office will request formal figures, at which time a professional drafter may be hired to pre- pare formal versions of the necessary figures. Prepare enough figures to clearly show the key elements of the invention in the preferred embodiments that have been considered. A simple invention like the cup holder would probably require 5 to 15 figures.

The features shown in the figures may be labeled with words (e.g., “outer layer”), although to facilitate preparation of a regular patent application, the team may wish to use “reference numerals” on the figures right from the beginning. No rule stipulates that reference numerals must be uninterrupted and consecutive, so a convenient num- bering scheme uses reference numerals 10, 11, 12, and so on, for features that first appear in Figure 1; reference numerals 20, 21, 22, and so on, for features that first ap- pear in Figure 2; and so on. This way adding numerals to one figure does not influence the use of numerals in another figure. The same feature shown in more than one figure must be labeled with the same reference numeral, so some numerals will be carried over from one figure to another.

Writing the Detailed Description
The detailed description describes embodiments of the invention. An embodiment is a physical realization of the claimed invention. Patent law requires that the application de- scribe the preferred embodiment—that is, the best way of practicing the invention. Typi- cally, a detailed description is organized as a collection of paragraphs, each describing an embodiment of the invention in terms of its physical structure along with an explanation of how that embodiment works.

A good strategy for writing the detailed description is to first create the figures that show embodiments of the invention. Next describe the embodiment by labeling each feature of the embodiment in the figure and explaining the arrangement of these features. Finally, ex- plain how the embodiment works and why the features are important to this function. This process is repeated for each of the embodiments described in the detailed description.

( 24 21 )EXHIBIT 16-4
Figure 10

from the Coffin patent.

200
22

FIG. 10

Consider Figure 10 from the Coffin patent, shown here as Exhibit 16-4. A detailed de- scription might include language like the following:

A preferred embodiment of the invention is shown in Figure 10. A liner surface 22 and an outer surface 24 sandwich a corrugation 21. The assembly 200 forms a tubular shape whose diameter changes linearly with length so as to form a section of a truncated cone. The smooth outer surface 24 provides a smooth surface onto which graphics may be printed. Corrugation 21 is bonded to outer surface 24 and liner surface 22 with a recyclable adhesive.

The detailed description should show alternative embodiments of the invention. For ex- ample, in the Coffin patent, the invention features “flutes” that create an insulating air gap. In a preferred embodiment these flutes are formed by smooth wavy corrugations, with the smooth surface on the outside to allow for graphics to be easily printed on the sleeve. Alternative embodiments include triangle waves and/or sheet materials on either or both sides of the tube. These alternative embodiments are described in the detailed de- scription and shown in the figures. (See Exhibit 16-5.)

Defensive Disclosure
The primary benefit of a patent is that it grants the owner offensive rights. That is, the owner has the right to prevent others from practicing the invention. However, patents also offer a subtle mechanism for taking defensive actions. A patent is considered prior art and so an invention that appears in a patent may not be patented in the future. For this reason, inventors

EXHIBIT 16-5
Figures 6a, 6b, 7a, and 7b from the Coffin patent showing alternative

embodiments of the invention.

11

( 12 )

Fig. 6a

( 24 21 22 )

Fig. 6b

( 31 32 ) ( 44 41 42 )

Fig. 7a Fig. 7b
may benefit from disclosing essentially every invention they considered that relates to the claimed invention no matter how wide ranging. This may be done in the detailed description. Even though these inventions may not actually be reflected in the claims of the patent, their disclosure becomes part of the prior art and therefore prevents others from patenting them. This defensive strategy may offer competitive advantages in fields of emerging technologies.

Step 5: Refine Claims
The claims are a set of numbered phrases that precisely define the essential elements of the invention. The claims are the basis for all offensive patent rights. A patent owner can prevent others from practicing the invention described by the claims only. The rest of the patent application is essentially background and context for the claims.

Writing the Claims
Although claims must be expressed verbally, they adhere to a strict mathematical logic. Almost all claims are formulated as a recursive expression of the form

X = A + B + C . . . , where A = u + v + w . . . , B = . . .

This is expressed verbally as:

An X comprising an A, a B, and a C, wherein said A is comprised of a u, a v, and a w and wherein said B is . . .

Note that claims comply with some verbal conventions. The word comprising means “in- cluding but not limited to” and is almost always used as the equal sign in the expression. The first time an element, say a liner sheet, is named in a claim the inventor uses the indefi- nite article a as in “comprises a liner sheet.” Once this element has been named it is never referred to as the liner sheet, but always as said liner sheet. This is true for every subse- quent instance in which liner sheet is used in the claims. Although these conventions are

not difficult to remember once learned, inventors preparing a disclosure for subsequent editing by a patent attorney should not worry too much about formal correctness of the lan- guage. The language is easily corrected when the formal patent application is prepared.

