Invalidation Search – Trademark in Claims

As described in my earlier post that searching for relevant prior art is NOT the ONLY way to invalidate a patent.

Look for trademark in claims.

Now what do I mean when I say ‘trademark in claims’. There are many patents that mentions trademark products in claims. For example, a claim in a patent defines “a VELCRO fastener” as one of the elements. The specification describes the use of a VELCRO fastener in the invention, but doesn’t describe the structure of such a fastener.

Where is the problem?

A trademarks used in claims are indefinite under 112 paragraph 2, pursuant to section 706.03(d) of the MPEP. Thus, anytime a Velcro trademark is used in a claim, it fails to recite sufficient structure and should be rejected. The applicant is relying solely on the trademark to define the element, without reciting any specific structural limitations. The velcro example courtesy MyPatentBar

Therefore during invalidation, read the claims carefully not just to understand the technology of the invention but also to check if it confirms to other criterias as well.

Invalidation Search – Google Timeline View

During Invalidation sometime it becomes very difficult to hunt for non-patent references on Google. As Google provide results based on the page rank.

A very good technique to avoid this problem is by using Timeline View from Google Experimental Lab.

You need to go to Experimental Lab of Google and join the Timeline view experiment. Thereafter, all the search that you will conduct on Google will be performed under this experiment.

Advantages:

Good tool in Patentability and Invalidations
Good tool for conducting market analysis for a patent
Good tool for identifying the growth in a particular technology
Good tool for learning about history of a particular invention/product
Good tool for identifying the lauch of a particular product
A timeline chart showing the growth or drop in number of results

Please note that the results shown under a particular year in the chart doesn’t implies that they were published in that particular year. For example, the result talking about a technology in 1995 doesn’t implies that reference was published in 1995. But it provides enough hints to modify the future search to reach the exact reference for that particular year.

Invalidation Search – Basic Concepts

Lots of questions are generally asked to me regarding intricacies of Invalidation search and what things to consider while invalidating a patent. Why we search in this manner and why we dont’ consider this?

I thought of putting the thoughts in the form of a post.

When client says that he want to invalidate the ‘First Independent Claim’ he mean the first independent claim w.r.t the specification.

Now this can be explained w.r.t various cases:

Sometimes the claims are written in such a simple language (this)that we can grasp the complete concept from the claims only and there isn’t any need to go through the specification. Which happens in majority of the cases. This might make some searcher assume that it is not necessary to go through the description and make this as part of their search strategy. However, this is not true in all cases.

When claims describe structural relationship (this), it is not easy to identify what actually is the invention just from the claims. For such claims we have to refer to the drawings or the description section to understand the structural relationship. Now when structural relationship is described in claims, claims would always look broad as it is not easy to describe a figure in words. In such cases claims are always read w.r.t to the drawings and the description.

There might be another case where claims include phrases such as “a video image specification that is based, at least in part, on pre-defined configuration data“. From such phrases it is not easy to determine what actually is happening and writing such sentences also doesn’t broaden the scope of the claims. The examples of the pre-defined configuration data given in description would act as the scope of the configuration data and in turn define the scope of the video image specification.

Now the question arises that why don’t we write directly those examples in claims itself? If we start describing all the examples in claims, claims would ultimately turn into the description.

Moving forward, the question that why we cite such references that include embodiments that are not present in the specification of the subject patent can be answered based on obviousness criteria. The attorneys can uses such patents, on the basis of obviousness, to invalidate the claims and make their case stronger. Various references can be combined together to prove the concept that it is obvious for a POSITA to come up with concept that is claimed in the subject patent.

However, obviousness is such a criteria that can only be decided in the court. So our objective is to provide as many facts as possible that can help the client in the court.

People at major corporations are daily sued by many people around the world, some people follow the strategy of finding out prior arts corresponding to each clause independently (of the first independent claim). This is something in addition to what is done in general invalidation. Then they send multiple different prior art for each clauses along with other prior arts that map on to multiple clauses and try to question the validity of the patent.

All this is just a part of strategy that they use so that they can resolve most of their cases out of the court.

So to summarize, ideally we should only search for embodiments that have been described in the description. But this is only considering the invalidation with respect to USC 102. But this is not the only way a patent could be invalidated.

There are three options:

U.S.C 101 – Inventions patentable (Which we don’t check as there are rare chances that a granted patent would not satisfy this criteria, though their could be few cases)

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [35 USC § §1 et seq.].

U.S.C 102 – Conditions for patentability; novelty (Which we check by searching)

A person shall be entitled to a patent unless–
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

U.S.C 103 – Conditions for patentability; non-obvious subject matter

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title [35 USC 102], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

USC 102 requires an exact match, however 103 does not.