How Detailing Must a Method Patent Be?
Whether your invention involves a machine, process, or business method, you should have a clear understanding of the Nonobviousness test. While method claims are based on tangible items, process claims only include steps and fleeting acts. Process claims do not cover a machine or apparatus, but rather the performance of the steps of a process. Listed below are some steps that need to be included in a method patent.
The extent to which a method patent is overbroad has often been a source of controversy among courts and commentators. Because claims to a method involve steps that are not publicly accessible, the patent owner may have to rely on circumstantial evidence to prove infringement. In litigation, gathering such proof is difficult, especially when the claimant is operating outside the United States. To mitigate this concern, Congress passed legislation in 1988 that created a burden-shifting provision for patented methods.
The patent act carved out a special category for medical procedures in the form of process patents. Section 287(c) of the patent act immunizes medical practitioners and health-care entities from liability for infringement resulting from performing a patented medical or surgical procedure on a human body. It excludes the use of a patented machine, patented composition of matter, and biotechnology patent.
Patents for business methods are subject to additional challenges. The America Invents Act of 2011 allows anyone to challenge a patent within nine months of its grant. The challenge can be based on a claim that the method is not patentable or a novel legal question. The challenger may also argue that the company publicly used the method before filing its patent, and continues to use it without violating the patent. So, when is a method patent worth it? The answer depends on the specifics of the process.
Business method patents
The process of filing for a business method patent is similar to filing for a utility patent. The applicant must include an accurate description of the process, as well as a description of the benefits of the method. The patent examiner will also require amendments to the claims if necessary. The more detail the patent application includes, the better. After the patent is granted, it will be valid for twenty years. During the pendency period, there is no legal protection against others using the invention.
A patent application must also describe the system used to implement the method, including the central control, specialized software, and other components. Flowcharts, diagrams, and technical embodiments are recommended. They can help convey the essential functionality of the invention to non-technical personnel. Further, businesses seeking patents must research prior art and provide reasons for allowing the patent. However, the process is not an easy one.
Many people have trouble understanding the terms and definitions of patents. Some people mistakenly believe that a patent is reserved for highly technical innovations. Business method patents are designed to extend the protection of a patent to a wider range of innovators, including non-scientific individuals. To explain how a business method works, an inventor can use alternative language. The claims must be as detailed as possible to enable the patent examiner to understand it.
The fee structure for a method patent is relatively straightforward. The fee structure includes an application fee, a search fee, and an examination fee. This fee applies whether the application is filed before or after March 31, 2004. In addition, there are some additional fees, such as a maintenance fee, that need to be paid at the time the patent is examined. These fees are set by statute and must be paid in full within a certain time frame.
The fees for patenting a method are different than for other types of patents, in part because they are more likely to qualify for extraterritorial protection. Methods also are likely to involve more than one party performing method steps. The article focuses on recent Supreme Court jurisprudence regarding the eligibility of method claims, which critics say ignores the nature of the inventions. In contrast, in the information age, methods often produce data and information, thereby challenging the assumptions of traditional patent law doctrines.
In Graham v. John Deere Co., the Supreme Court noted that the Federal Circuit applied the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic manner. In this regard, the court identified four errors that the circuit had made. In deciding whether a patent application is obvious, the court must first identify the features of the invention that make it novel.
The objective evidence may include commercial success, unexpected results, licensing by others, and the skepticism of experts. However, not all secondary considerations are equally persuasive. The long-felt need of the industry would be strong evidence, as would the commercial success of the invention. However, in some cases, the commercial success of an invention can be attributed to the inventor’s marketing and business savvy.
To meet the requirement for obviousness, the challenger must identify a prior art compound as the “lead compound” of the method. Despite the ambiguity of “lead compound,” this analysis requires clear and convincing evidence that a skilled artisan would choose the asserted prior art compounds as starting points for modifying them. As a result, lead compound analysis is not required to support the challenger’s case.
The combination of two or more techniques that are essentially the same can also be viewed as obvious. The combination of two or more prior art may be obvious if the combination is easily recognized by someone of ordinary skill. The PTAB must determine whether the combination of a device and a method can be reasonably expected to produce a foreseeable result. A patent applicant must also show that the combined technique has a potential for improving a device or process, and that the combination is not known.
The first step in proving infringement is to provide evidence of ownership of the patent and right to make the claim. You may include a copy of the patent, copies of license agreements, releases, and any government procuring activity that may be relevant to the case. Next, you must identify the accused article and provide detailed identification of the patent’s claims, including an element by element comparison of representative claims and drawings of the accused article.
The scope of the claims must be sufficiently detailed to prevent infringement. This is possible under the doctrine of equivalents. This doctrine extends the claims to the full scope of the inventor’s contribution to the art. But it has its limitations. It requires that the defendant’s product include the exact elements of the plaintiff’s claim or be “substantially equivalent” to them. Then the defendant’s product would be deemed to infringe if it includes the same features.
If your product is based on a method patent, it must be sufficiently detailed to avoid infringement. This is especially true if the competitor has a history of infringing it. Infringement of a method patent can result in a judgment finding that you intentionally acted against a competitor. A careful review of competitor products can also reveal patent notices. Then, if a competitor patents your product, you’ll know how to protect yourself.
A Jepson claim must be detailed. According to 37 C.F.R. SS 1.75(e), a Jepson claim must describe the specific elements of the invention. It must also be narrowly defined and refer to prior art. This patent example is based on the addition of a solenoid to an apparatus that already existed. This patent contains several features of a Jepson-type claim.
A Jepson claim is a formal introductory clause that describes the setting of the invention. While it may not include a narrowing element, it is still required to describe the context in which claim elements are described. The Jepson claim preamble also sets forth the setting of the new invention. However, the Jepson claim preamble carries with it the admission that the preamble content is known to the public.
A Jepson claim can be either a single or multi-clause claim. The Jepson claims are a new concept in patent law. Their creator, Assistant Commissioner Clay, devised them in 1917. The Code of Federal Regulations and the MPEP formally endorse the concept. But their use has been limited. Despite their newfound importance, Jepson claims are still an essential part of patentability.
In addition to the Jepson criterion, patents must contain sufficiently definite claims to inform persons skilled in the art of the protected subject matter. If a claim fails to meet this requirement, it will be rejected as indefinite. The applicant must either provide more detail or amend the claim. In addition to being sufficiently definite, a Jepson claim must be readable in all aspects of the patent application.