Multiple claims are arranged hierarchically into independent claims and dependent claims. Independent claims stand alone and form the root nodes of a hierarchy of claims. Dependent claims always add further restrictions to an independent claim. Dependent claims are typically written in this form:

The invention of Claim N, further comprising Q, R, and S . . .

or

The invention of Claim N, wherein said A . . .

Dependent claims essentially inherit all of the properties of the independent claim on which they depend. In fact, a dependent claim can be read as if all of the language of the independent claim on which it depends were inserted as a replacement for the introduc- tory phrase “The invention of Claim N.”

The dependent claims are important in that the patent office may reject the indepen- dent claim as obvious or not novel while allowing one or more dependent claims. In such cases, patentable material remains; the original independent claim can be deleted and the original dependent claim can be rewritten as an independent claim.

The elements of a claim form a logical and relationship. To infringe on a claim, a device must include each and every element named in the claim. If, for example, a com- petitive product were to use only three of four elements named in a claim, it would not infringe on the claim.

Consider this example from the Coffin patent (edited slightly for clarity).

Claim 1

A beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recyclable adhesive.

Claim 1 is an independent claim. Consider Claim 2, which is dependent on Claim 1.

Claim 2

The holder of claim 1, wherein said tubular member further comprises a second opening wherein said first opening and said second opening are of unequal cross-sectional dimensions.

This claim adheres to the logical structure shown in Exhibit 16-6.

Let us reinforce the idea that a claim is formed of a logical “and” relation among its elements. Claim 1 is for a holder that includes all of these elements:

· Corrugated tube

· Made of cellulosic material

· With a first opening

· With fluting means

· Made of flutes adhesively attached to a liner

· Using recyclable adhesive

( Claim 1 unequal cross sections Claim 2 bond recyclable adhesive second opening liner flutes fluting means first opening cellulosic material corrugated tube holder )EXHIBIT 16-6
The logical structure of Claims 1 and 2 from the Coffin patent. Note that Claim 2

is dependent on Claim 1 and simply adds further restrictions, a second opening and

a relationship between the first and second openings.

If a competing cup holder does not have every one of these elements, it does not infringe upon this claim. So, for example, if it were made of polystyrene, it would not infringe on this claim (no cellulosic material). Consider a patent by Jay Sorensen filed shortly after the Cof- fin patent. Sorensen’s patent is for a cup holder with a dimpled surface. (See Exhibit 16-7.) Because this invention does not have “fluting means” it does not infringe upon the Coffin patent. Sorensen’s claims include the following (edited slightly for clarity):

Claim 4

A cup holder comprising a band of material formed with an open top and an open bottom through which a cup can extend and an inner surface immediately adjacent to said cup, said band comprising a plurality of discrete, spaced-apart, approximately semi-spherically shaped depressions distributed on substantially the entire inner surface of said band so that each depression defines a non-contacting region of said band creating an air gap between said band and said cup, thereby reducing the rate of heat transfer through said holder.

At least two lessons can be derived from comparing the Coffin and Sorensen inven- tions. First, patents often provide relatively limited commercial advantages. In this case, by creating a cup holder with dimples instead of flutes, Sorensen was able to avoid in- fringing on the Coffin patent. In fact, both inventions are embodied by successful com- mercial products, but neither patent provides ironclad protection from competition. The second lesson is that the inventor should invest in considering as many ways as possible to achieve the desired function of the invention, in this case an insulating layer. Had Cof- fin thought of a dimpled surface, then this feature could have been described in his patent application. In the best case, the dimpled invention may have formed the basis for addi- tional claims in the patent. In the worst case, the description of the dimpled embodiment in the patent application would have been prior art and therefore prevented Sorensen from obtaining his patent. (It would not prevent Sorensen and others from practicing the dimpled invention unless it were claimed.)

( 14 44 28 32 10 38 30 12 5 16 ) ( 5 14 54 12 4 5 5 52 52 )10
8

46 0

EXHIBIT 16-7 Figure from the Sorensen patent (U.S. Patent 5,425,497, “dimpled cup holder”).

Guidelines for Crafting Claims
Several guidelines are helpful in crafting claims. Writing great claims is tricky, so we advise inventors to seek the help of an experienced patent attorney in refining a patent application.

· Always try to make a claim as general as possible. When a specific descriptor is used, try making it general. For example, Coffin’s patent speaks of a “tubular member” and not a “tube.”

· Avoid absolute definitions by using modifiers like “substantially,” “essentially,” and “approximately.”

· Attempt to create an invention that does not infringe on the draft claim, and then try to rewrite the claim or add an additional claim such that the hypothetical invention would infringe.

Step 6: Pursue Application
In most cases, the inventor will deliver the draft application to a patent attorney or other intellectual property professional for refinement and formal application. It is possible to file a patent application as an individual if severely budget constrained. Pressman provides detailed guidelines for doing this (Pressman, 2008). Note that the statutory re- quirements are administratively complex, and so we highly recommend that commercial

product development teams retain a competent specialist to pursue any application to the patent office.

Once an invention disclosure is prepared, the team can proceed in four different ways, with the specific course of action dictated by the business context.

· The team can file a provisional patent application. An individual or small company can file a provisional patent application for less than $100 in filing fees. The applica- tion need contain only a description of the invention and need not comply with the formalities of a regular patent application. Once a provisional application is filed, a product may be labeled “patent pending.” If the team wishes to pursue a regular patent application, this application must be filed within one year of the filing of the provi- sional patent application. A provisional patent therefore acts as an option to pursue a regular patent application and allows the team time to pursue licensing or further in- vestigation before incurring the expense of a regular patent application.

· The team may file a regular patent application in the United States. This process costs about $500 in filing fees for a small company or individual, in addition to the legal fees for a patent attorney.

· The team may file a patent cooperation treaty or PCT application. A PCT application allows a single patent application in a single country, say the United States, to initiate the process of pursuing international patent protection. Eventually, the inventor must pur- sue patent protection in individual countries or collections of countries (e.g., European Union). However, the PCT process allows the first steps of the process to be carried out relatively efficiently and with a single point of contact. The entire process of pursuing for- eign patent rights is beyond the scope of this chapter. Consult a patent attorney for details.

· The team can defer application indefinitely. The team may delay in hope that future information will make a course of action obvious. In some cases, the team may decide not to pursue the invention and therefore may decide to abandon the patent application process. The consequences of delay may be substantial. If the invention is disclosed publicly, then all international patent rights are forgone. If a year passes after public disclosure without filing a regular patent application, then U.S. patent rights are also forgone. Nevertheless, the team may be able to defer any action for several months be- fore these eventualities are realized.

At some point after the team files a regular patent application or a PTO application, the patent office will issue an office action responding to the application. In almost all cases, a patent examiner will reject many or all of the claims as either obvious or not novel. This is the norm and it is part of a back-and-forth exchange between the patent office and inventor that should eventually result in claims that are patentable. Next, the inventor and patent attorney sharpen arguments, edit claims to reflect comments from the examiner, and respond to the office action with an amended application. Most appli- cations eventually result in an issued patent, although the claims rarely remain exactly as originally written.

The patent office does not review or act on provisional patent applications. It merely records their filing and stores the application for review when and if a regular application is filed.

Step 7: Reflect on the Results and the Process
In reflecting on the patent application or invention disclosure, the team should consider at least the following questions:

· What are the essential and distinctive features of the product concept, and therefore the invention? Are these features reflected in the description of the invention and in the claims? Does the description communicate the best way of practicing the invention?

· What is the timing of future required actions? The team’s patent attorney will typi- cally maintain a docket—essentially a calendar indicating when further actions must be taken to preserve patent rights. However, the inventor or someone within the team’s company should also be responsible for thinking about the actions that must be taken in the coming months.

· Which aspects of the process of preparing the patent application or invention disclo- sure went smoothly and which aspects require further efforts in the future?

· What did the team learn about the prior art that may inform future product develop- ment efforts? For example, are there valuable technologies that might be licensed from existing patent holders? Are competitors’ patents expiring, possibly allowing the team to use a convenient solution to a long-standing problem?

· How strong an intellectual property position does the team have? Are the features of the invention in the patent application so novel and valuable that they really prevent competitors from direct competition, or is the patent likely to be merely a deterrent to the most direct copies of the products that embody the invention?

· Did the team begin the process too early or too late? Was the effort rushed? What is the ideal timing for the next effort to prepare a patent application?

Summary

· A patent is a temporary monopoly granted by a government to exclude others from using, making, or selling an invention. Patent law is intended to balance an incentive for invention with the free dissemination of information.

· Utility patents are the central element of the intellectual property for most technology- based product development efforts.

· An invention can be patented if it is useful, novel, and nonobvious.

· The final invention that is patented is defined by the patent claims. The rest of the patent application essentially serves as background and explanation in support of the claims.

· We recommend a seven-step process for pursuing a patent:

1. Formulate a strategy and plan.

2. Study prior inventions.

3. Outline claims.

4. Write the description of the invention.

5. Refine claims.

6. Pursue application.

7. Reflect on the results and the process.

· Provisional patent applications and patent cooperation treaty (PCT) applications can be used to minimize the costs of pursuing patent protection while preserving all future options.

References and Bibliography
Many current resources are available on the Internet via

www.ulrich-eppinger.net
The examples in the chapter are derived from the Coffin and Sorensen patents.

Coffin, David W., Recyclable Corrugated Beverage Container and Holder, United States Patent 5,205,473, April 27, 1993.

Sorensen, Jay, Cup Holder, United States Patent 5,425,497, June 20, 1995.

Pressman’s book is a comprehensive guide to the details of patent law and provides a

step-by-step process for writing a patent application and pursuing the application with the patent office. The book also contains valuable related information on licensing inventions. Pressman, David, Patent It Yourself, thirteenth edition, Nolo Press, Berkeley, CA, 2008.

Stim provides an in-depth discussion of most aspects of intellectual property, including trademarks and copyrights.

Stim, Richard, Patent, Copyright & Trademark: An Intellectual Property Desk Reference, eleventh edition, Nolo Press, Berkeley, CA, 2010.

Exercises

1. Find a patent number on a product that interests you. Look up the patent using an online reference tool.

2. Draft a claim for the self-stick notepad invention marketed by 3M Corporation as the Post-it note.

3. Draw a logic diagram of two claims for the patent in Exercise 1.

4. Generate one or more product concepts that are very different from the Coffin and Sorensen inventions to address the problem of handling a hot coffee cup and that don’t infringe the Coffin and Sorensen patents.

Thought Questions
1. Controversy erupted in 1999 when the J.M. Smucker Company sued a Michigan bak- ery, Albie’s, for infringing on its patent by marketing a crustless peanut butter and jelly sandwich crimped on the edges. (See U.S. patent 6,004,596.) Albie’s argued that the patent was issued in error because the invention was obvious. Look up the Smucker pat- ent. Do you believe that the Smucker’s invention is nonobvious? Why or why not?

2. Why might an inventor describe but not claim an invention in a patent?

Appendix A

Trademarks

A trademark is a word or symbol associated with the products of a particular manufac- turer. Trademarks can form an important element of the portfolio of intellectual property owned by a company. Trademarks can be words, “word marks” (stylized graphics spelling out words), and/or symbols. Trademarks usually correspond to brands, product names, and sometimes to company names.

Trademark law is intended to prevent unfair competition, which could result if one manufacturer named its products like those of another in an attempt to confuse the pub- lic. In fact, to avoid confusion, when a manufacturer uses a competitor’s trademark in advertising, say for the purposes of comparison, it must by law indicate that the name is a trademark of the competitor.

Trademarks must not be purely descriptive. For example, although a company could not obtain a trademark on “Insulating Sleeve,” it could for names that are suggestive but not purely descriptive such as “Insleev,” “ThermaJo,” or “CupPup.”

In the United States, a federal trademark may be established merely by using the mark in interstate commerce. This is done by attaching “TM” to the word or symbol when used in advertising or labeling the product (e.g., JavaJacket™). Trademarks may also be registered at modest cost through the United States Patent and Trademark Office using a simple process. When registered, a trademark is denoted with the symbol ® (e.g., Coke®). Given the importance of the Internet for communicating with customers, when creat- ing new product names, the team should strive to create trademarks that correspond ex-

actly to domain names on the Internet.

Appendix B

Advice to Individual Inventors

Most students of product development and product development professionals have at some point had an idea for a novel product. Often further thought results in a product con- cept, which sometimes embodies a patentable invention. A common misconception among inventors is that a raw idea or even a product concept is highly valuable. Here is some ad- vice based on observations of many inventors and product commercialization efforts.

· A patent can be a useful element of a plan for developing and commercializing a prod- uct. However, it is not really a central element of that activity. Patenting an invention can usually wait until many of the technical and market risks have been addressed.

· A patent by itself rarely has any commercial value. (An idea by itself has even less value.) To extract value from a product opportunity, an inventor must typically com- plete a product design, resolving the difficult trade-offs associated with addressing customer needs while minimizing production costs. Once this hard work is completed, a product design may have substantial value. In most cases, pursuing a patent is not

worth the effort except as part of a larger effort to take a product concept through to a substantial development milestone such as a working prototype. If the design is proven through prototyping and testing, a patent can be an important mechanism for increas- ing the value of this intellectual property.

· Licensing a patent to a manufacturer as an individual inventor is very difficult. If you are serious about your product opportunity, be prepared to pursue commercialization of your product on your own or in partnership with a smaller company. Once you have demonstrated a market for the product, licensing to a larger entity becomes much more likely.

· File a provisional patent application. For very little money, an individual using the guidelines in this chapter can file a provisional application. This action provides patent protection for a year, while you evaluate whether your idea is worth pursuing.